Intellectual Property Licensing

Experience

Providing Dependable Support and “Real” Value

Client: LBP Manufacturing LLC

When Clinton Hallman, Jr. joined LBP Manufacturing LLC as their chief counsel in 2015, he made sure to retain his contacts with Dinsmore. Dinsmore provided outside counsel to other companies of which Clinton was a part, and he knew he could depend on our attorneys to provide similar support to LBP.

“I knew Dinsmore offered quality legal services and offered a real value,” Hallman said. “I always felt like I got exactly what I needed and never anything that I didn’t ask for.”


LBP specializes in food service packaging, creating products used at all levels of meal preparation and service. Dinsmore supports the company by partnering with Hallman during negotiations and dispute resolutions over commercial contracts, crafting patent and licensing agreements, and counseling on licensing and intellectual property.

Distribution and Channel Partnering Agreements

Our firm prepared distribution and channel partner agreements for Standard Register Company's Digital Pen and Paper System. In addition, we drafted end-user license agreements (EULA) for the Digital Pen and Paper System. Utilizing a combination of strength from our corporate department and intellectual property practice group allowed for quick understanding of the technology and the unique issues that it presented.

IP Licensing/Agreement Experience

Our attorneys have drafted a wide variety of agreements for clients to help them protect their intellectual property. Since 2011, we have drafted more than 575 total agreements, which can be broken down as follows:

Development Agreements (70)
  • Independent Contractor Agreements (15)
  • Talent Agreements (15)
  • Presenter Agreements and Content Provider Agreements (10)
  • Joint Ownership Agreements (10)
  • Production Agreements (10)
  • Employee Invention Policy and Agreements (5)
  • Joint Development Agreements (5)

Litigation-related/Dispute Agreements (55)
  • Pre-Litigation Settlement Agreements (15)
  • Trademark Trial & Appeal Board Settlements (15)
  • Co-Existence Agreements (10)
  • Litigation Settlement Agreements – Patent Disputes (5)
  • Litigation Settlement Agreements – Trademark Disputes (5)
  • Joint Defense Agreements (5)

License Agreements (155)
  • Software License Agreements (35)
  • Patent License Agreements (35)
  • Trademark License Agreements (20)
  • End User License Agreements (15)
  • Subscription Agreements (10)
  • Software as a Service (SaaS Agreements (10)
  • Channel Partner Agreements (10)
  • Pilot Agreements (10)
  • Copyright License Agreements (5)
  • OEM License Agreements (5)

IT-related Agreements (170)
  • Terms of Use and Privacy Policy (35)
  • Healthcare-related IT Agreements (30)
  • Software IT Agreements (25)
  • Hardware IT Agreements (25)
  • Master Client/Service Agreements (25)
  • Support and Maintenance IT Agreements (15)
  • Reseller Agreements (15)

Research Agreements (55)
  • Advanced Research Agreements (25)
  • Materials Transfer (20)
  • Cooperative Research and Development Agreements (10)

Misc. Agreements (55)
  • Non-Disclosure Agreements (25)
  • Participant Agreements (10)
  • Exclusive Sales Representation Agreements (5)
  • Termination Agreements (5)
  • Domain Purchase Agreements (5)
  • Domain Escrow Agreements (5) 
     
     
     
     
     

IP Portfolio Development; Patent and Licensing Strategy

We worked with our client, a startup software company, to develop cost-effective strategies to optimize protection of core technologies, to analyze competitor patents for clearance and patentability issues, and to approach potential partners for licensing opportunities.

Representation of Pharmaceutical Companies

Representation of many pharmaceutical companies with licensing of products, acquisition and divestitures of assets.

Research and Licensing Agreements

Our firm represented a large company in the automotive industry in the preparation and prosecution of patent applications related to numerous technologies in its IP portfolio, and in preparing and negotiating research agreements with universities. We assisted in implementing cost-effective procedures for conducting patentability analyses and patent preparation for a stream of invention disclosures.

Software Licensing and Use Agreements

Represented Standard Register in negotiating and preparing approximately thirty (30) software licensing and use agreements in 2005 and 2006, between Standard Register and its customers to use software owned by Standard Register.

Tech-Licensing Agreements for “Robot Combat League” Television Series

We provided counsel, analysis and revisions to multiple development agreements between our client, Smart Dog Media, (a production company) and a robotic engineering company which was developing robots and robotic technology for the television series, “The Robot Combat League,” currently televised on the Syfy Channel.