Marshall, Gerstein & Borun LLP

IP Transactions

Structuring and Negotiating Your Optimal Agreement

As seasoned licensing attorneys with experience as in-house general counsel, patent counsel, director of intellectual property and technology transfer managers, we understand intellectual property transactional best practices and deliver practical solutions that can be implemented and enforced.  We are also intellectual property attorneys with degrees in science and engineering.  Our ability to link the law, science and business means that we understand the nuances of the intellectual property rights at stake, the technical subject matter to be protected and the strategies needed to get the deal done in an accurate, timely and cost-effective manner.

We craft comprehensive agreement structures that implement our clients’ priorities, minimize unallocated risks and allow for changing circumstances.  These agreements are clear and concise using only those customized provisions necessary for the deal at hand.  We believe that agreements can provide strong legal protections and creative deal structures without requiring a special dictionary of "legalese."  We have seen that firm, fair and intelligible deal terms result in successful long-term ventures.

We seek a collaborative role as a seamless member of our clients’ legal team, whether as the primary drafter and lead negotiator, a fellow "brainstormer" or a second pair of eyes.  The number and variety of industries for which we draft and negotiate deals allows us to bring best practices from a wide range of deal strategies.  The depth of our experience allows us to negotiate in a manner that fosters a spirit of collaboration.

Our intellectual property transaction services include:

• Strategy development, drafting and negotiating IP-related transactions from confidentiality and material transfer agreements to research collaborations, licenses, joint ventures and strategic alliances.
• Performing thorough due diligence of IP assets and related agreements in connection with auditing, licensing, acquisition, stock transfers and mergers.
• Advising on agreement disputes, including by conducting mediation and arbitration and brokering settlement contracts.
• Counseling on employee agreements and policy considerations related to IP and governmental regulations.
• Managing out-licensing portfolios.

Case Studies

• For a decade, Marshall, Gerstein & Borun LLP has represented MonoSol, LLC in all its intellectual property litigation, prosecution and transactional matters, including in its recent acquisition by Kuraray Holdings U.S.A., Inc.  Since 1953, MonoSol LLC has been a leader in specialty water-soluble polymer-based films and maintains a global network of dedicated partners to offer sales, service and technical support to its worldwide customer base.
• Marshall, Gerstein & Borun represents Orion in all their intellectual property transactions and recently completed a suite of agreements for the collaboration between Orion and the Malaysian Palm Oil Board (MPOB), a body corporate established under the Malaysian Palm Oil Board Act 1998.  The goal of the collaboration is to sequence the genome of three oil palm varieties and understand which genes affect yield, the ability to withstand environmental stress and impart disease resistance.  Orion Genomics, the Second Code Company, develops epigenetic research tools and molecular diagnostic products to fulfill the promise of personalized medicine.
• Since 1997 when the first patent application was written by Marshall, Gerstein & Borun on Chinese hamster EF-1 alpha regulatory DNA (CHEF1) for CMC ICOS Biologics, Inc. (previously ICOS Corp.), we have partnered to protect and transfer this expression system used to produce protein products.  We have structured and negotiated agreements to out-license this intellectual and tangible property through evolving business models over the life-cycle of the more than a dozen issued patents around the world.
• As the sole patent counsel for Marcadia Biotech, Inc., Marshall, Gerstein & Borun was responsible for negotiating the IP aspects of Marcadia's collaborations with two of the ten largest pharmaceutical companies in the world.  In addition, the Firm drafted and negotiated licenses and many other agreements for Marcadia and handled the IP due diligence surrounding their acquisition by a global biopharma company for an undisclosed amount.