Strategic Counseling and Transactions

Often, intellectual property rights are exploited by commercializing the technology protected by those rights. Even if a company lacks the resources to commercialize the technology, the company may still derive value from its intellectual property rights by licensing the technology to third parties, either to generate a revenue stream or to gain access to a market. Thus, the strength of a company's intellectual property portfolio can greatly impact the overall value of the company. In addition, being aware of intellectual property rights enables companies to avoid intellectual property disputes, since companies sensitive to their own intellectual property rights will likely be sensitive to the rights of others.

The attorneys at Edell, Shapiro & Finnan are experienced in analyzing information and providing opinions that inform and guide corporate decisions. Our attorneys work with clients to not only identify potential intellectual property rights, but also to maximize the value of those rights. We assist clients in maximizing opportunities for generating value from their innovations by identifying protectable subject matter. We further assist clients in avoiding intellectual property disputes by identifying third party rights. We counsel clients in valuing not only their intellectual property rights, but also in evaluating risks associated with the intellectual property rights of others.

Opinions

Our clients rely on our opinions to make fundamental decisions regarding business activities. The attorneys at Edell, Shapiro & Finnan provide counseling on development of corporate policies and procedures relating to the procurement of patents and preservation of trade secrets. We provide opinions on freedom to operate, validity, infringement and non-infringement, design-around, third party rights, patent ownership, and inventorship matters. We also counsel clients through early-stage product development, risk management and litigation avoidance, prior art searches, patent disputes, patent enforcement, and potential and ongoing litigation.

Licensing & Agreements

The attorneys of Edell, Shapiro & Finnan assist companies with the strategic transfer of rights in proprietary technologies. Our attorneys advise clients on the procurement and licensing of intellectual property rights, including negotiating and drafting complex agreements to obtain, protect, and commercialize those rights. We assist clients in various intellectual property related agreements, including intellectual property asset purchase agreements, intellectual property license agreements, noncompete agreements, nondisclosure and confidentiality agreements, independent contractor agreements, employment and consulting contracts, cooperative research and development agreements, license option agreements, lien and security interest agreements, material transfer agreements, and research and development agreements.

Mergers and Acquisitions

Our attorneys frequently work with clients who acquire companies, assessing the status of the acquired company’s intellectual property assets, as well as the acquired company’s potential liabilities. The firm provides due diligence services to businesses interested in acquiring intellectual property assets or in participating in mergers and acquisitions. Our attorneys evaluate the strength and enforceability of the subject intellectual property portfolio in light of the objectives of the client. Our goal is to provide clients with an understanding of the scope, enforceability, and risk/reward issues surrounding such intellectual property transactions so they can engage in intelligent risk management.