Marshall, Gerstein & Borun LLP

Non-Profit Technology Transfer

From our early partnership representing the Board of Trustees of the University of Illinois before the Supreme Court in Blonder Tongue Laboratories, Inc. v. University of Ill. Foundation, 402 U.S. 313 (1971), Marshall, Gerstein & Borun has provided non-profit technology transfer services to assist institutions in their efforts to evaluate, protect, enforce, defend and commercialize research disclosures. Today, we represent nearly fifty non-profit research institutions and hospitals throughout the world.

Our practitioners include former technology transfer managers at non-profit institutions, which provides us with first-hand knowledge of the issues facing non-profits, from managing inventorship disputes and inventors with external priorities, to the need for clear and timely recommendations for protecting intellectual property rights. We also understand the effect that the research environment has on university agreements, from government funding requirements to likely contractual constraints of prior collaborations and material transfers.

We know there is a need to maximize value, by critical evaluation of disclosures, creative construction of license agreements, and active management of patent life-cycles. We are skilled at managing intellectual property portfolios and negotiating complex intellectual property agreements with sensitivity to timelines and budgetary constraints. We have considerable experience in developing and implementing patent strategies that secure the protection needed in a cost-effective manner. Our services, tailored to the needs of non-profits, include:

Evaluating invention disclosures and both preparing and prosecuting patent applications with a sensitivity to the patentable claim scope likely to be desired by a licensee
Securing patent term extension and adjustments to maximize patent term
Counseling on foreign oppositions; handling multi-party derivation proceedings
Performing patentability, validity and freedom-to-operate opinions and counseling
Determining inventorship and resolving ownership disputes
Structuring, drafting and negotiating intellectual property agreements including assignments, all type of intellectual property licenses, and collaboration, nondisclosure, material transfer, research, clinical trial, joint development, inter-institutional and consulting agreements
Negotiating agreements to execution within a tone and approach reflective of being in non-profit technology transfer
Counseling institutions regarding disputes with their licensees, assisting in renegotiating agreements that are no longer workable, and arbitrating or litigating such matters where necessary
Auditing intellectual property portfolios and agreements to identify unused or underused intellectual property and out-licensing opportunities and devising portfolio licensing strategies therefor
Enforcing and defending intellectual property rights and intellectual property agreements
Counseling and evaluating institutional intellectual property policies and grant compliance
Developing and presenting educational seminars on all aspects of intellectual property and the technology transfer process, including Bayh-Dole compliance and adjustments to accommodate the America Invents Act

Case Studies

NUtech Ventures, a client of the Firm, and Bayer CropScience AG executed a collaboration license and germplasm transfer agreement that focuses on wheat improvement. The agreement also makes provision for an endowed professorship at the University of Nebraska-Lincoln, support for UNL research and education programs, support for UNL's first Presidential chair named for the Nebraska Wheat Growers, and plans for Bayer to establish its first North American wheat-breeding station near Lincoln. Marshall, Gerstein & Borun is privileged to have worked side-by-side with NUtech Ventures, UNL, world-renowned UNL wheat breeder, P. Stephen Baenziger, and Bayer to draft and negotiate this expansive agreement that facilitates this wheat-breeding research partnership.
On behalf of Loyola University of Chicago, Marshall, Gerstein & Borun has obtained patents around the world covering Cervarix^® (Human papillomavirus bivalent vaccine, recombinant) which protects against Type 16 and Type 18 of the HPV virus that causes 70% of cervical cancers. The vaccine was invented at Loyola and the Firm represented Loyola when its ownership was unsuccessfully challenged by MediGene AG. The Firm also renegotiated Loyola's license with GlaxoSmithKline who now manufactures and sells Cervarix^® (Human papillomavirus bivalent vaccine, recombinant). This long-term client relationship is sustained by combining the skill and experience of the Firm's patent prosecutors, litigators and IP transactions attorneys.
Scott & White Healthcare, one of the nation's largest multi-center healthcare systems, worked with Marshall, Gerstein & Borun as they considered revising their intellectual property policy. The IP Transactions team has developed, restructured, interpreted and advised on numerous university, institute, foundation and hospital intellectual property policies, drawing on the Firm’s depth of understanding of prosecution and litigation matters related to inventorship, ownership and non-profit technology transfer.
The Wallace H. Coulter Foundation has a unique philosophy in awarding grants to develop new healthcare technologies. The foundation looks not only for cutting-edge science, but also projects that are likely to quickly lead to commercial products that improve patient outcomes. Knowing that patent protection for a new technology and freedom from infringement are keys to a successful product, the foundation has partnered with Marshall, Gerstein & Borun to help assess the merits of projects under consideration for grants, to improve the patent positions of funded projects, and to educate its researchers as they navigate through patent and licensing issues.