Himanshu S. Amin
Managing Partner
Cleveland
BS Electrical Engineering · USPTO reg.
Technology Transactions
Where the intellectual property actually changes hands.
Licensing, joint development, and technology transfer agreements decide who owns the improvements, who carries the indemnity, and what happens to the portfolio when the relationship ends. Those terms are written by people who understand the patents underneath them.
We negotiate and draft patent and technology license agreements, joint development and collaboration agreements, assignments, and the intellectual property provisions inside supply, manufacturing, and services contracts. We advise on ownership and inventorship questions arising out of collaborations, university relationships, and contractor arrangements — the questions that are cheap to answer at signature and very expensive to answer afterwards.
Because the same team handles prosecution and litigation, transaction work is informed by what a portfolio can actually support, and portfolio strategy is informed by what the deals require.
Improvements, field, and the end of the relationship
Three terms carry most of the risk in a technology agreement: who owns improvements, how the field of use is bounded, and what survives termination. They are also the three most often drafted by analogy to a previous deal that had a different technology underneath it. A field-of-use limit that made sense for a component reads very differently once the same invention ships inside a platform.
Inventorship is not a formality
Joint development produces joint inventions, and US law gives each joint owner the right to license the whole patent without accounting to the other. Collaborations that never addressed this discover it later, usually when one party wants exclusivity it no longer has the power to grant. Getting inventorship and ownership right at the outset is among the highest-leverage things a technology lawyer does.
Team
6 professionals in Technology Transactions
Thomas E. Watson
Managing Partner
Seattle
BS Electrical Engineering · USPTO reg.
Deidra Ritcherson
Partner
Atlanta
BS Electrical Engineering · USPTO reg.
Gerardo C. Orlando
Of Counsel
Cleveland
Alexander H. Amin
Associate
Atlanta
Brian M. Baker
Associate
Cleveland
BS Biomedical Engineering · USPTO reg.