IP Licensing and Transactions

Helping clients develop effective strategies for the exploitation of IP and safeguarding IP rights when they are used by others is an important aspect of our work.

No business operates in a vacuum and the arrangements by which IP, resources and expertise are shared have a significant impact. Whether acting for licensors or licensees we help businesses to ensure that they have an appropriate level of control over the technology, brands or other assets that they own or need, while at the same time maximising the potential benefits.

The issues upon which we regularly advise include:

• Patent, trade mark and copyright licences
• Technology transfer agreements
• Joint venture and joint development agreements
• Brand exploitation/marketing agreements
• Software development and licensing arrangements
• IP restructuring

Recent examples of our licensing and transactional work include:

• Acting for SABMiller plc in relation to the $260million worldwide disposal of the Appletiser brand to The Coca-Cola Company  and the assignment or licensing of 19 other soft drink brands in Africa and Latin AmericaAdvising Meridian Audio and other associated companies in strategic and complex assignment arrangements and licensing structures of patents and other IP rights in the revolutionary MQA music technology
• Assisting a global pharmaceutical company on the international intra-group reorganisation of key R&D projects and associated patents, knowhow and other IP rights
• Advising ENER-G Holdings plc on the complex intra-group restructuring of the business’s highly valuable core IPR, including the transfer-up and subsequent complex licensing-down of various internally-developed software programs and associated and ancillary IP rights
• Advising and representing the international fashion and fragrance company, Puig, in relation to the strategically important high value acquisition of several trade marks and subsequent licensing arrangements
• Advising BOC/Linde in relation to international licensing arrangements for patents and ground-breaking technology in the food industry
• Advising a listed international healthcare company on the expansion of its international product portfolio by way of licensing arrangements
• Advising and representing a global sustainable and renewable energy management solutions and technologies provider in relation to the critical IP aspects of the sale of its core business to Centrica plc
• Advising a major international broadcaster on its intra-group trade mark licensing arrangements
• Advising a number of design clients on strategies to minimise exposure to potential intellectual property claims from their customers
• Negotiating website development and marketing agreements with counterparties including Tesco and Carphone Warehouse for a leading web design and digital content agency
• Advising a client on the appropriate vehicle for licensing a financial modelling tool (including IP, tax, corporate and employment considerations) and the terms of a licensing agreement with an international stock exchange
• Advising an international brewing company on various matters, including joint development agreements and music and film licensing