Practice Areas

Non-Profit Technology Transfer

Our Technology Transfer Services Include:

For over 50 years, Marshall, Gerstein & Borun has assisted non-profit institutions in bringing developments from research environments into the mainstream, to advance a wide and diverse range of scientific and technological endeavors for the benefit of the global community. In connection with these efforts, we apply our business and legal acumen and experience to the commercialization of our clients’ intellectual work product, generating vital revenue for continued critical research, development and licensing efforts.

MGB understands the changing climate of technology transfer and is sensitive to the budgetary constraints of our clients, we strive to provide sophisticated technology transfer counseling in an efficient, cost-effective manner.

Our attorneys and professional staff contribute substantial and varied experience to every engagement, including backgrounds as former technology transfer managers at non-profit institutions, diverse technical training and knowledge of intellectual property litigation, licensing and patent prosecution and litigation. Our experience allows us to deal effectively with many of the issues non-profit institutions commonly face, such as: invention evaluation; inventorship disputes; the need for clear and timely recommendations for protecting intellectual property rights; managing deadlines to avoid extension of time fees; research collaboration and license agreements; deal maximization and creative negotiation; and dealing with inventors with external priorities.

Our Technology Transfer Services Include:

• Structuring institutional intellectual property policies
• Preparing and evaluating invention disclosures
• Drafting 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-profit institutions
• Assisting in drafting materials for marketing technology and valuation
• Devising portfolio licensing strategies
• Auditing patent and license portfolios to identify unused or underused intellectual property
• Patent litigation and litigation to enforce licenses and other agreements
• Developing and presenting educational seminars on all aspects of intellectual property and the technology transfer process