Technology Transfer

Overview

Nixon Peabody’s Intellectual Property practice group has unrivaled experience working with premiere technology transfer programs. 

We combine business insights, legal acumen, and technical experience with operational agility that allows us to partner with our technology transfer clients to protect institutional rights, empower inventors, and manage risk while seizing market opportunities.

Our representation of tech transfer programs also goes beyond what’s typical for law firms. We have long served as extensions of our clients’ in-house teams, providing a full range of consultative services to help build, manage, and operate increasingly diverse and complex technology transfer and ancillary programs, such as accelerators, incubators, and captive venture funds. 

Our work with academic and research institutions in cultivating and managing the licensing and enforcement, which can include litigation, of their intellectual property rights is a natural extension of these relationships and builds upon our intimate knowledge of the technology transfer environment—experience that also shapes our counsel to entities doing business with these groundbreaking programs.

Representative experience

• Representing University of Southern California in structuring intellectual property and other operational agreements as lead institution for the California Defense Ready Electronics and Microdevices Superhub (CA DREAMS), one of eight regional innovation centers established under the Department of Defense’s Microelectronics Commons Program. CA DREAMS unites academic and commercial entities in Southern California to develop advanced radio frequency, semiconductor, and microelectronics technologies.
• Advise companies engaging with the technology transfer offices of academic and research institutions, including representing Xilis, a biotech company with a precision oncology platform technology, in establishing a strategic research partnership with MD Anderson Cancer Center; NS Nanotech, a developer of nano-LED products, in structuring research and license agreements with McGill University and the University of Michigan; Iotron Medical, a clinical radioisotope provider, in various license and research transactions with Argonne National Laboratory; and Serimmune, an immune intelligence company, in research agreements with Yale University.
• Provide a range of patent portfolio management and technology transfer services to leading academic institutions and healthcare systems, such as Boston University, California Institute of Technology, Cedars-Sinai Medical Center, Harvard University, University of Southern California, and Vanderbilt University, among others
• In one of the largest transactions in academic technology transfer history, represented Cedars-Sinai Medical Center in the $10.8B sale of Cedars’ spin-off company, Prometheus Biosciences, to Merck; handled patent prosecution, IP licensing, research agreements, corporate matters, follow-on investments, and an array of other topics as Cedars developed the Prometheus technology, lead candidate therapeutics, and the unique biorepository of patient samples and genomic data that continue to drive Prometheus’s R&D activities through a series of enduring research, license, and consulting relationships.

Recognition

• Nixon Peabody has been named a Tier 1 National firm for Patent Law in the 2025 edition of Best Law Firms®.