Venable has proudly served leading university and public research institution clients for decades, providing a wide range of services related to technology and business transactions.

Research institutions operate in a complex and competitive environment, balancing the demands of researchers, administrators, funders, corporations, government agencies, and the general public. To advance their public missions, research institutions require legal counsel with the scientific and business acumen to help them protect their inventions and establish relationships with licensees and collaborators. 

Venable has built a team that meets these needs.

We help academic and research institutions establish and build sophisticated IP portfolios.

Our professionals, many with doctorates, work seamlessly with leading researchers, including a Nobel laureate and a Knighted faculty member, to integrate complex science with creative plans for commercialization within larger public goals. We develop solid IP strategies tailored to meeting those goals. And we go beyond patents, to help establish and manage licensing arrangements, as well as to form start-up companies built around our clients’ innovations.

Our attorneys have developed strong working relationships within all the relevant industry groups – scientific associations, technology transfer and trade associations, and the business community, including many venture capital firms that invest in start-up companies. Research institutions benefit from our extensive representation of companies that license technology from research institutions.

Our capabilities extend across the full IP spectrum.

Our team includes about 70 attorneys and professionals focusing on patent prosecution and counseling, licensing and technology transfer, litigation, trademark prosecution, and copyright. All these skills are called upon by our Research Institution clients. 

Venable’s patent group has more than 30 registered patent attorneys, agents, and technical advisors, many of whom have Ph.D.s or other advanced technical degrees, as well as substantial research and/or industry experience in a variety of specialty areas directly related to academic inventions.

Our strong prosecution capabilities are bolstered by the fact that many in our group are former Patent Examiners at the U.S. Patent and Trademark Office (USPTO). We have prepared and prosecuted tens of thousands of patents to issuance, in the U.S. and abroad, for inventions that span the entire spectrum of technology. In addition, Venable has been at the forefront when it comes to providing legal services related to nanotechnology. 

Venable has a state-of-the-art IP infrastructure that enables us to manage high volume portfolios and client communications efficiently. Our facilities include a top-tier docketing system, a skilled patent prosecution support/formalities department, a dedicated international filing paralegal staff, and a network of trusted associate firms around the world. 

We offer a full complement of legal services to research institutions.

The breadth of legal services we provide to research institutions includes:

• patentability opinions;
• inventorship opinions;
• patent protection and filing strategies;
• drafting, filing and prosecution services;
• patent maintenance services, post-issuance;
• technology transfer and licensing;
• litigation to enforce patent rights and contracts;
• trademark prosecution and licensing;
• corporate formation, finance, and transactions; and 
• counseling re: tax-exempt status.

The size and breadth of our team allow us to handle very large and complex university patent portfolios. For example, we currently have almost 300 pending patent applications for one university client. Members of our group are actively involved in professional associations such as the Association of University Technology Managers, the Biotechnology Industry Organization, the Intellectual Property Owners Association, and the Licensing Executive Society.
 
We meet regularly with our clients’ technology transfer offices to review goals and procedures, to make presentations on recent important Federal Circuit and Supreme Court cases, to advise of new patent rules and laws, and to help with conferences and workshops with faculty inventors and encourage them to license or otherwise develop university intellectual property. 

We have extensive experience with federally funded research and technology transfer.  Senator Birch Bayh, now a partner in Venable’s Legislative Group, authored The Bayh-Dole Act (Federal Technology Transfer Act). Senator Bayh is well known for his ongoing passionate work to promote research institution technology transfer around the world. 

We understand how to serve research-based organizations, and have the infrastructure and procedures in place to handle patent portfolios for all manner of institutions.