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United States - Pennsylvania

A significant jurisdiction for patent and technology licensing, Pennsylvania has seen its main economic engine shift from traditional industry to high-technology. This change is particularly appreciable in Pittsburgh, where Google now occupies a building formerly used as a factory. This is reflected in our ranking table, which is dominated by lawyers from the city. Pittsburgh is now home to companies operating across a diverse range of technologies, from robotics to healthcare and biotechnology. Licensing activity has increased in tandem with the growth of the technology sector and there is no shortage of mandates for the state’s leading lawyers.

Firms

H
K&L Gates
Morgan Lewis & Bockius LLP
Pepper Hamilton LLP
Buchanan Ingersoll & Rooney PC

Licensing sits at the apex of this firm’s corporate finance and technology practices. Practitioners are first and foremost business and transactional lawyers, who are equally endowed with solid expertise in technology and intellectual property. The team has the know-how and experience to handle any kind of commercial transaction involving the exploitation and monetisation of intellectual property. Its work cuts across a range of industry sectors and technologies, although healthcare, software, life sciences and cleantech are particular strongholds. “Buchanan Ingersoll & Rooney is a top competitor in Pennsylvania with a long and illustrious history representing technology companies in the state.” Leading the charge in the Pittsburgh office is technology transactions group chair David A Gurwin. He combines legal, business and technical expertise and experience to advise on a full range of IP and technology commercialisation deals. With a strong software and internet practice, he is a “force to be reckoned with” in these areas; however, his work also branches into other industries such as media and entertainment and life sciences.

K&L Gates

“Solid and with a deep bench in Pennsylvania”, K&L Gates has carved out a niche for itself in the licensing and IP transactional arena. Licensing is typically carried out by dedicated transactions specialists, and commercial acumen as much as legal expertise is a hallmark of the practice; the firm has enjoyed immense success in helping clients to realise their commercial goals through licensing. The practice is also built on deep experience – its lawyers represent longstanding clients that effectively wrote the licensing rulebook. Technology coverage is wide, although specialist areas of expertise include software licensing – particularly within the healthcare and financial services sectors – and internet technology licensing. Pittsburgh lawyer George Dickos ranks among the firm’s top licensing practitioners; an “extremely practical guy who doesn’t get overly caught up in minutiae and who makes deals happen”, “he exhibits fantastically good judgement”. Dickos maintains a broad IP and technology transfer practice that encompasses a sweeping range of transaction types and technologies, although e-commerce is a particular area of authority.

Morgan Lewis & Bockius LLP

International outfit Morgan Lewis & Bockius maintains an outstanding patent and technology licensing practice in its home state of Pennsylvania. The firm works on an integrated basis across its offices and a wealth of resources is available to clients, notwithstanding its location. In Pittsburgh, Peter Watt-Morse practises at the intersection of business law and intellectual property, and comes highly recommended for all manner of technologybased transactions: “He has got to a high level through being an extremely solid legal and commercial adviser who inspires great confidence in clients and other parties to a deal.” His impressive client roster includes Colgate-Palmolive, which he recently advised on an innovative development, licence and supply agreement with Givaudan. Based in Philadelphia and also highly rated is Barbara Murphy Melby, who advises on a plethora of technology transactions, with outsourcing a key focus.

Pepper Hamilton LLP

Pepper Hamilton’s technology transactions unit handles a combination of licensing and technology or IP-heavy corporate and M&A transactions. The firm is distinguished by its ability to get to grips with clients’ business and technology, and for its “highly intelligent and state-of-the-art strategic guidance”. The group’s sectoral coverage is comprehensive and it has a “range and depth of expertise that is really breathtaking”. Consistency is another hallmark: “The firm keeps the quality of its output at a consistently high level, regardless of whether work is produced by a partner or an associate.” It has won plaudits for its recent work in the life sciences sector, acting for Knopp Biosciences in connection with the drafting and negotiation of an exclusive worldwide licence agreement with Biogen Idec for the development and potential commercialisation of a drug for the treatment of amyotrophic lateral sclerosis. Leading light James Singer is an “exceptionally bright lawyer in the field of licensing” and a good point person, due to his ability to “use the firm’s resources to the best advantage of clients”. On large-scale transactions, he is “excellent at staying on top of the issues and keeping the process together”.

Individuals - recommended

George Dickos
K&L Gates (Pittsburgh)
David A Gurwin
Buchanan Ingersoll & Rooney PC (Pittsburgh)
Barbara Murphy Melby
Morgan Lewis & Bockius LLP (Philadelphia)
James M Singer
Pepper Hamilton LLP (Pittsburgh)
Peter M Watt-Morse
Morgan Lewis & Bockius LLP (Pittsburgh)