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Licensing and Technology Transactions


When effectively structured and executed, licensing and technology transactions generate significant economic value, leading to growth and competitive advantage. Nutter works with early stage to well-established companies on evaluating, structuring, drafting, and negotiating licenses, collaborations, customer agreements, and other technology and licensing law transactions. Our counseling covers a wide range of contexts that arise in the business, research, and nonprofit sectors.

Nutter’s licensing law team brings years of experience across many transaction structures, territories, product stages, and technologies, including transactions with other drivers, such as equity or R&D investment, option and stage-acquisition rights, complex financing and tax structures, and territory sharing. As licensing lawyers, we advise clients on a variety of complex transactions and novel deal structures, including:

  • Application service provider and infrastructure as service agreements
  • Co-development, co-commercialization, co-promotion, and marketing agreements
  • Discovery collaborations
  • Distribution, manufacturing, and supply agreements
  • Equity investments, credit facilities, and other off-balance sheet funding mechanisms
  • Hardware and software system purchase agreements
  • Intellectual property licensing, including patents, trademarks, and copyrights
  • Open source software
  • Option-based structures
  • Profit sharing and other complex financial arrangements
  • Research and development agreements
  • Reseller agreements
  • Royalty agreements
  • SaaS
  • Software license and subscription agreements
  • Spin-offs, divestitures, and out-licenses
  • Strategic alliances, joint ventures, and collaborations
  • Technology escrow agreements
  • Technology joint ventures
  • Technology license agreements

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Representative Matters

Representative Matters

  • Strategic Cyber LLC

    Nutter advised Strategic Cyber LLC in connection with its acquisition by HelpSystems, a Minnesota-based IT software company.

  • Bankruptcy Auction

    Nutter represented clients in restructuring and bankruptcy auction cases that involved transferring intellectual property assets.

  • Biofuels in patent litigation

    Nutter defended a producer of genetically modified organisms used in ethanol production in a jury trial during which a competitor alleged infringement of a patent directed to transgenic yeast. The parties ultimately entered into a mutually-beneficial joint agreement, which includes a license to the patent-in-suit.

  • Fortune 100 Company

    Nutter negotiated multiple distribution and licensing agreements on behalf of a Fortune 100 company with numerous U.S. and foreign manufacturers.

  • Golf Equipment Manufacturer

    Nutter represented a leading golf equipment manufacturer in complex cross-licensing matters involving patents, trade secrets, and trademarks.

  • Hotel and Leisure-Focused Private Equity Firms

    Nutter represented hotel and leisure-focused private equity firms in the licensing of their iconic brands throughout the world.

  • Large Regional Bank

    Nutter negotiated a platform development and license agreement on behalf of a large regional bank as licensee to help the bank use technology to help its business customers assess and optimize their financial performance.

  • Life Sciences Startup

    Nutter represented inventors in a spin-out of technology into a newly-formed entity funded by a publicly-traded international life sciences company.

  • Medical Device Manufacturer

    Nutter represented a medical device manufacturer in building and operating a Chinese joint venture.

  • Multiple Fintech Companies

    Nutter organized joint venture documentation, incorporating intellectual property licensing terms, for multiple fintech companies.

  • National Women’s Hockey League

    Nutter represented the NWHL in connection with its preparation of the NWHL 2021 Season in Lake Placid, including securing a broadcast agreement with NBC Sports Network and a venue agreement for the event with the Herb Brooks Arena. Nutter also represented the NWHL in connection with its reorganization to an unincorporated association and new governance model, resulting in the original six NWHL member clubs being subject to the terms of the NWHL Constitution and Bylaws with each of the member clubs being represented on the NWHL Board of Governors.  

  • Operator for Multiple Software Companies

    Nutter drafted co-development and reseller agreements and negotiated SaaS platform agreements on behalf of an operator for multiple software companies.

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