Ronald S. Bienstock
Partner
201-896-7169 rbienstock@sh-law.com
IP Consulting & Transactions
We are a strategic IP consulting law firm that partners with clients to ensure that existing IP protections are both adequate and flexible enough to ensure broad and deep protection.
Key Contacts
IP Consulting & Transactions
Overview
IP Consulting & Transactions – Strategic Solutions
We provide strategic advice to industry-leading companies with respect to protecting and leveraging their intellectual property assets. Our solutions are customized to the objectives of our clients, as well as their budgets.
IP Consulting
We work with businesses of all sizes to ensure that they are maximizing the value of their intangible assets. The extensive roster of issues we regularly address includes:
- IP Protection Strategies: We work with clients to develop a comprehensive IP strategy that protects their assets and aligns with their business goals. Our IP solutions are tailored to the unique industries, markets, and jurisdictions in which our clients operate. We also provide audits of existing IP protection procedures to identify potential risks and recommend enhancements.
- IP Rights Clearance: We perform Freedom to Operate (FTO) searches and competitor analysis to identify potential competing IP rights or technologies. We also conduct trademark searches and fair use analysis.
- Trade Secret Protection: The firm’s clients have valuable assets in the form of ideas, formulas, specific processes or a method that allows them to excel in business. Our attorneys actively prosecute trade secrets theft, defend against claims of misappropriation, and protect our clients through offensive and defensive strategies that maximize intellectual capital and minimize leaks of valuable information.
IP Transactions
Whether it’s licensing the use of your logo or obtaining a key patent assignment, our IP attorneys can also guide you through the transaction and ensure your interests are protected. Our transactional IP services include:
- Licensing Agreements: The firm’s IP team negotiates and tailors agreements in accordance with clients’ needs, including software development agreements, patent, trademark, and copyright licenses, software licensing agreements, and distribution agreements.
- Corporate Transactions: Our IP team routinely advises clients regarding a broad range of corporate transactions, including financing new ventures, creating holding companies, acquisitions and divestitures, and debt structure strategies. We also help our clients build profitable business relationships through collaborations, strategic alliances, and joint ventures.
- International Transactions: The global nature of the firm’s IP practice ensures that clients interested in pursuing opportunities outside of the United States can leverage the firm’s network of attorneys around the world.
- Insurance Coverage: Our attorneys routinely handle coverage matters related to IP infringement, trade secret misappropriation, and advertising injuries. We also have experience litigating technology coverage disputes, including IP specific policies.
- Confidentiality/Non-disclosure Agreements: By drafting robust non-compete, nondisclosure, confidentiality, and employee agreements, our attorneys ensure that clients can continue to do business without compromising their company’s trade secret protections.
- Online Agreements: We draft Terms of Use, Privacy Policies, and User Guidelines that clearly notify users as to what information on our clients’ websites is proprietary and the rules governing the site’s use. By drafting these documents, the firm places clients in a strong position to safeguard their IP and reduce the risk of legal disputes.
Our IP Consultants in Action
Armed with a deep understanding of science, technology, and IP law, we are equipped to tackle the complex and evolving IP issues facing our clients. Some examples include:
- (NJ Superior Court) Represented founding band member and shareholder in a precedential suit against other band members and the corporate entity for breach of shareholder agreement and for failure to distribute profits. Obtained both money damages and attorney’s fees.
- (United States District Court, Middle District of Florida) Represented a US musical instrument distribution company in a precedential lawsuit against a foreign musical instrument manufacturer for breach of distribution contract. Successfully defeated a motion to dismiss for lack of jurisdiction and negotiated favorable settlement for client.
Your Legal Partners in IP Deal-Making
Our IP transactions attorneys bring a rare combination of legal precision, industry fluency, and commercial insight. We’ve helped clients secure multimillion-dollar licensing deals, navigate IP issues in cross-border joint ventures, and structure sale agreements that protect legacy rights while enabling future growth. Whether you’re licensing software, transferring patent rights, or monetizing a content library, we are your strategic legal partner in every phase of the deal.
IP/Technology
We provide strategic advice to our clients with respect to IP and technology matters that arise from licensing, collaboration, research, and development activities. This encompasses issues including the scope of their licenses, revocability and/or transferability of applicable agreements, the effect of corporate structure on such activities, and bankruptcy-related issues affecting their rights under such agreements and succession rights as to such IP.
Copyrights
Our copyright practice encompasses works related to musical compositions, computer software, multimedia, performance arts, written works, paintings, photography, and more. We help our clients avoid unnecessary conflict and maximize the strength and of their creative assets.
Scarinci Hollenbeck’s Copyight Law Practice
FAQ about IP Consulting & Transactions
An IP transaction involves the transfer, license, sale, or commercialization of intellectual property rights, such as patents, trademarks, copyrights, or trade secrets.
These deals are often complex and involve high-value assets. An experienced IP transactions attorney ensures the agreement is enforceable, the rights are clearly defined, and your risks are minimized.
A license grants permission to use IP under certain conditions, while an assignment permanently transfers ownership of the IP to another party.
We review ownership records, registration status, existing licenses, prior litigation, and any restrictions that may affect the use or transfer of the IP.
Yes. IP assets are often transferred in mergers, acquisitions, and asset sales. Proper legal structuring ensures the buyer receives clear title and value.
Key terms include scope of rights, exclusivity, territory, duration, payment structure, performance milestones, sublicensing, and termination rights.
Royalties can be based on a percentage of sales, fixed payments, usage thresholds, or performance-based milestones. We help clients structure terms that reflect fair value and enforceability.
Yes. You can license specific fields of use, territories, or products while retaining other rights. This allows for strategic commercialization while maintaining control.
Yes. Transactions involving foreign parties must comply with international treaties, export control laws, data regulations, and local IP enforcement systems.
Remedies may include contract termination, injunctive relief, damages, and enforcement of IP rights. We help clients enforce terms and protect their interests.
Connect with our IP Transactions Lawyers
If you’re negotiating an IP license, managing a technology transfer, or seeking guidance on intellectual property deal structures, Scarinci Hollenbeck, LLC is the IP transactions law firm you can trust.
Contact us today to speak with an experienced IP transactions attorney and get the legal clarity and protection your innovations deserve.
Practice Area Attorneys
Why Choose Us?
Industry Experience & Deal Sophistication
We’ve advised on complex IP transactions in sectors including biotechnology, software, fashion, education, consumer goods, and entertainment.
Cross-Border Capabilities
Many IP transactions span multiple jurisdictions. We help clients navigate international laws, treaties, and enforcement mechanisms.
Balanced Legal & Commercial Perspective
Our attorneys understand that IP transactions must be both legally sound and commercially practical. We work closely with business teams to find the right balance.
IP and Corporate Integration
We regularly support M&A and corporate counsel teams with integrated IP diligence, structuring, and risk analysis.
