technology transfer & spinouts

Spin-outs occur in a variety of ways – ranging from a management buy-out of a small division of a large corporate through to the commercialisation of academic research from a University (or other seat of learning).  White & Black has extensive experience of all types of spin-out and routinely advises on them with a pedigree of deals emanating from a number of the major UK Universities and major corporations. 

We are highly experienced in University spin-outs and have acted for both investors and spin-out newcos.  We understand the need for empathy and sensitivity when dealing with the diverse range of personalities involved in these types of transaction.  We are also able to advise on the assignment and licensing of IP rights and the usual agreements which support these IP arrangements.

As a result, White & Black can advise on:

• technology licensing / assignments and the protection of intellectual property rights generally;
• management rights including vesting rights, tag-along provisions, dividend structures, liquidation preferences etc
• facility hiring and management agreements (eg for laboratory and other space);
• investment agreements;
• term sheets and MOUs;
• options schemes, warrants and other incentive arrangements;
• directors service agreements

technology licensing
The commercial exploitation of technology doesn’t just occur when you own it.  Significant commercialisation of technology can occur in the giving and the taking of certain rights in the technology, usually in the form of a licence.  Licences usually offer lower total costs of ownership and can enable a quicker route to market by taking advantage of someone else’s development time.

Licensing is not without its complications.  Licensing by its very nature means that the licensee is reliant on an ongoing commercial (and legal) relationship with the rights owner and therefore careful consideration must be given to the conception of that relationship.  Such licences can be restricted to specific geographic scope, uses and duration.  Careful consideration of these can make licensing a highly effective way of exploiting IP.