Kenyon & Kenyon LLP’s licensing practice group concentrates on the domestic and international transfer of technology and other intellectual property rights. We handle licensing work on behalf of clients in industries including manufacturing, computer hardware and software, electronics, automobiles, federal government contracting and defense, telecommunications, pharmaceuticals, chemicals, biotechnology, medical products and devices, literary works, and art and sculpture. Our licensing practice is ranked in the top tier nationwide by The Legal 500 US, which notes that Kenyon’s “premium and institutional client base speaks volumes for the quality of the work that its licensing lawyers undertake year in and year out.” In addition, our lawyers are ranked in IAM Licensing 250 as being among the top patent licensing lawyers in the world.
We couple our technical experience with our comprehensive IP knowledge to create teams that are able to ensure that our clients engage in sophisticated licensing transactions which protect their myriad of IP rights. Beyond evaluating the IP rights involved, such advice and counseling includes setting the parameters of the licensing program, preparing and negotiating the license, counseling on when licensing should be undertaken and when the client may want to reserve rights without licensing, and the valuation of each of the IP rights being licensed. This type of counseling is undertaken in both litigation and non-litigation contexts, each of which brings its own set of parameters to a licensing strategy.
All licensing must involve the practical considerations of return on investment. To ensure that the licensor maximizes this effort, we evaluate the need for re-sale restraints, fielded use restrictions, and exclusive or non-exclusive arrangements. We are particularly sensitive to the issues of “exhaustion,” where rights may be inadvertently lost if not licensed properly. Often, our attorneys are involved with the client’s marketing and valuation efforts, which enables us to make certain that the rights being licensed are only those needed for a particular marketplace.
We license IP rights in the U.S. and around the world. We have developed an expertise in licensing with the European Economic Commission (“EEC”), whether it is through group block exemptions or license agreements that require the EEC’s approval. To ensure that the license agreements we negotiate in Europe meet the standards of the EEC, our attorneys consult with European associates with whom the firm has long-standing relationships. Our worldwide experience includes licensing activities in Asia, Europe, South America, and the United States.
Licensing matters often require a team approach. When drafting and negotiating a patent license, we form teams that include attorneys with the applicable technical backgrounds. When trademark issues arise, we draw on the experience of attorneys that have been involved in both sides of the licensing transfer of famous marks for major corporations, such as AT&T; DoubleClick; General Mills; Intel; Martha Stewart; Marvel Enterprises, Inc.; and Motown Live, among others. We also draw on the experience of our copyrights attorneys, who have handled licensing matters involving a broad spectrum of fields and types of copyrighted works, including negotiating and preparing numerous copyright license agreements for computer software both from the licensor’s and the licensee’s perspective.
Antitrust and Misuse Law
Many of our licensing attorneys have extensive experience in antitrust and misuse law, which affect the legitimate scope of any license transaction. Members of the licensing practice are familiar with the U.S. Department of Justice guidelines and the Federal Trade Commission (“FTC”) guidelines for licensing in the U.S. and have litigated numerous disputes involving misuse and antitrust claims attacking improper licensing activities.