New York’s booming licensing scene is diverse, with many different kinds of firm represented across the market. Clients are spoiled for choice: at one end of the spectrum are corporate and M&A heavyweights such as Simpson Thacher and Skadden, Arps, Slate, Meagher & Flom, both of which receive glowing testimonials for their work on technology-driven, large-scale corporate deals. At the other are the city’s notable IP boutiques, such as Fitzpatrick Cella Harper & Scinto; while many commentators perceive a shift away from the boutique model in recent years, there is no doubt that specialist IP firms are still key players, thanks to their in-depth knowledge of patent law and breadth of technical expertise. Several firms headquartered outside New York also join the throng, such as the West Coast’s Morrison & Foerster, Ropes & Gray of Massachusetts and Texan firm Baker Botts. Information technology drives much of the market’s activity, with financial services clients particularly thirsty for IT outsourcing and licensing expertise; life sciences is likewise a bountiful source of transactional activity. Media technologies, nanotechnology and microchips are other areas of focus for New York’s licensing practitioners. International work is the meat and bread of many firms in the city, and those with cross-border expertise – which include many of those on the ranking table – tend to flourish in the licensing arena.
Baker Botts maintains an impressive team of licensing experts in its New York office, whose broad technical expertise and deep-seated deal experience make it a go-to firm in the national and international licensing arena. The dynamic duo of Robert Scheinfeld and Paul Ragusa are singled out for special acclaim. Scheinfeld, who heads the New York IP team, “possesses a deep understanding of technologies and patents, and has the ability to give a detailed and accurate analysis of complex issues”. Clients appreciate his strategic acumen in both licensing and litigation scenarios, and his in-depth hightechnology expertise, which ranges from electronics to telecommunications, software and e-commerce. Also feted for his semiconductor work, he recently represented Renesas Electronics in discussions with Hynix Semiconductor regarding the licensing of the Renesas patent portfolio. Meanwhile, Ragusa enjoys a varied diet of IP mandates encompassing patent portfolio management, litigation, licensing and general counselling. “He is extremely skilled and has an unparalleled and rare knowledge of patent pool formation.”Fitzpatrick Cella Harper & Scinto
This venerable IP boutique excels in the transactional arena and has a long history of advising clients on their most complex and commercially significant IP agreements. Ontap technical expertise in almost any sector is a hallmark of the practice, although life sciences, alternative energy and electronics are focal points. Its breadth of transactional activity is impressive: in addition to drafting and negotiating all kinds of licensing and technology transfer agreements, the group handles IP due diligence as well as public offerings, joint ventures and M&A and other corporate transactions. A diverse clientele notably includes numerous foreign companies attracted not only by the quality of the firm’s licensing work, but also by the comprehensiveness of its expertise across IP law. Robert H Fischer is the firm’s premier licensing attorney and an outstanding litigator to boot. Seasoned deal experience is his chief draw, along with the ability to analyse commercially clients’ licensing opportunities within the scope of their wider IP needs.Frommer Lawrence & Haug LLP
Respected IP firm Frommer Lawrence & Haug maintains a specialised licensing and IP transactions practice group, with expertise spanning the full spectrum. Life sciences sector is a traditional stronghold, although it also boasts an equally capable high-technology practice, which has recently grown following the acquisition of a Seattle office – a move which expanded its client base significantly, particularly among online companies. Within life sciences, human and animal biotechnology is a particular specialism and the licensing of university and research institution intellectual property and technology is thus a niche area of expertise. Clients benefit both from the firm’s transactional capabilities and from its deep knowledge of antitrust and regulatory law. Settlement licensing is another area of focus that helps to drive the practice. Mary Ann Lemere is a key point of contact for licensing. With her in-house experience and diverse practice encompassing litigation and licensing, she has a sophisticated understanding of clients’ commercial IP objectives.Goodwin Procter LLP
Goodwin Procter’s coast-to-coast patent and technology licensing practice wins national and international acclaim, and its brand is synonymous with expertise on the transactional side of intellectual property. The team is imbued with entrepreneurial spirit and its commercial approach is seen to set it apart in the market. Experience is another main attraction: there are few types of transaction involving technology or intellectual property that it has not already seen and done. While the Boston office, spearheaded by the inestimable Kingsley Taft, wins plaudits for the depth and quality of its life sciences practice, the group in New York is better known for its high-technology slant, with cutting-edge clients in areas such as digital media, mobile telecommunications and clean tech. These are all fields with which Jeffrey Klein is intimately conversant. While he has a wealth of experience representing technology companies at the top of the food chain, assisting early-stage companies is a particular passion and his ability to help such companies to shape their commercial direction through licensing and other means is a USP.Jones Day
Internationally, Jones Day is one of the bestresourced firms in the market for patent and technology licensing: a cohesive unit, comprised of 70 attorneys across its global network, is almost exclusively dedicated to the acquisition, transfer and exploitation of intellectual property and technology. Firmwide expertise and experience in almost every deal structure involving all kinds of technology are on offer. The team also partners with the firm’s sizeable corporate and M&A group to extend its technology transactions reach. Pharmaceuticals is a particular forte, and is likewise a point of emphasis for leading light Warren Nachlis. Sources highlight his scientific background – he has a doctorate in polymer science and engineering – and praise his understanding of a researcher’s mindset and how laboratories operate. “He is very client friendly and has a warm personality, is practical and not combative, with an approach that helps to get deals done and cements relationships. He is also incredibly responsive.” Recent highlights include acting for sanofiaventis in connection with an exclusive global collaboration with Ascenta Therapeutics covering several early-stage compounds being investigated for their potential to enhance cancer treatments. Other sectors of interest include electronics, media and entertainment and financial services.Kaye Scholer LLP
Kaye Scholer’s highly proficient licensing experts have earned the complete trust of their clients when it comes to mission-critical IP transactional assignments. “It has the capacity, experience and knowledge to handle major deals.” Exceptional technical know-how, especially in information technology and life sciences, is a major string to its bow, with many of its lawyers boasting impressive technical credentials and backgrounds. IP and technology chair William Tanenbaum is among the market’s foremost IT licensing experts and a leading authority on related issues such as data security, privacy and social media. He is endorsed by all as a “strong, pragmatic lawyer who knows exactly how to get a deal done”. The firm’s corporate group also possesses “a great deal of experience in licensing” and is another deep resource from which clients benefit. Adam Golden, who cochairs the corporate and finance practice, is singled out for praise: “Given his M&A experience, his expertise in contract drafting and negotiations is first-rate and, in addition, he truly understands the commercial big picture for the client.”Kenyon & Kenyon LLP
Kenyon & Kenyon is one of New York’s oldest IP firms. In the licensing arena it specialises in litigation scenarios, in which it exploits its creativity and all-round IP expertise to deliver commercial solutions. Outside of the disputes context, IP due diligence assessments are a key source of work, although the group also sees its fair share of standalone licensing and other agreements, particularly relating to the commercialisation of university-developed intellectual property. The practice has a strong international bent, with many clients hailing from outside of the United States. Michael J Lennon, who chairs the European practice group, has a dual litigation and licensing practice and is known for his ability to marry his adversarial skills with the cooperative skills so vital to negotiations. Also winning plaudits is the “supersmart” George E Badenoch, a respected patent litigator and licensing attorney with over three decades of experience. Much of his licensing work is adjunctive to litigation, although he also advises on the licensing and IP aspects of M&A transactions.Kirkland & Ellis LLP
The IP group is a central pillar of international powerhouse Kirkland & Ellis, which impresses with its “sheer volume of expertise spanning all areas”. Its transactional insight is as sought after as its exceptional dispute resolution services. The firm takes its place at the negotiating table as a trusted strategic adviser to some of the largest US and international technology purveyors and users in the market. Licensing expertise is on offer across its network, and the firm wins major plaudits for the seamless manner in which it functions, regardless of lawyer location: “It is so well integrated and you aren’t just getting the New York office – you are getting access to the whole.” This creates one of the deepest pools of IP transactional resources to be found anywhere. Leading the charge at the New York office is David MacDonald. His transactional range is formidable: he is equally at home handling complex patent licensing involving many different technologies, complex outsourcings, joint ventures and the IP aspects of M&A transactions. Clients predominantly hail from the consumer products, manufacturing, life sciences and financial services sectors.Milbank, Tweed, Hadley & McCloy LLP
Both Milbank’s IP and corporate groups undertake a significant amount of licensing work domestically and, to a greater degree than many competitors, internationally. Infringement disputes and licensing in settlement of litigation are key areas of expertise for the IP group, which is praised for its “strategic nous in adversarial situations, combined with deep technology and transactional expertise”. However, it also generates its own standalone transactional work, with complex cross-licensing a noted strength; it also has a sterling reputation for its pharmaceuticals work, particularly in contentious scenarios. Meanwhile, the estimable corporate team handles licensing typically in the context of large-scale corporate and M&A transactions; its sophisticated finesse adds to the firm’s allure in the marketplace. Heading the firm’s IP practice group, Christopher Chalsen is widely admired as a “keen strategist” and a “diligent, practical and business-minded adviser”. His technology focus areas mirror those of the group as a whole, with electrical and computer technology dominant. His practice has a strong international flavour and he has considerable experience of representing foreign, and in particular Asian, clients in licensing negotiations with US companies.Morrison & Foerster LLP
Morrison & Foerster is a technology transactions titan admired the world over for the depth and breadth of its legal and commercial expertise. The New York office draws ahead of the pack thanks to the intensity of its focus on licensing and technology transfer as a specialist area of practice. Clients turn to Morrison & Foerster specifically for high-level advice in the drafting and negotiation of complex technology-driven deals. Complicated, often pioneering technologies are a specialty, and the firm has a proven track record of producing superlative results on deals that are often transformative in nature for the client. Spearheading the East Coast practice is group co-chair John Delaney, an enormously respected authority. “He has played a leading role on a huge variety of projects and has a wealth of experience and knowledge. In addition, he is eminently reasonable and a great pleasure to work with.” His practice is driven by information technology and he acts for both services providers and end users. His transactional expertise is complemented by first-class, cutting-edge guidance on related issues, such as privacy, data security and social media. Also drawing praise is senior counsellor Julian Millstein, a renowned “licensing bigwig”. Sources applaud both his vast experience and his keen intellect.Pillsbury Winthrop Shaw Pittman LLP
The accomplishments of Pillsbury Winthrop in the patent and technology licensing arena are hailed nationwide. The firm shines brightly, thanks to a commercial approach to licensing: “Lawyers at Pillsbury do a fantastic job acting as business advisers as much as legal advisers; they provide outstanding legal advice, but always frame it within the commercial context.” The global sourcing group accounts for much of its licensing practice, with software licensing prominent alongside IT and business process outsourcing. However, the firm’s expertise embraces all varieties of technologydriven contracts. Vipul Nishawala is a top lawyer in the New York office and is revered by clients. “The quality of his drafting output is amazing, as is his commercial vision and grasp of the client’s business requirements”, and “he really knows how to leverage the firm’s wider resources for the client’s benefit”. In the global sourcing group, Joshua Konvisser also wins plaudits: “He has unsurpassed expertise in licensing and outsourcing, and a wealth of experience which he draws upon. He is creative in negotiations and while protecting the client’s interests robustly, he works through difficult impasses that can arise.”Proskauer Rose LLP
Full service outfit Proskauer Rose sits high up the New York patent and technology licensing rankings: “The firm maintains a very solid and steady practice with a team of extremely talented attorneys.” It comes highly recommended for its sophisticated commercial approach to licensing and its problem-solving abilities. Among its licensing experts is Daryn Grossman, who heads the life sciences group and co-chairs the technology, media and communications group. “She is an incredibly effective communicator – very clear and concise, and never condescending – and she really gets the job done to a very high standard.” While biotechnology, pharmaceuticals and medical devices are particular focus areas, her practice branches out into other fields such as software and telecommunications. Colleague and co-leader of the patent law group Kenneth Rubenstein is especially hailed for his expertise on the negotiation and creation of patent pools, where he has “absolutely tonnes of experience”.Pryor Cashman LLP
Full service mid-sized New York firm Pryor Cashman offers clients a cost-effective, highly efficient and comprehensive IP transactional service through its enterprising team of expert IP attorneys and noted corporate group. Its patent and technology licensing team has evolved out of its media and entertainment practice, which has long enjoyed a place at New York’s top table and is now flourishing in sectors such as life sciences, telecommunications and software. Credited in large measure for fuelling this expansion into the technology arena is Jeffrey Johnson, a partner who specialises in technology transactions and IP commercialisation. In addition to his pure licensing expertise, he has a depth of knowledge and experience on corporate transactions including M&A deals, joint ventures and private placements. Recent work has included some significant patent portfolio acquisitions and sales.Ropes & Gray LLP
A force to be reckoned with on the East Coast, through its Boston and New York-based groups, Ropes & Gray is well known for its tactical command of the full range of IP and technology transactions, especially those involving leading-edge technologies. In addition to its standalone technology transactions practice, the IP group handles the IP due diligence aspects of corporate and M&A transactions, and is renowned for carrying out this work efficiently, strategically and cost effectively. Also generating licensing work is the litigation practice. The firm boasts one of the most active licensing teams in the US market and its presence is keenly felt across an array of sectors – as reflected in the practice of Harry Rubin, whose industry expertise stretches from electronics to telecommunications, financial services, software, publishing and travel. As he is co-chair of the international practice group, a substantial proportion of his work is crossborder in nature. Internationally, he is regarded as a “superior, highly focused IP transactional expert”. He recently acted for American Express in designing intricate marketing and collaboration agreements in conjunction with its strategic investment in Concur Technologies. Within the firm, top-level life sciences expertise is also at clients’ fingertips, with James F Haley Jr particularly highly rated. “He is a smart, substantive lawyer who, without doubt, can facilitate complex deals.” A longtime partner, the depth of his experience in the sector is almost incomparable.Simpson Thacher & Bartlett LLP
Simpson Thacher & Bartlett’s success in the technology transactions arena is down to two main factors. The first is deep institutional dealmaking experience – the firm is one of the leading M&A practices worldwide and has a first-rate capability in technology-driven deals that incorporate aspects of licensing. The second is the leadership of Lori Lesser, who – in addition to providing crucial support on M&A matters – is the engine of the standalone licensing practice. She has an “exceptionally sharp intellect and is supremely responsive”, and wins many more accolades besides. Extraordinarily complex, high-value transactions are the firm’s forte and it has built up an outstanding track record of flawless execution on such deals. Its lawyers are “extremely smart and able to absorb information at a light speed pace”, and never get bogged down in the detail of transactions.Skadden Arps Slate Meagher & Flom LLP
This prestigious international full service firm has a depth of experience in high-value, technology-driven transactions that few can match. “The firm just understands IP and technology deals and the need to be commercial, and it can handle matters that move at an insane pace.” The IP and technology group is co-chaired by eminent attorneys Stuart Levi and Bruce Goldner. Levi has a background in computer science and information technology, and a keen sense of the commercial considerations informing transactions in those technology sectors: “He has been doing this since before it was cool and has a great understanding of the commercial underpinnings of a deal.” He is a popular choice among clients for both his expertise and his “incredibly personable and friendly disposition”. Goldner is another client favourite: “He is an extremely effective lawyer who gets deals done without fuss. His advice is solid and inspires confidence.” His broad practice includes trademark prosecution and IP counselling, although transactions and licensing are central pillars.Weil, Gotshal & Manges LLP
International firm Weil, Gotshal & Manges is a stalwart of the IP transactional arena. Its dedicated and impressively staffed technology and IP transactions unit offers a suite of services as comprehensive as any found elsewhere. The team’s expertise covers a huge range of technologies and its experience encompasses the drafting and negotiation of almost all types of commercial transaction involving the transfer of intellectual property or technology. The firm’s ability to marshal its extensive international resources is unparalleled, making it a first port of call for cross-border matters. Its presence on the ground in China is particularly notable in this respect: recent headline-grabbing work includes acting for GE Aviation, a subsidiary of General Electric, on the IP aspects of its avionics joint venture with the Aviation Industry Corporation of China. With its east-to-west footprint in the United States, it is also a top destination for domestic licensing instructions. The firm’s elite team includes Michael Epstein, an internationally recognised and respected IP litigator, transactional attorney and counsellor. He has acted, for example, on behalf of sanofiaventis in connection with its multibillion-dollar takeover offer for Genzyme, and counts some of the world’s top financial institutions as his clients. Charan Sandhu, who played a leading role on the GE deal, operates at the top end of the scale in terms of both deal value and complexity. Jeffrey Osterman, another leading lawyer in the group, is equally at home on the most technically challenging and commercially sensitive deals. His recent work includes acting for Lehman Brothers on IP and technology matters arising out of its bankruptcy filing, and acting for longstanding client Panasonic on its consumer products licensing in the United States.White & Case LLP
This venerable full service outfit is making a strong play in the patent and technology licensing arena. The recently crystallised sourcing and technology transactions team, which sits within the wider IP group, handles a broad range of licensing matters, as does its famously robust corporate group. Information technology is a core sphere of expertise and one in which it represents a raft of worldleading financial institutions, providing guidance on the licensing and development of software, data processing, outsourcing and cloud computing. Oil and gas and life sciences are other sectors of concentration. White & Case is known for its ability to close on highvalue and large-scale transactions in the upper echelons of complexity, and its ability to leverage its global platform in doing so is a key differentiator. Leading figures in the New York office include young dynamos Adam Chernichaw and Daren Orzechowski. Chernichaw is esteemed for the depth of his expertise in business process and IT outsourcing, although his practice also branches into licensing, particularly within the sports sector. Orzechowski maintains a more diverse practice featuring both litigation and transactional work. On the latter side, his prowess embraces the full range of dealings in intellectual property, from acquisition and development through to transfer.Wilmer Cutler Pickering Hale and Dorr LLP
This member of the international elite has outstanding substantive expertise in the IP and technology transactions sphere, and maintains a group fully dedicated to this practice area. Life sciences is a major stronghold for the firm, whose distinction lies in its ability to serve the full needs of its diverse clientele. Its capacity to craft complex collaboration and partnering agreements for clients across the table from some of the world’s largest and most powerful pharmaceutical companies is virtually second to none, as is its corporate and financial expertise. The bandwidth to run major life sciences deals concurrently is another strong suit. Within the technology area, the firm sees a high degree of variation in terms of both transaction type and the technology underpinning deals. On the corporate side, it acts on behalf of many venture-backed technology companies which spin off a substantial volume of licensing work. Its IP litigation practice is extremely robust and settlement licensing also fuels the practice. Steven Singer leads the licensing practice and is co-chair of the life sciences industry group. Strategic alliances, joint ventures, public offerings and venture capital transactions are the main points of emphasis in his diverse practice, and he is a hugely respected expert across the United States.
Principally known as a litigator, Paul Gupta of Orrick, Herrington & Sutcliffe is also a deft hand when it comes to technology transactions of all kinds and is a popular choice for referral work among peers. Nigel Howard is a transactional specialist at full service firm Covington & Burling. His practice is substantially IT driven and encompasses a range of transaction types, including licensing, outsourcing and corporate partnering. He represents clients in sectors from life sciences to financial services. John Lane recently joined respected IP boutique Cowan Liebowitz & Latman. He is an IP generalist with a practice incorporating patent and trademark litigation, prosecution and opinion work, as well as licensing work, for which he is much admired. “He is extremely knowledgeable, particularly in the context of European transactional activities, and is a responsive lawyer who really takes care of his clients.” Hunton & Williams’ Karen Lowney specialises in life sciences and is recommended for her licensing, partnering and collaboration expertise within the sector. “She goes above and beyond and she partners with the client so well: she understands a client’s business and internal politics and how to make a successful deal within that framework.” William Russell arrived at business law firm Venable in 2010 to extend the reach of its technology transactions capabilities, and has given it a strong foothold in the technology market. He is an expert drafter and negotiator for a wide range of agreements, including software licences, business process outsourcing agreements and medical device development and distribution agreements. John A Squires co-chairs Chadbourne & Parke’s esteemed IP practice, and is a savvy and commercial operator when it comes to patent and technology licensing on the domestic and international stage. He has also carved a niche in the financial services sector, having previously founded the patent practice at Goldman Sachs, but also has a strong reputation within the high-technology sector.