Intangible assets have replaced physical assets as the drivers of economic growth. In this new economy, successful businesses protect their intellectual assets with Intellectual Property (IP) and they assert and/or license their IP to further their business interests. Moreover they acquire rights to adversely owned technology and IP when its to their advantage.

 

Royalties generated from the licensing of products, processes, business methods and software stand at unprecedented levels. With shortened product design and life cycles, the increased expense and uncertainty of R&D and the frequent need for non-resident technical skills or access to new markets, a variety of complex strategic arrangements with domestic and foreign entities have also exploded. Technology transfers, joint ventures, joint development or marketing arrangements, investments in and/or licensing with start ups, acquisitions, carve outs and other sophisticated arrangements have become commonplace.

 

Our IP Transactions Group includes IP Lawyers with considerable transactional experience in essentially all types of deals across a wide range of industries around the world.

 

Our IP transactional lawyers not only know the law, but they have the experience and support of our high tech lawyers to grasp and understand the business and technical drivers of a deal.

 

Our lawyers know that our clients, not their lawyers, live with the consequences of a deal and we understand that there are two ways to protect a client in a deal - due diligence conducted by lawyers having the required technical expertise and contractual arrangements developed and negotiated by experienced transactional lawyers with corporate deal smarts.

 

Our transactional lawyers conduct due diligence with the deal drivers in mind and we tap into and direct the expertise of our high tech lawyers to identify the technical and IP issues. Based on our deal experience, we explain these issues and what they mean so that our clients can assess risks and financial impacts and make informed decisions during contract negotiations.

 

One of our transactional lawyers and one of our lawyers with a Ph.D. in a biotech discipline supported Merck KGaA, a German company and its US subsidiary, EMD Crop Bioscience, in their recent technology driven acquisition of Agribiotics Holdings, Inc., a Canadian biotech company with licenses to pioneering crop inoculant technology. Patents and patent applications were evaluated for strength, scope and coverage of the inoculants and recommendations were made for improving some of the patent applications. Critical license agreements were studied and renegotiated to maximize their value and, finally, a complicated Share Purchase Agreement and needed ancillary agreements were negotiated. As a result, EMD acquired Agribiotics and exclusive rights to several crop enhancing technologies in a high margin, high growth market. More than satisfied, Merck went so far as to describe our efforts as "brilliant."

 

In addition to the biotech industry, we have worked with large corporate clients and start ups in the defense, water treatment, chemical, communications, computer, software, electronic components, optics, metrology, energy, automotive, medical device, pharmaceutical and food processing industries. We also work with Universities and other research organizations to license their research results to established companies and start ups.

 

Our lawyers have been lead counsel or worked with corporate lawyers in complex transactions around the world and we have protected our clients' interests with our technical expertise and transactional experience.

 

The Chair of RatnerPrestia's IP Transactions practice is Robert P. Seitter, former Chief IP Executive and Counsel at ITT, who managed a staff of business oriented IP lawyers and personally handled the IP aspects of transactions all over the world.