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Licensing & Strategic Partnerships

The lawyers at Feinberg Hanson engage deeply in our clients’ businesses and function as important strategic advisors to entrepreneurs. We help our clients build their businesses by offering sophisticated and practical legal advice surrounding a wide array of operational concerns.

Experience

Our involvement can range from brief consultations on commercial arrangements to providing detailed advice when helping structure complex licensing, joint venture, and other strategic partnerships. 

Our licensing and strategic partnership services include the following:

  • IP licensing for patents, trademarks, and other proprietary technology
  • Advice regarding IP strategies for both new and established businesses
  • Trademark registrations and maintenance filings
  • Terms of use and privacy policies for software, websites, and mobile applications
  • Consultation regarding master services agreements as well as sales, distribution, and other strategic business agreements
  • Memorializing inter-company business and licensing arrangements among affiliated companies
  • Joint ventures
  • Cross-border transactions

Our expertise in these areas arises from representing technology companies in a broad range of sectors and our experience in the software and new media industries, among others. Although we outsource patent prosecution work, we are experts in licensing and distribution arrangements and in negotiating strategic partnerships among businesses. The team at Feinberg Hanson has helped clients negotiate extremely favorable outcomes for license and other commercial contracts against some of the largest companies in the world.

We also register trademarks and service marks for our clients with the United States Patent and Trademark Office. Our work includes filing initial applications and responding to office actions and other matters arising up to the time of registration, as well as post-registration maintenance issues.

We collaborate closely with our clients to develop a true understanding of their businesses. We are often called on to prepare specialized form contracts that address their most essential business needs, while also making the legal process with their customers and vendors as streamlined and efficient as possible.

Our primary focus is on partnering with our clients to understand their businesses and function seamlessly as key strategic advisors. We emphasize excellence, responsiveness, and practical judgment without compromising precision or clarity.

Representative transactions

Representative transactions for our licensing and strategic partnership practice include:

  • Spin-out of SLIPS Technologies Inc. from Harvard University
    Feinberg Hanson led the legal team in spinning out patented material science technologies from Harvard University into a start-up company funded by BASF Venture Capital and billionaire Hansjörg Wyss. Our work involved coordinating the establishment of the new company, negotiating license arrangements with Harvard, negotiating and documenting a Sponsored Research Agreement with BASF and closing SLIPS’ initial funding–all concurrently. The SLIPS spin-out is typical of the types of university-backed start-ups with which Feinberg Hanson regularly engages.
  • Gamblit Gaming
    Feinberg Hanson has served as legal counsel to Gamblit Gaming, a California-based gaming company at the forefront of combining interactive video game entertainment with real-money gambling, since before its public launch. Our team has advised Gamblit on a wide range of commercial and licensing matters, from the negotiation of licensing arrangements with key vendors and collaborators, to establishing master form contracts for use with game developers, publishers and casino operators.
  • Trig Avionics
    Recently, our client Trig Avionics, a Scottish avionics technology company, sought our advice regarding a significant supply arrangement with Google in connection with its much-publicized Project Loon. Under this project, Google is planning to provide LTE internet access to remote regions using a network of high-altitude weather balloons. Feinberg Hanson’s licensing experts negotiated directly and intensely with Google’s in-house legal and management teams to reach a definitive agreement on favorable terms for Trig.