Intellectual Property/Licensing

Ulmer & Berne's intellectual property (IP) and technology group has extensive experience in intellectual property/licensing. Members of the group have handled a variety of sophisticated licensing transactions involving a diverse array of tangible and intangible assets and technologies. These transactions have included:

  • Multiple site ERP and CRM software implementations;
  • Software and information systems development agreements;
  • Information systems outsourcing and related services agreements;
  • Service level, support and maintenance agreements related to software assets and technologies;
  • Website development agreements;
  • Software application service provider agreements;
  • Technology transfer agreements including licenses of biotechnology assets in the area of genetic marker technology;
  • Multi-site Voice over Internet Protocol (VoIP) based Internet telephony implementations involving both software and hardware acquisition, implementation and service agreements; and
  • Biotechnology and life sciences transfer, development, licensing, support, commercialization and M&A agreements.
Attorneys
Bradley D. Beck
Robert E. Chudakoff
James M. Crane
Charles A. Crehore
Gordon D. Kinder
Clayton L. Kuhnell
Michael A. Marrero
Stanley D. Prybe
Eric M. Robbins
Kari C. Samuels
Jeffrey R. Schaefer
Wayne M. Serra
Michael D. Stovsky
Seth A. Voit
Elizabeth M. Widman

 

Clients

 

Representative Experience

Representing an electronic stun gun manufacturer in trademark prosecution and application matters. 

Representing a Cleveland-based greeting card manufacturer in intellectual property matters and technology contracts related to the divestiture of one of its divisions.

Representing a Cleveland-based global adhesives manufacturer in the negotiation of a software license dispute. 

Representing one of the leading international manufacturers of tires with trademarks, copyright and technology-related matters.

Representing several Cleveland-based companies, privately held and publicly traded, in connection with software licensing, ERP implementation and other technology transfers.

Representing a Cleveland-based provider of Voice Over IP services as general outside corporate counsel, technology counsel and intellectual property counsel.

Representing a Cleveland-based developer of spinal implants as general outside counsel and technology counsel.

Representing a New Jersey-based privately held dietary-supplement manufacturer and marketer on intellectual property and general corporate matters. 

Representing a Tennessee distributor of medical supplies on intellectual property and general corporate matters. 

Representing a Cleveland-based teaching hospital system in the negotiation of technology contracts. 

Representing an Ohio holding company in a source code escrow transaction.

Representing a local community college in the negotiation and preparation of system development and system maintenance and technical support agreements in connection with a new wireless employee work order system being implemented at the college. 

Representing an Ohio limited liability company in numerous intellectual property matters including: 

  • Advising on and negotiating several technology and data licensing agreements and joint marketing agreements.
  • Negotiating a license agreement with an international sourcing company. 
  • Advising on a teaming agreement and joint venture with a software developer and designer. 
  • Negotiating a licensing/consulting agreement with a vision care, pharmaceutical and surgical manufacturer and distributor. 
  • Negotiating a consulting agreement with a home improvement warehouse retailer.  
  • Negotiating a joint venture with an international provider of information management solutions. 

Representing a rapidly growing international emerging pharmaceutical company in a $150 million license agreement for a new attention deficit disorder drug.  
      
Representing a bio-technology company in negotiating a manufacturing license agreement to produce a new FDA-approved product for wound healing. 
   

 

Related Practice Areas

Litigation
Intellectual Property

Business
Corporate Finance
Corporate Governance
Intellectual Property & Technology
International
Mergers & Acquisitions
Private Equity/Venture Capital

Technology
eBusiness
Intellectual Property/Litigation
Technology Transactions
Trademarks/Copyrights

Life Science
Biomed/Biotechnology
Intellectual Property/Licensing

Health Care
Business Counseling
Transactions

 

Case Studies

 

Publications

 

News