Cleantech -- Technology Transactions

Contact: Tessa J. Schwartz

Morrison & Foerster’s Technology Transactions Group assists clients in the Cleantech sector at all stages of a company’s lifecycle – from creating new business models to devising overall intellectual property strategies as the company develops, acquires, and commercializes technologies and related intellectual property rights. We help start-ups, established companies, and investors structure and negotiate intellectual property strategies and complex commercial transactions related to technologies that rely on or promote renewable resources and sustainable practices. We help our clients succeed in addressing key issues facing most organizations:

• Ensuring that your company has appropriate rights to intellectual property developed by founders, employees, contractors, and business partners;
• Protecting your freedom to operate in the market and limiting your exposure to third-party infringement and misappropriation claims;
• Using your intellectual property portfolio to maximize your competitive position;
• Transforming and commercializing untapped intellectual property into top-line growth and new sources of revenue;
• Structuring your strategic and day-to-day operating agreements for maximum tactical value (e.g., sponsored research, collaboration, development, manufacturing, distribution, licensing, assignment, marketing, consulting, and joint venture agreements);
• Developing a plan to communicate and defend your intellectual property position to investors (including in connection with your exit strategy); and
• Evaluating and managing the risks of your business relationships (whether through due diligence or contractual allocation of risk).

With attorneys in the United States, Europe, China, Japan and Singapore, the Technology Transactions Group of Morrison & Foerster counsels clients investing in, developing, and selling Cleantech technology, products and services globally.

Representative Clients

• 3E Company. Provide general corporate, technology transaction, and patent advice to 3E, a provider of chemical, regulatory, and environmental compliance information services.
• Altairnanotechnologies, Inc. Advise this fuel cell and battery company in intellectual property and licensing matters, acquisitions, government contracts and ITAR matters, as well as in the development of international manufacturing and sales arrangements.
• AltraBiofuels. Represent AltraBiofuels, a large manufacturer and developer of renewable biofuels, in the areas of intellectual property and intellectual property-related transactions.
• Biomimicry Institute. Work with the Biomimcry Institute and the Biomimicry Guild to develop and implement their intellectual property strategy including patents, trademarks, and trade secrets with respect to the Nature’s 100 Best, and provide general corporate advice in connection with the commercialization of the nature-inspired ideas.
• Biosignal Limited. Provide general corporate, technology transaction, intellectual property, and tax advice to this biomimicry company that offers antibacterial solutions across a broad range of applications, from industrial to therapeutics.
• Business for Social Responsibility (“BSR”). Serve as outside general counsel to BSR, including the provision of intellectual property advice and technology transactions expertise.
• Carbonetworks, Inc. Advise Carbonetworks, a provider of both software tracking for carbon emissions and a trading platform for credits, on commercial and technology transaction issues.
• ElectraTherm, Inc. Advise ElectraTherm, a provider of technology that captures waste heat and pressure to provide zero-emissions electricity, on intellectual property issues and on corporate, technology, and commercial transactions.
• Electronic Residential Control Systems Manufacturer. Represent client in connection with its commercial and licensing agreements.
• Enviance, Inc. Provide general corporate, merger and acquisition, and technology transaction advice to Enviance, a provider of environmental health and safety management software.
• Investment Bank. Represented a major investment bank in connection with the proposed establishment of a polysilicon production facility in China. Members of our deal team advised on all aspects of the project, including procurement negotiations with engineering services and equipment suppliers.
• Kleiner Perkins Caufield & Byers. Represent this venture capital firm in its IP due diligence on companies in the fields of high-performance batteries, coal gasification, and transgenic corn for ethanol production.
• Leading Cleantech Investor. Advise a leading investor in solar technologies, including utility-scale solar thermal applications, in connection with investments in and acquisitions of technology.
• Leading Cleantech Technology Provider. Advise client in connection with the development, licensing and distribution of technology that converts traditional hydrocarbon energy resources into valuable cleaner burning fuels.
• Lilliputian Systems. Represented Lilliputian Systems, a fuel cell spin-out from MIT, in certain strategic joint ventures and with respect to intellectual property issues.
• Mass Roots Project. Assisted Mass Roots Project in its formation and funding, and provide ongoing general corporate advice. Mass Roots Project organizes summits to bring people together to co-develop and launch consumer solutions for controlling climate change and fostering a sustainable future.
• Optimal Technologies. Advised Optimal Technologies, a supplier of advanced management solutions targeted at the end-to-end optimization of power networks, regarding licensing and intellectual property issues, including issues related to corporate reorganization.
• Photon Energy Systems. Provide expertise to Photon Energy Systems regarding intellectual property and commercial agreements.
• Photovoltaic Cell Manufacturer. Represented a major PRC solar cell manufacturer for multiple purchases of polysilicon and wafers.
• Photovoltaic Cell Manufacturer. Represented a major solar cell manufacturer in a series of long-term take or pay purchase agreements valued in excess of US$200 million with a major supplier of polysilicon
• Photovoltaic Cell and Module Manufacturer. Advised one of the world’s leading manufacturers of photovoltaic cells and modules in its acquisition of equipment for the production of thin film solar cell modules and in a long-term supply agreement for the acquisition of polysilicon.
• Polysilicon Manufacturing Plant Investors. Represent the investors in the development and financing of a US$200 million polysilicon manufacturing plant in a Middle Eastern country, including negotiation of reactor design/manufacturing contracts and engineering, procurement and construction contracts, preparation of investor documentation and preparation and negotiation of financing documents.
• PURE Bioscience. Represent PURE Bioscience, a developer and marketer of technology-based products that provide non-toxic solutions to global healthcare challenges, in connection with technology transaction matters.
• Revolution Foods. Advise Revolution Foods, a provider of organic and healthy lunches to schools in California, on technology transaction and trademark matters.