Licensing & Transactions

Group at a Glance

  • 12 members
  • Examples of agreements we have drafted / negotiated include: IP licenses, assignments, and security agreements; collaborative and tech transfer agreements; trade secret and know-how transfers; IP-related employment agreements, agreements relating to product development, including software and web services; and distributorship / reseller agreements. (See below for more detailed list.)

What Matters to Our Clients

Experience on Both Sides of Table

Our Licensing and Transactions attorneys are accomplished in helping clients formulate and execute many kinds of technology-based transactions. Having been on both sides of the table, we bring to bear experience in business relationships, practices, and trends in our clients’ market sectors, and an up-to-date knowledge of the relevant law.

We have negotiated numerous kinds of deals and have drafted the supporting documents and provided after-deal servicing and counsel. An IP transaction has a life that does not end when the ink is dry, and we are there to nurture it when needed.

We also recognize that getting a deal done means being effective with the people on the other side of the table. We understand the strengths and weaknesses of the parties’ intellectual property and how that should enter into the picture, and then we provide our clients with terms that will result in a workable relationship.

Technical Knowledge Base

Because we are focused solely on IP, our deep technical expertise allows us to analyze the market forces at play and competitors’ technologies in ways most other firms simply cannot do. We are able to project the ways a technology, industry and client’s business are likely to develop. Often, this enables us to suggest ways to anticipate potential opportunities or problems. Sometimes, we are able to suggest other profitable applications for a client’s technology as well as warn of potential pitfalls that may lie ahead.

Support for Business Goals

Transactions do not take place in a vacuum. We place a premium on understanding our clients’ business objectives right from the start so we can effectively integrate their IP strategies—including transactions—into a plan for meeting those goals. Business context is foundational to effective transactions.

We are known for our ability to identify, evaluate, and structure the right deal in the first place as well as for our skill in preparing and negotiating successful agreements. Because we know the difference between a good deal and a good agreement, our goal is to give our clients both at the end of the day. The result is an agreement that makes sense and meets goals.

Familiar with the driving issues in our clients’ industries, business-focused, and able to spot the nuances of both science and law, we are known for our ability to extract high value for our clients. We don’t simply copy the technical terms into boilerplate documents; we shape each situation to match a client’s industry and long range business needs.

Experience in All Forms of Agreements

Our group has successfully structured and negotiated a wide range of IP-related deals, small and large. We treat each transaction with the appropriate level of attention. A small deal is not blown into an oversized project, and we strive to keep the big, complex deal manageable. Examples of the types of agreements we provide include:

  • Patent / technology, copyright and trademark licenses, sales and acquisitions
  • Joint venture and other types of collaboration agreements
  • Joint development agreements
  • Know-how and trade secret agreements
  • Confidentiality / non-disclosure agreements
  • Consulting and employment agreements
  • Software licenses (including open source licenses), web-related agreements, and escrow agreements
  • Software / product development agreements
  • Distributorship and reseller agreements (domestic and international)
  • IP holding company agreements
  • Brokerage agreements
  • University licenses (acting for the university or the licensee)
  • Material transfer agreements
  • CREATE Act agreements
  • Manufacturing and supply agreements for proprietary products

Our Services

Services provided by our Licensing & Transactions attorneys include:

  • Strategic counseling on scope and nature of proposed business arrangements, including:
    • Timing of and financial / non-financial terms in deals
    • Adoption of exclusive vs. non-exclusive agreements
    • Brand protection strategies
    • Advice regarding issues specific to the technologies and / or players involved 
    • Advice on implications of transactions on related company activities
  • Drafting and negotiating term sheets, licensing and other agreements
  • Evaluation of antitrust concerns and alternative deal structures
  • Counseling with respect to participation in standard setting organizations and other consortia
  • Crafting dispute resolution provisions and agreements
  • Counseling on potential insolvency complications in agreements
  • Counseling on acquisition and sale of assets, including purchase and sale out of bankruptcy
  • Providing connections with other service providers, technology buyers and brokers, financing sources, etc.
  • Preparing informational packages for use in presenting intellectual property for sale or license
View All Group Members

Representative Group Clients
  • Massachusetts Institute of Technology
November 21, 2014 - Dan Young offers tips for locking down assignment

November 17, 2014 - Bob Abrahamsen quoted on Vanguard's license agreement with patent troll

March 5, 2014 - Doug Wolf featured as the expert for the month of March

Network Signatures v. State Farm (decided 9/24/13) - Federal Circuit Stirs Up Questions about Unintentionally Delayed Maintenance Fee Payments

February 5, 2014 - WOLF GREENFIELD WEBCAST REPLAY: CRISPR/Cas-9 and the IP Landscape for a Revolutionary New Technology

January 30, 2014 - "Intellectual Property for Startups: Making It Work on a Limited Budget" Webinar - Replay Now Available

November 5, 2013 - John Strand quoted in Boston Business Journal on Medtronic case

October 18, 2013 - IP ALERT - European Patent Office Reverses Two-Year Deadline on Divisional Applications

October 17, 2013 - WOLF GREENFIELD SEMINAR: Strategically Building a Valuable Worldwide Patent Portfolio - Replay Now Available

September 9, 2013 - Pat Granahan and Ed Walsh present at AUTM's 2013 Eastern Regional Meeting

August 15, 2013 - Ten Wolf Greenfield Attorneys Named to The Best Lawyers in America 2014 List

August 2013 - Rainmaker Q&A: Wolf Greenfield's Edward Gates

June 2013 - Wolf Greenfield Attorneys Named to IAM 1000 World’s Leading Patent Practitioners List

Preston v. Marathon Oil (7/10/12) - IP Assignment Clauses May be Enforceable Without Additional Consideration

April 2013 - Wolf Greenfield Tops the Boston Business Journal’s List of Largest Area Intellectual Property Law Firms

April 10, 2013 - Rob Walat quoted in Mass High Tech

March 22, 2013 - Ed Walsh quoted on "first-inventor-to-file" changes

March 22, 2013 - Patrick Waller quoted on the "First-Inventor-to File" system

March 11, 2013 - Patrick Waller quoted in Law360 on first-to-file patent system

February 21, 2013 - Wolf Greenfield Attorney Recognized for Pro Bono Service by Women’s Bar Foundation

February 12, 2013 - Deadline approaches for patent protections

February 5, 2013 - Wolf Greenfield Named Elite Trademark Law Firm in World Trademark Report 1000

January 29, 2013 - Preparing for the “First Inventor to File” Transition

January 18, 2013 - Ed Walsh was quoted in a Law360 article on Patent Reform

October 22, 2012 - Fifteen Wolf Greenfield Lawyers Highlighted in 2012 Massachusetts Super Lawyers List

October 18, 2012 - WOLF GREENFIELD SEMINAR: What You Need to Know to Prepare for the "First Inventor to File" Transition - Replay Now Available

September 19, 2012 - Eleven Wolf Greenfield Attorneys Selected for 2013 Best Lawyers in America®

September 6, 2012 - Federal Circuit Establishes New Standard on Divided Infringement and Inducement

July 27, 2012 - Chelsea Loughran quoted in Law360 on the new First-To-File rules

July 9, 2012 - PerkinElmer Drops Mass Spec IP Suit Against Waters; Continues Case Against Agilent

June 2012 - Wolf Greenfield Named to IAM 1000 World’s Leading Patent Practitioners List

June 2012 - GBLS Recognizes Wolf Greenfield with 2012 Associates Drive Award

June 20, 2012 - WOLF GREENFIELD SEMINAR: So, You Think You Own It? Best Practices For Ensuring IP Ownership Is What You Want It To Be - Replay Now Available

December 2011 - Neil Ferraro Named 2012 Boston Patent Law Association President

January 3, 2012 - Wolf Greenfield Welcomes 2012 Promoting Seven Lawyers to New Positions

November 2011 - America Invents Act: The Implications of Patent Reform

October 12, 2011 - Wolf Greenfield Sponsored MIT Forum Event on October 12

September 2011 - Using Term Sheets to Your Advantage: Steps to Sharpen Your Strategy

September 9, 2011 - IP ALERT—Senate Endorses The Long-Awaited Patent Reform

August 8, 2011 - Patrick Waller was a panelist for a Licensing webinar hosted by ExecSense

General Protecht Group v. Leviton (decided 7/8/11) - Avoiding Implied Licenses Linked to Continuation Patents

April 12, 2011 - Top Five Overlooked Pitfalls in Inwardly Licensing IP

February 25, 2011 - Managing the Pace of Patent Applications

February 17, 2011 - WOLF GREENFIELD SEMINAR: Managing IP Risks: The Importance of Obtaining Freedom to Operate Guidance - presentation now available

January 1, 2011 - Wolf Greenfield filed 2,749 patent applications and 688 trademark applications in 2010.

December 2010 - Wolf Greenfield was ranked #1 in number of patents filed and number of patent attorneys in Mass High Tech’s annual survey

December 2010 - Building and Monetizing a Patent Portfolio

August 22, 2010 - Hunter Baker, Ed Gates and Chelsea Loughran presented at the American Chemical Society’s Fall National Meeting

June 2010 - Bilski ruling from US Supreme Court

July 2, 2010 - Industry Groups, Practitioners React To High Court Decision on Method Patents

July 7, 2010 - A Wolf Greenfield Webinar: Forecasting the Future of Method Patents Post-Bilski — archived replay of webinar now available

June 28, 2010 - CLIENT ALERT— Supreme Court Leaves Door Open to Business Method Patents

June 17, 2010 - WOLF GREENFIELD SEMINAR: Strategically Building and Monetizing a Patent Portfolio - replay now available

May 21, 2010 - How Reissue Applications Can Help You Save Your Patent

June 9, 2009 - How to Protect Your IP When Your Licensee is Facing Financial Difficulties

March 2, 2009 - Amicus brief filed for Bilski v. Doll

November 13, 2008 - CLIENT ALERT — Federal Circuit Preserves–with Modifications–Patentability of Business Methods

October 2008 - 10 Years After State Street Decision That Transformed Patents, Appeals Court May Reverse Field

October 2008 - 10 Years After State Street Decision That Transformed Patents, Appeals Court May Reverse Field

June 9, 2008 - No Downstream Royalties for LG: High Court

June 3, 2008 - Legal Climate for Open-Source Users Changes with Litigation and License Revisions, Wolf Greenfield Lawyer Writes in IP Law & Business

April, 2008 - Open Source Software: Recent Muscle-Flexing Adds New Risk

March 2008 - Top Trends in Intellectual Property Law for 2008

February 7, 2008 - An Entrepreneur's Guide to the Intellectual Property Galaxy

January 2008 - Licensing and Infringement in a Virtual World

September 2007 - Pharma Patents and Licensing Are Transformed by Landmark 2007 Court Decisions, Wolf Greenfield Lawyer Tells American Chemical Society

April 20, 2007 - CLIENT ALERT — Federal Circuit Decision Creates New Risks for Patentees But is Boon to Prospective Licensees

April 2007 - Federal Circuit Decision Creates New Risks for Patentees But is Boon to Prospective Licensees

March 21, 2007 - Wolf Greenfield Names Oyer President and Managing Partner - Lawyer/Scientist Takes Reins at Boston Intellectual Property Law Firm

July, 2006 - Buying or Selling Technology Licenses: Rewarding…But Beware

April 2006 - Navigating the Recent Ebbs and Tides of Business Method Patenting

September 2005 - Wrap it up - Why you should license your technology and brand

Q&A Booklet - Q&A on Licensing and Transactions