Marshall, Gerstein & Borun LLP

Non-Profit Technology Transfer

For over 50 years, Marshall, Gerstein & Borun has provided non-profit technology transfer services to assist institutions in their efforts to evaluate, protect, enforce, defend and commercialize research disclosures.

As former technology transfer managers at non-profit institutions, we have first-hand knowledge of the issues facing non-profits from managing inventorship disputes and inventors with external priorities, to the need for clear and timely recommendations for protecting intellectual property rights. We also understand the effect the research environment has on university agreements, from government funding requirements to prior collaborations and material transfer issues.

We know there is a need to maximize value early in the patent life-cycle and through creative license agreement structures. We are skilled at managing patent portfolios and negotiating complex intellectual property agreements with sensitivity to timelines and budgetary constraints.

Our Technology Transfer Services Include:

Counseling and evaluating institutional intellectual property policies, including regarding socially responsible licensing.
Preparing and evaluating invention disclosures and prosecuting patent applications with a sensitivity to claim scope likely to be desired by a licensee.
Structuring agreements such as: nondisclosure, material transfer, research, clinical trial, joint development, inter-institutional, consulting and all forms of intellectual property licenses tailored to the needs of non-profits.
Devising portfolio licensing strategies.
Negotiating agreements to execution within a tone and approach reflective of being in non-profit technology transfer.
Auditing patent and intellectual property agreement portfolios to identify unused or underused intellectual property and out-licensing opportunities.
Enforcement and defense of intellectual property rights and intellectual property contracts.
Developing and presenting educational seminars on all aspects of intellectual property and the technology transfer process, including Bayh-Dole compliance.

Case Studies

On behalf of Loyola University of Chicago, Marshall, Gerstein & Borun has 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% 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 who 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.
Scott & White Healthcare, one of the nation's largest multi-center healthcare systems, worked with Marshall, Gerstein & Borun as they considered revising their intellectual property policy. The IP Transactions 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.
The Wallace H. Coulter Foundation has a unique philosophy in making grants to develop new health care technologies. The foundation looks not only for cutting-edge science, but also projects that are likely to quickly lead to commercial products that benefit patient outcomes. Knowing that the patent protection for a new technology and freedom from infringement are keys to a successful product, the foundation has partnered with Marshall, Gerstein & Borun to help assess the merits of projects under consideration for grants, improve the patent positions of funded projects and educate their researchers as they navigate through patent and licensing law.
NUtech Ventures, a client of the Firm, and Bayer CropScience AG executed a collaboration license and germplasm transfer agreement that focuses on wheat improvement. The agreement makes also provision for an endowed professorship at the University of Nebraska-Lincoln, support for UNL research and education programs, 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 & Borun 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.