Intellectual Property Strategy, Portfolio Management and Licensing
Strategic Patent Portfolio Development and Management
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.
Dunlap Codding has negotiated numerous contracts for “licensing in” and “licensing out” all kinds of technologies for its clients. These negotiations run the gamut from licenses with the government of the former communist East Germany to joint development agreements among international mega-corporations.
Our attorneys have firsthand experience in the acquisition and divestiture of numerous businesses having both U.S. and global assets that 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.
To maintain its skill in this field, lawyers at the firm have been members of the prestigious Licensing Executive Society International (LESI) from its inception. Douglas J. Sorocco, a Dunlap Codding shareholder was recently the Oklahoma Chairman for the LESI, and Dunlap Codding is Oklahoma’s most significant participant in the organization. The unique association with LESI allows Dunlap Codding to offer its clients direct access to other licensing professionals from around the world, in both the public and private sectors.
Our team of licensing professionals is fluent in the complexities of:
- Licensing in and licensing out
- Joint development agreements among international corporations
- Development of “licensing packages” built around platform technologies—licensed along with “know how” and “show how” to international corporations and governments
- Cross licensing as a resolution of patent and other disputes
- Complex license agreement negotiations, including front-end engineering packages, patents and technical information in support of the design, construction and commissioning of large scale chemical manufacturing facilities in global regions such as China, India, Brazil
- Licensing in connection with acquisition and divestiture of business operations