Technology Transactions
The value of technology and intellectual property (IP) can make or break a deal. When clients undertake transactions anywhere in the world, our technology transactions team takes a practical, proactive approach to identifying and resolving key IP issues. Whether in mergers, acquisitions, joint ventures, licensing, financing transactions, or related corporate arrangements, we work with clients ranging from emerging companies and private equity and venture capital firms to major multinational corporations.
OUR APPROACH
Wherever transactions take place, our team drills into technology and patent issues to guide buyers and sellers through every stage, focusing on preserving the value of the technology and patents being transferred. Early client consultations enable us to shape due diligence and transaction structure, and we offer clients the benefit of our negotiating knowledge throughout our discussions. During cross-border deals, we can call on our relationships with local counsel worldwide to address issues thoroughly and efficiently.
Through due diligence investigations, we develop cost-effective strategies to evaluate technology and patents to be acquired or divested. As part of the deals we handle, our team negotiates and drafts technology and patent provisions of purchase agreements and ancillary documents, including representations and warranties, indemnifications, disclosure schedules, licenses, and technology and patent transfer agreements.
We advise on management structures and the technology and patent aspects of cross-border tax planning. When transactions involve sharing or splitting technologies, our team maximizes the chances of overcoming antitrust objections and other IP challenges. Evaluating options for technology and patent ownership such as joint ownership, assignments, licenses, and splitting of rights is also part of our thorough process.
CORE KNOWLEDGE THAT HELPS MAXIMIZE IP VALUE
Our integrated global team can handle deals anywhere in the world. Scores of our lawyers have technical degrees, including Ph.Ds, and our team has deep knowledge of other areas that are core to tech transactions, including startup and large company banking and finance, US and international tax, patent IP, nonpatent IP, government contracts, open source, and US Food and Drug Administration regulations.
Our clients come from the semiconductor, software, information technology, Internet, telecommunications, financial services, university, and life sciences areas. Within these areas, we regularly represent both licensors and licensees in seeking creative ways to exploit valuable IP rights and to maximize their sources of revenue, including:
- Software and source code license agreements
- Patent license agreements
- Joint development agreements
- Consulting and professional services agreements
- Click-wrap agreements
- Online sales and service agreements
- Terms of use and privacy policies
- IP ownership agreements
- Beta and evaluation agreements
- Maintenance and support agreements
- Open-source license agreements and audits
SERVICE TAILORED TO CURRENT & FUTURE BUSINESS OPERATIONS
Along with cost-effectively identifying and resolving infringement risks associated with past and future business operations, we also assess any pending litigation relating to technology and patents.
Team members evaluate the scope, validity, and transferability of technology and patent licenses, as well as the sufficiency of the licenses for future operations. We also conduct tailored searches in relevant jurisdictions to assess existing rights, and identify third-party rights required to operate the business.
In addition, we seek out and resolve title or ownership issues associated with the technology and patents and prepare patent noninfringement and invalidity opinions for patents related to the business—work that can be used by clients or for delivery to another party at closing.
We work to structure sales and purchases of IP assets to ensure that they are properly transferred and that any liabilities are left behind.
