Licensing and Technology Transfer

The lawyers at RBS have exceptional experience and expertise in advising institutions, technology-based companies, entrepreneurs, founders, and investors on the commercialization of their intellectual property and technology. The depth of knowledge and legal experience in this area is founded on the firm’s long-standing representation of British Columbia’s leading research university (University of British Columbia) and its industry Liaison Office since inception.

As a result, the Licensing and Technology Transfer Group has been directly involved in structuring, drafting, and negotiating hundreds of technology license agreements, involving all facets of technical innovation, including:

• Life science technologies (biotechnology, pharmaceuticals, and medical devices)
• Software technologies, including software-as-a-service applications
• Applied science technologies
• Bioinformatics
• Databases and digital content technologies

The Licensing and Technology Transfer Group advises clients on all other aspects of technology transfer transactions, including the structuring, drafting, and negotiation of:

• Research collaborations between industry partners and between industry and institutional research organizations
• Strategic alliance and joint venture agreements
• Research sponsorships and contract research agreements
• Technology and intellectual property option agreements
• Technology and intellectual property assignment transactions
• Material transfer, confidentiality, non-competition / solicitation, and stand-still agreements

For entrepreneurs, company founders, and investors involved in British Columbia’s technology industry, the firm’s experience in the licensing and technology transfer sector can be vital in assisting with the establishment of new technology based companies. When incorporating a new company to acquire or commercialize a technology, the Licensing and Technology Transfer Group can assist with ensuring that the relevant technology transfer transaction and the structure businesses are aligned with the company’s long-term objectives, including an exit strategy.

RBS is strongly connected to your industry. Its lawyers are frequent speakers and contributors within the licensing and technology transfer industry, including the Association of University Technology Managers (AUTM), ACCT Canada’s Innovations Leaders Forum, the Pacific Rim Advisory Council, the University of British Columbia’s Industry Liaison Office, Canada’s Michael Smith Genome Sciences Centre, Canadian Association of University Solicitors, the WestLink Innovation Network, the British Columbia Trial Lawyers Association, Insight Information, Canadian Bar Association Intellectual Property & Technology Law Section, and the Continuing Legal Education Society of BC.

The Licensing and Technology Transfer Group’s experience includes the following:

• Representing the University of British Columbia’s Industry Liaison Office in all facets of licensing and technology transfer transactions
• Representing other leading British Columbia research institutions in connection with the exploitation and commercialization of their technologies, including the British Columbia Cancer Agency Technology Development Office
• Advising the University of British Columbia on its successful negotiation of a multi-year research collaboration and license agreement with Roche Pharmaceuticals; the transaction was the university’s largest research and license transaction, with up to US $141.7 million in pre-clinical, clinical and sales milestone payments and royalties.
• Representing Kairos Therapeutics Inc. in connection with the acquisition of Kairos by Zymeworks Inc. This acquisition brought together Kairos—a leader in the discovery and development of antibody drug conjugates (ADCs)—and Zymeworks to create one of the industry’s leading biologics drug discovery and development organizations (LifeSciences British Columbia honoured Zymeworks as the 2016 Life Sciences Company of the Year)
• Advising Empowered Startups Ltd., a designated business incubator, with the structure and commercialization of numerous early stage ventures