Intellectual Property Strategy, Portfolio Management and Licensing

Strategic Patent Portfolio Development and Management

Practice Group Contact:  Douglas J. Sorocco 405-607-8600

A company’s intangible assets are invaluable, and it is vital to properly inventory, assess, and protect those assets.  Ensuring that you do not inadvertently infringe the rights of others is equally important, particularly in light of recent lawsuits.  We can help you. 

Our audit practice includes comprehensive review and analysis of all intellectual property assets, procedures, and processes, and extends to competitive landscape audits.  Comprehensive audits provide invaluable opportunities to convert information and technological advances into sustaining, income producing assets.  We analyze the scope of coverage of our clients’ IP portfolios to align them with current and future business goals.  

Our professionals are skilled at the development of comprehensive cost-effective patent portfolios for small start-up companies as well as global leaders. We believe that a pragmatic and strategic approach is necessary to ensure that every portfolio is strong on defense as well as on offense.  Whether it is a core, platform, fence picket or poker-chip technology, we have the depth of experience and proprietary tools necessary to help our clients determine when it is a platform technology, the “family jewels,” or when it is simply just an expense.

Dunlap Codding’s multi-faceted proficiency, expertise, and reputation in the intellectual property arena is a reflection of our extensive legal and scientific backgrounds.  Members of the firm hold Doctorate and other advanced degrees in Chemistry, Botany, Plant Physiology, Population Ecology, Biochemistry, Microbiology, Immunology and Molecular Biology.    

Strategic and pragmatic problem-solving skills

We analyze the scope of coverage of clients’ IP portfolios—our strength is in aligning new or existing portfolios with current and future business goals. Additionally, we:

  • Draft infringement and non-infringement opinions
  • Conduct freedom to operate reviews
  • Conduct acquisition and divestiture due diligence
  • Conduct private placement analysis and IPO opinions
  • Assist with adherence to corporate and governmental compliance
  • Gather competitive intelligence on in-house and third-party prior art  

Our network of relationship partners and trusted vendors throughout the United States and around the world includes:

  • Strong relationship partners
  • Venture capital contacts
  • Subject matter experts
  • Business and technical processes, alternative billing and knowledge management experts
  • Economic and international business relationship professionals for litigation and transactional endeavors 

Licensing and Transactional Practice 

Dunlap Codding has advised and represented clients in licensing negotiations and transactional matters since the firm’s founding in 1957.  We believe that the foundation for licensing success rests in an approach that combines mutual respect with an unwavering focus on the results to be achieved.  Since our ranks include a former Assistant General Counsel who also served as Chief Patent Counsel, we offer clients an in-house perspective on acquiring, managing, and commercializing a business-driven intellectual property portfolio.  Another of our attorneys served for several years as the Senior Director of Intellectual Property and Staff Attorney at the University of Oklahoma, responsible for the oversight and management of the University’s patent portfolio in order to maximize the economic impact of those assets. 

Licensing 

At Dunlap Codding, our licensing attorneys have the technical knowledge, business experience, and legal acumen necessary to understand our clients’ businesses and help them maximize their flexibility and minimize their risks in licensing transactions.  We help structure, draft, negotiate, and implement licenses taking into account the business, patent, and regulatory environments surrounding the transaction.  Working with us, our clients understand all their rights and obligations with regard to licenses.  We are advocates for our clients in adversarial and collaborative settings, helping them achieve the best possible outcomes.  To maintain their skills in this field, lawyers of the firm are members of and have been leaders of the prestigious Licensing Executive Society International (LESI) from its inception.  Additionally, one of our lawyers is a Certified Licensing Professional (CLP). 

  • Intellectual property licensing, including licensing for research-based institutions
  • Cross licensing, including as a resolution of patent and other disputes
  • Joint development agreements among international corporations
  • Inter-institutional agreements
  • Strategic negotiation of licenses to maximize asset value and commercialization
  • License agreement drafting
  • Term sheet drafting
  • Option agreements
  • Licensing in connection with acquisition and divestiture of business operations
  • Licensing of Standard Essential Patents (SEP)

Copyright Licensing

The ability to transfer rights to a copyright-protected work is a key benefit of copyright ownership. Whether our clients are contemplating a transfer of all or only a limited portion of the rights to a work protected by a copyright, our attorneys are adept at helping them reap the benefits of their work.

  • Copyright-protected asset licensing
  • Open source (GNU and Creative Commons-based licensing)
  • Software, derivative works, and ownership issues
  • Publishing agreements
  • Work-Made-For-Hire agreements
  • Outsourcing agreements
  • Publicity and image release agreements
  • Ownership agreements
  • Assignments
  • Licensing in connection with acquisition and divestiture of business operations
  • Complex license agreement negotiations

Transactions

Our attorneys have first-hand experience in the acquisition and divestiture of numerous businesses having U.S. and global assets that have included transferring corresponding U.S. and non-U.S. patent, trademark, and technology portfolios with negotiated grant-back, non-assert, confidentiality, patent/TM maintenance, and other related contractual obligations and restrictions. All of these transactions had unique levels of regional and global complexity with potential downstream implications that had to be taken into account to effectively meet business needs.

We advise and counsel clients on all types of agreements related to the successful operation of their businesses:

  • Acquisition or divestiture of assets
  • Distribution and marketing
  • Intellectual property and software licensing
  • Joint ventures and strategic partnerships
  • Joint development agreements
  • Consulting arrangements
  • Manufacturing agreements
  • Operating agreements
  • Settlement negotiations and agreements
  • Supply agreements
  • Business valuations and valuing intellectual property in bankruptcies

Trademark Licensing

Trademark Licensing plays a key role in protecting a brand. Without a proper license, third-party trademark usage can jeopardize rights in a mark. Our attorneys are skilled at preparing, negotiating, and managing trademark license agreements. We assist clients with:

  • Merchandising
  • Brand extension
  • Co-branding
  • Component or ingredient branding

Intellectual Property Issues Related to Federal Contracting

Dunlap Codding's attorneys are adept at managing the particular issues and nuances associated with federal contracting. We assist clients with:

  • Reviewing and negotiating prime contracts and subcontracts
  • Conforming with federal acquisition rules (FARS)
  • Navigating agency-specific contract requirements (DFARS)
  • Contracting and operating under the terms of the Bayh-Dole Act and its regulations