Massachusetts is a hotbed of licensing activity for several reasons: Boston is one of the country’s foremost life sciences hubs and, with large life sciences companies licensing technology in order to generate new product opportunities, partnering and collaboration in the sector is on the rise. Massachusetts is also home to a growing clean-tech industry, with solar photovoltaic power a keystone of its green energy economy; the rise of this technology area is creating exciting opportunities for licensing. The market is home to some of the world’s leading universities and research institutes creating new technology which is often eventually commercialised through licensing. As a result, there is a wealth of licensing expertise among the state’s leading law firms and arguably the greatest concentration of such expertise outside of California.
Full service Boston firm Choate Hall & Stewart offers the full range of IP services, from prosecution to licensing and enforcement. Its transactional experience and expertise traverse an extremely broad range of scientific and technological fields, including life sciences, computer hardware, software and telecommunications. It has gained a formidable reputation in open source software and business models through the work of partner Karen Copenhaver, a “practical and approachable lawyer with extremely deep expertise”. Also recommended is of counsel Elizabeth Walker, who focuses on software, telecommunications and biotechnology. “She is quick to get right on top of highly complex issues.”Foley & Lardner LLP
While the greater part of this firm’s focus lies in IP litigation, “it undertakes quality licensing work and is very talented at it”. Its well-equipped array of lawyers tackle licensing from different angles – for example, from a litigation or a strategic counselling perspective – and its interdisciplinary approach to licensing serves clients well, with licensing advice not provided in a vacuum, but given in the context of the client’s wider IP needs and goals. Exemplifying this versatile approach is Matt Lowrie, who chairs the IP litigation practice. With his combination of patent litigation expertise and prior corporate experience, his holistic approach to licensing promotes the commercial objective of the agreement while minimising the chances of subsequent litigation. Information technology, telecommunications, semiconductors and medical devices are among his main sectoral strengths.Foley Hoag LLP
Foley Hoag’s licensing and strategic alliances group offers clients a comprehensive skill set in the patent and technology arena. The team handles a tremendous volume and variety of licensing and IP transactions spanning a broad spectrum of technologies, although computer hardware and software and life sciences are particularly solid niches. It has a considerable number of practitioners focused primarily on licensing and other forms of IP monetisation, and its specialisation in this practice area helps to set it apart from competitors. “The firm has retained some hugely talented lawyers”, with Bruce Parker identified as a key contact. A “deep thinker with a strong legal and business mind”, he “really adds value to the equation with his combination of licensing and antitrust expertise”.Goodwin Procter LLP
In the Boston life sciences market, for many commentators one name stands out: Goodwin Procter. The firm garners recommendations for the strength of its expertise across the United States, as well as internationally. Representing emerging, venture-backed biotechnology companies and young public companies, it also maintains a green technology industry team and is making a name in this burgeoning sector. The firm offers a winning combination of deep industry knowledge and practical legal expertise, as well as extensive experience and specialisation in licensing and technology transactions. In Kingsley Taft, the group has a lawyer who is “as good as you will find anywhere”. He is held in extremely high regard as an expert with “tremendous character, immense intelligence and outstanding sophistication of knowledge and thought”. Recent highlights include advising Lycera in connection with a multimillion-dollar research and development collaboration deal with Merck & Co.GTC Law Group LLP & Affiliates
GTC is immensely popular and “clearly head and shoulders above many competitors”. It prides itself on its strategic nous, and with good reason: “When it comes to strategy, GTC is much more creative than others and gives clients a wider range of strategic options, which is extremely advantageous.” It undertakes a varied diet of transactional work for large software companies, although its core practice concerns acting for venture-backed, emerging companies. It is instructed in every industry involving venture capital, but clean tech is a forte. GTC is increasingly active in the life sciences sector, where it primarily represents biotechnology and medical device companies. As a virtual law firm, in the minds of clients it is “extremely cost effective” and the model has allowed it to attract “the best of the best”. Key figures include Tom Hemnes, an “incredibly smart, statesmanlike lawyer who provides topof- the-line solutions to clients”. A “highly effective negotiator who understands the key issues to focus on”, he “always gets the deal done”. Also admired is the “uniquely creative” Charles Cella, a “top-flight IP strategist whose advice gets to the very heart of issues”.Lando & Anastasi LLP
Although best known for its sizeable patent prosecution practice, this respected IP boutique offers a wealth of expertise on patent and technology licensing. Massachusetts is an epicentre of venture capital investment in technology and Lando & Anastasi undertakes a raft of work for the start-up and venture-backed community; it is a popular choice among earlystage companies, entrepreneurs and investors in a variety of industries. With its prosecution practice, it boasts a deep bench of technologists and its transactional lawyers can tap into this technical expertise. The team recently provided critical input on the drafting and negotiation of high-level deals in the clean energy sector. It is led by Peter Lando, who is “clearly outstanding in terms of his knowledge of IP law”; “what he brings that is truly difference-making is his interest in, and ability to understand, his clients’ business and goals.” He also wins praise for his negotiating skills: “The creative solutions that he provides in difficult negotiations really enable deals to move forward.”Ropes & Gray LLP
Ropes & Gray wins the utmost respect on the national and international stage for its expertise in patent and technology licensing, and can handle any type of deal driven by IP or technology assets. What sets it apart is its “inherent understanding of the need to be commercial: it doesn’t get bogged down in the detail and can navigate complex deals that move at a fast pace”. It is unanimously regarded as a “major player that has a full command of the process of complex dealmaking”. Recently, the move towards proprietary technology-based management in the investment industry has been a significant source of activity; clients in this space include hedge funds such as Tudor Investment Corporation, which benefit from the firm’s toptier investment management and IP and technology practices. Its enviable client roster covers a variety of sectors, including manufacturing, where it acts for Emerson Electric Company – recently advising the global company in connection with its US$1.2 billion acquisition of Avocent. Heading the IP transactions practice, Edward G Black is an “approachable, extremely intelligent, practical and results-oriented lawyer” with whom clients really bond. Life sciences specialist Geoffrey Davis is a “top practitioner in the field and a hugely experienced negotiator”.Wilmer Cutler Pickering Hale and Dorr LLP
This full service powerhouse possesses a “top-drawer licensing capability” to complement its renowned expertise in patent litigation. As licensing has become a more significant plank in clients’ business strategies, the IP transactional practice has flourished. Lawyers within the group have handled some of the most strategically important, high-value transactions in the market, particularly within the life sciences sector – a traditional stronghold. The firm’s licensing and technology transfer team is sizeable, with several members drawing praise from market commentators. Software and patent licensing expert Michael Bevilacqua is a “tough negotiator with real business savvy and a highly practical lawyer who could write the book on licensing”. The experienced Jeffrey Johnson maintains a diverse practice representing a mix of both large public and private companies and new start-ups in a range of sectors, from energy to software and financial services. Al Server focuses on partnering and collaboration within the life sciences sector. “He does licensing all the time and is a highly experienced and strong competitor in the sector.”Wolf Greenfield & Sacks PC
Respected IP boutique Wolf, Greenfield & Sacks is highly recommended for its “outstanding expertise in technology”, which is “deeper than many of its competitors in the market”. The firm has a strong bench with solid experience in all forms of agreement, and its lawyers are known for their understanding of clients’ business goals and the attainment of those goals through licensing. The firm has won considerable acclaim in the transactional arena thanks to the hard work of leading light and current chairman Edward Gates. Licensing is a mainstay of his practice, alongside portfolio management and development, interference work and general counselling. Predominantly life sciencesoriented, “he has a very strong practical and commercial wisdom when it comes to licensing” in this sector.
John Ottaviani of Edwards Wildman Palmer earns plaudits for his expertise in licensing, collaborations and other types of strategic alliance. “He is extremely strong when it comes to the intersection of business law with intellectual property.”