IP Licensing, Technology Transfer & Contracting

The Issue

Companies spend many thousands of dollars to research and perfect technology.  They spend many more thousands of dollars to obtain patent protection for that technology.  However, such activity frequently takes place without regard to its position in an overall marketing and/or licensing plan for these patents.  In many instances, companies retain a stockpile of potentially valuable patents without gaining any financial benefits from their inventive works.  Simply put, most companies do not exploit their intellectual property rights to the fullest possible extent.  In today’s market, companies should not invest this level of funds without seeing any return from this hard work.

The Marbury Solution

At Marbury, we prefer to counsel clients on the complete business spectrum of intellectual property. Our job is not complete when a patent issues; it is just beginning. Since the firm’s inception, we have focused on bringing more value to each client’s patent portfolio by maximizing profits through the marketing, licensing, and/or sale of IP assets. We have experience doing so in all areas of technology through public auctions, direct sales, and licensing agreements both nationally and internationally.

The difference at Marbury is that we see patent prosecution as the first step in exploiting intellectual property. We formulate patent applications with the forethought of utilizing said patents to bring more financial gain to our clients.

Monetization of IP Assets

The Marbury Law Group has helped several clients turn their IP assets into cash or cash flow through sales and licensing.  For those clients looking to license their technologies, we can help identify prospective licensees, initiate or facilitate contacting targeted licensees, and negotiating the license agreement. In some cases, licensing IP assets requires the threat of or initiation of litigation, with which we are very experienced.  For clients looking to sell some or all of their IP portfolio, we can identify the likely bidders, prepare the necessary offering memoranda, offer the portfolio to prospective buyers and attempt to initiate a bidding war, negotiate the deal, negotiate the assignment documents, and manage the exchange of IP assets and consideration.  Depending upon each client’s preferences, budget and portfolio, we have monetized IP portfolios ourselves as well as worked with agents, brokers, and auction houses.  In support of such efforts, we also aid clients in preparing their portfolio for monetization.

Read about Marbury Law Group's Strategic Intellectual Property Counseling