Non-Profit Technology Transfer — Helping Institutions Protect and Commercialize Inventions

Many of the world’s most important, breakthrough technologies began as research discoveries in universities, hospitals, research institutes, and government agencies. The non-profit research sector continues to fuel the growth of innovation and life-enhancing products and services. The experienced IP attorneys of Marshall, Gerstein & Borun help non-profit clients evaluate, protect, and commercialize their research discoveries and inventions, while navigating government funding requirements, contractual restraints, and other IP-related issues in this highly complex environment.

Decades of experience
Marshall Gerstein has decades of experience handling IP issues on behalf of non-profit institutions. Early in our history, we represented the Board of Trustees of the University of Illinois before the U.S. Supreme Court in Blonder Tongue Laboratories, Inc. v. University of Ill. Foundation, 402 U.S. 313 (1971). Today, we provide ongoing counsel to over 50 non-profit institutions across the full spectrum of IP matters, from providing clear and timely recommendations for developing and implementing IP protection strategies to managing inventorship disputes and high-volume patent portfolios.

In-house, institutional knowledge
Our team includes former technology transfer managers at non-profit institutions. We have first-hand knowledge of the issues and priorities of institutions, their corporate collaborators, and individual researchers and academics. We also understand the technologies and scientific principles that underlie new inventions and products, and are sensitive to the timelines and budgetary constraints that affect our clients’ research activities. Our attorneys are thought leaders, authoring articles on technology transfers and IP issues in journals such as Intellectual Property Magazine, Managing Intellectual Property, and InsideCounsel. We speak regularly at seminars and industry conferences such as the Global Healthcare Innovation Alliances Symposium and at meetings of the Licensing Executives Society, the American Intellectual Property Law Association, and the Association of University Technology Managers, as well as at technology-specific meetings such as the annual Biotechnology Industry Organization convention and American Chemical Society meeting.

Multidisciplinary approach to asset protection
We assist institutions at every step along the product-development path, protecting creative assets through patents, trademarks, and copyrights. Our patent prosecution team is skilled in all key disciplines of science and engineering and regularly evaluates invention disclosures, prosecutes meaningful claims, and develops broad-based portfolio management strategies. Our trademark attorneys help non-profits protect their reputations and leverage IP assets, and we handle clearance, registration, licensing, monitoring, and enforcement of trademark rights. Our copyright practice is skilled in the strategic use of copyrights, including in the software arena and with regard to ownership and use issues.

Effective negotiators focused on the end game
At Marshall Gerstein, we develop sophisticated licensing and transaction strategies, stay abreast of rapidly changing legal issues, and create enforceable agreements for each unique IP transaction. With the benefit of a 360° view of IP transactions, having sat on all sides of the negotiating table, and our deep experience representing non-profit organizations, we deliver creative yet practical solutions that help align and achieve our clients’ long-term goals. We regularly advise clients in negotiating funding, collaborations, acquisitions, and policy interpretations.

Strategically resolving disputes
In pursuing a client’s objectives, our litigators are as comfortable mediating or arbitrating a dispute as they are taking a case to trial. While we understand the circumstances that may give rise to disputes and help clients implement proactive, preventive measures to minimize risk, disputes that cannot be resolved through amicable means are handled by litigators who possess significant courtroom experience and a strong record of success in intellectual property and contract litigation.

Representative matters

  • Enabling Technology Development to Heal Those Who Protect Us
    The Non-Profit Technology Transfer team led the drafting and negotiation efforts to finalize 60 subcontracts for the Institute for Regenerative Medicine at the Wake Forest School of Medicine as part of the effort to initiate the second phase of the Armed Forces Institute of Regenerative Medicine (AFIRM). A consortium of more than 30 academic institutions and industry partners, AFIRM is focused on applying regenerative medicine to battlefield injuries. Wake Forest Institute for Regenerative Medicine was selected to lead the second phase of the federally funded program. Nearly 200 patients received treatment with technologies developed under the first phase of the AFIRM program, including the first double hand transplant in the United States, face transplantation, and innovative treatments for scar reduction and burns.

  • Helping Clients Feed the World
    We represented NUtech Ventures, a client of the Firm, and Bayer CropScience AG in negotiating and executing a collaboration license and germplasm transfer agreement that focused on wheat improvement. The agreement also included provisions for an endowed professorship at the University of Nebraska-Lincoln (UNL), support for UNL research and education programs, support for UNL's first Presidential chair named for the Nebraska Wheat Growers, and plans for Bayer to establish its first North American wheat-breeding station near Lincoln. Marshall Gerstein is privileged to have worked side-by-side with NUtech Ventures, UNL, world-renowned UNL wheat breeder, P. Stephen Baenziger, and Bayer to draft and negotiate this expansive agreement that facilitates this wheat-breeding research partnership.

  • Ensuring Access to Cancer-Preventing Medications
    On behalf of Loyola University of Chicago, Marshall Gerstein prosecuted and obtained patents around the world covering Cervarix® (Human papillomavirus bivalent vaccine, recombinant), which protects against Type 16 and Type 18 of the HPV virus that causes 70 percent of cervical cancers. The vaccine was invented at Loyola, and the Firm represented Loyola when its ownership was unsuccessfully challenged by MediGene AG. The Firm also renegotiated Loyola's license with GlaxoSmithKline, which now manufactures and sells Cervarix® (Human papillomavirus bivalent vaccine, recombinant). This long-term client relationship is sustained by combining the skill and experience of the Firm's patent prosecutors, litigators, and IP transactions attorneys.

  • Developing a Full-Spectrum IP Program for a Multi-Center Healthcare System
    Scott & White Healthcare, one of the nation's largest multi-center healthcare systems, worked with Marshall Gerstein as they considered revising their intellectual property policy. The team has developed, restructured, interpreted, and advised on numerous university, institute, foundation, and hospital intellectual property policies, drawing on the Firm’s depth of understanding of prosecution and litigation matters related to inventorship, ownership, and non-profit technology transfer.