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Overview

Each year, thousands of discoveries originate in the fruitful minds of institutional researchers. Calfee’s technology transfer practice group helps research institutions and their corporate partners convert these valuable discoveries into income-generating assets.   

Our technology transfer experts regularly counsel institutions and their licensees in a broad range of transactions. By assembling a multidisciplinary team, including lawyers from our intellectual property, capital raising, and government relations practices, we find cohesive solutions to the unique challenges presented by moving technology out of labs and into the market.

In addition to transactions, Calfee assists major research institutions with establishing internal innovations programs, intellectual property cultivation exercises, internal intellectual property practices and policies, and licensing programs to monetize intellectual property resulting from years of research and funding.    

Noteworthy

Chambers USA Band 2 Ranking in Intellectual Property (Ohio)

For well over a decade, our Intellectual Property group has been ranked and recognized by Chambers USA. In 2021, Chambers USA researchers noted that the team is "Esteemed for its handling of IP litigation and portfolio management on behalf of large clients in Ohio and the Midwest and across the USA. Highly experienced in the engineering, chemical and biological sectors, with notable abilities in handling matters for consumer products and manufacturing clients."

A client interviewed by Chambers USA 2020 researchers was quoted saying, "The firm offers excellent value for its services. The team is dedicated and provides sophisticated IP legal services at an attractive cost." A market commentator added, "Calfee's IP attorneys are highly regarded; they are true experts, and they do excellent work for their clients." "This is a power bench; the team works well together and supports each other well. Each individual is responsive and knowledgeable in their expertise and experience. This is definitely one of my favorite firms to work with," stated another client.

Chambers USA 2020 researchers also found Calfee's IP team to be held in "very high regard by fellow practitioners who note Calfee's extensive experience representing clients in wider patent and trademark matters, IP litigation matters, appellate work, and advising companies on managing IP assets in China."

Firm Vice Chairman and Intellectual Property practice Co-Chair, John S. Cipolla, was ranked by Chambers USA 2021 in Band 1 for Intellectual Property (Ohio). Chambers USA researchers stated, "[John] receives notable acclaim for his broad contentious and noncontentious practice, and is particularly noted for his work in patent litigation." Clients interviewed by Chambers USA researchers remarked, "He takes difficult subjects and makes them easier to understand." Another client commented, "He's hard-working and has good judgment."

Partner and Intellectual Property practice Co-Chair, Mark W. McDougall, was ranked by Chambers USA 2021 in Band 4. A client interviewed by Chambers USA researchers noted, "[He] gets immersed in the facts and provides detailed guidance." Another source mentioned, "Mark is a smart patent lawyer."

Partner Raymond Rundelli was ranked by Chambers USA 2021 in Band 4. A client interviewed by Chambers USA researchers mentioned, "He's responsive, thorough and thoughtful." Chambers USA 2020 researchers reported, "[Ray] comes recommended as an 'excellent trademark attorney' who assists clients in an array of complex litigation and portfolio management work. His practice also extends to patent-related matters."

Partner Todd Tucker was ranked by Chambers USA 2021 in Band 3. Chambers USA researchers noted, "[Todd] takes on a range of domestic and cross-border IP disputes, including patent litigation. His experience includes matters concerning the protection of assets in China, and he regularly advises Chinese entities on US-based IP portfolios." Clients interviewed by Chambers USA researchers stated, "Todd stands out in his ability to provide practical advice from a multinational IP perspective because of his strong, unique background in patent litigation and international patent prosecution." Another client mentioned, "He helps make complex processes simple."

U.S. News – Best Lawyers® “Best Law Firms” Rankings

Calfee was selected for inclusion in the 2022 "Best Law Firms" rankings by U.S. News – Best Lawyers in the following areas:

  • Copyright Law (Regional Tier 2 Cleveland)
  • Litigation – Intellectual Property (National Tier 3, Regional Tier 1 Cleveland)
  • Patent Law (Regional Tier 1 Cleveland)

Professionals

Experience

Experience

We regularly counsel universities, hospitals, public research facilities, and their industry counterparts through complex intellectual property matters. This includes technologies developed in renown institutions such as the following:

  • The Ohio State University
  • Cleveland Clinic Foundation
  • Ohio University
  • Cleveland State University
  • University of Toledo
  • Miami University
  • University of Wisconsin
  • Georgetown University
  • Case Western Reserve University
  • The Regents of the University of California
  • University of Texas
  • Dalhousie University
  • University of Tennessee
  • University of South Florida

Services

Services

Our services include the following:

  • Structuring complex licensing deals
  • Establishing and funding private spinoffs built on institutional technologies
  • Negotiating material transfer agreements
  • Working with public and private incubators, development funds, and accelerators
  • Advising on clinical trials and sponsored research
  • Developing intellectual property enforcement programs

News & Events

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"Calfee's IP group is esteemed for its handling of IP litigation and portfolio management on behalf of large clients in Ohio, the Midwest and across the USA. They are highly experienced in the engineering, chemical and biological sectors, with notable abilities in handling matters for consumer products and manufacturing clients."

Researcher comments from the Chambers USA 2021 Guide

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