Intellectual Property & Technology Leader
Intellectual Property & Technology Director
Technology Transfer
Intellectual Property & Technology Areas of Practice
Intellectual Property & Technology Related Sectors & Services

Technology Transfer

Clark Hill's approach to technology transfer recognizes that the protection of your technology is an issue the moment the technology is created. Whether the creation is by a principal, an employee, a third-party service provider, or an unrelated supplier, the issue of ownership begins immediately.

We work with our clients to develop a formal strategy on how to respond to issues of technology creation and transfer. Depending on the parties involved, appropriate agreements are put in place to protect the client's investment in that technology. These could include employee agreements, assignments, exclusive and non-exclusive licenses, and non-disclosure and confidentiality agreements.

Since intellectual property may have a life that extends through decades, negotiations of these agreements include discussion of potential events that may occur during the life of the technology, thus allowing you to have an expectation as to your responsibilities and the responsibilities of other parties who may be involved. Interests in technology through these various instruments often can be perfected through filings with appropriate federal and/or state agencies. Our intellectual property attorneys work closely with the entire Business practice group to ensure that your technology transfer documents coordinate with your business strategy.


Acted as lead counsel in patent infringement action involving feedthrough filter capacitors for use in pacemakers.
Acted as lead counsel in patent infringement action against leading copier company and obtained very favorable settlement for client.
Filed and successfully prosecuted numerous U.S. and foreign applications to register trademarks and service marks for many clients, including large national household appliance manufacturer.
Handled claim construction phase of patent infringement litigation involving prepaid calling cards and systems.
Cross-examined witnesses in successful trade secret action against large multi-national biochemical company.

Intellectual Property Litigation - Represented major health insurance company in suit to compel private arbitration of dispute under Trademark Act and alleged breach of fiduciary duty regarding alleged diversion of managed care business and use of famous trademark in connection with alleged diversion.

Acted as counsel for medical device manufacturer in patent infringement litigation involving powered medical injectors and associated syringes.
Acted as counsel for prominent health care company in patent infringement actions involving comprehensive health care management system.
Acted as lead counsel in patent infringement litigation involving electronic measurement for marine propellers.
Clark Hill PLC Receives National and Regional Rankings in the 2021 Edition of Best Lawyers “Best Law Firms”Clark Hill Attorneys Selected for Inclusion in the 2021 Edition of Best Lawyers in AmericaClark Hill Lawyers Named 2020 Leading LawyersClark Hill Attorneys Named 2019 Michigan Super Lawyers & Rising StarsSixty-Six Clark Hill Attorneys Named 2018 Michigan Super Lawyers & Rising Stars143 Clark Hill Attorneys Selected for Inclusion in the 2019 Edition of Best Lawyers in AmericaIntellectual Property Attorney Michael Bednarek Joins Clark Hill’s Washington, DC office Clark Hill Attorney Russell E. Cass to Speak on the Supreme Court’s Recent Landmark Patent Decisions in Oil States and SAS Institute on May 2, 2018Sixty-Seven Clark Hill Attorneys Named 2018 Leading LawyersClark Hill PLC Receives National and Regional Tier 1 Rankings in the 2018 Edition of Best Lawyers, “Best Law Firms”Clark Hill Attorneys Named to DBusiness Magazine's 2018 Top Lawyers ListClark Hill Attorney John L. Hines, Jr. Named Board Chair of the Erikson InstituteClark Hill Attorney Russell E. Cass to Moderate Federal Circuit Bar Association Webinar on October 26, 2017Clark Hill Attorney Russell E. Cass to Moderate ABA IP Litigation Committee Roundtable on October 13, 2017Intellectual Property Attorney Russell E. Cass Joins Clark Hill PLC Clark Hill Attorney David J. Marr Named 2017 Distinguished IP Alumni by Chicago-Kent College of Law Alumni Association Clark Hill Attorneys John L. Hines, Jr. and John S. Paniaguas Author Chapters in IICLE 2017 Edition of “Intellectual Property Law”Clark Hill Attorney John L. Hines Jr. will co-present “Digital Transactions: The Global Legal Framework for E-Signatures and Records” Sponsored by the American Bar Association