Technology Transactions

TECHNOLOGY TRANSFERS & IP LICENSING

Technology transfers/sales and IP licensing are an essential part of today’s technology-based economy. We regularly represent both licensors and licensees in seeking creative ways to transfer, license, protect, and maximize valuable IP assets and their sources of revenue. Using sophisticated data analytics, we can prepare and review a broad spectrum of licensing agreements—from traditional patent and software licenses to cutting-edge, revenue-sharing agreements for emerging technologies. Our lawyers and patent, copyright, and trademark specialists regularly assist clients in formulating strategies to exploit IP rights and develop agreements to implement those strategies—including with employees, consultants, and third-party suppliers—to ensure that all necessary rights to technology assets are documented, retained, and maximized.

STRATEGIC ALLIANCES & COLLABORATION AGREEMENTS

When properly structured and implemented, strategic relationships can be a win-win, and companies regularly form strategic alliances to exploit technology-based products and services. Our lawyers are at the forefront of crafting both traditional and innovative agreements for companies wishing to ally themselves with others, including establishing and working with standards-setting organizations (SSO), implementing new technologies, or expanding into new territories.

TECHNOLOGY JOINT VENTURE TRANSACTIONS

We help our clients establish technology joint venture (JV) arrangements with one or more other parties. Many of these JV transactions tend to be cross-border deals and can take the form of an equity JV or a contractual JV.

MASTER SERVICES AGREEMENTS

We provide guidance to our client on a variety of services agreements including consulting services agreement, umbrella master services agreements, source code development services agreements, etc. Our extensive and broad experience in such agreements across a variety of industry segments gives us keen insights into the practical business issues that drive such relationships and puts us in a position to provide meaningful and market-relevant advice to our clients.

ARTIFICIAL INTELLIGENCE

AI in its many forms promises to be one of the most transformative and disruptive technological development in decades. Its applications run the gamut from supply chain management and medicine to gaming and the arts. In particular, the growth of generative AI raises a bevy of complex legal issues—including copyright, patent, trade secret, privacy, security, ethics, and compliance concerns. Our team helps clients navigate this emergent landscape to meet business goals and accelerate growth while simultaneously staying abreast of the rapidly evolving legal and regulatory environments.

CLOUD COMPUTING

We advise some of the world’s largest cloud hosting providers to help them address and overcome the obstacles they face. Our work includes providing guidance on re-platforming and hosting, the treatment and processing of regulated data, and the ownership of intellectual property. We have negotiated complex strategic partnerships with the sector’s biggest providers, including delicate infrastructure migrations that implicate long-term technology objectives.

OPEN SOURCE SOFTWARE ADVICE

We counsel our clients on all aspects of open source software (OSS) issues including the various issues that relate to the use and contribution of OSS including:

• Evaluating proposals to use OSS or contribute proprietary code to an OSS project
• Preparing OSS policies and provide training for engineers and programmers
• Evaluating OSS development tools
• Assisting with OSS audits
• Defending clients accused of OSS license violations
• Performing OSS due diligence and evaluating OSS code composition reports
• Advising on OSS agreement provisions including OSS representations and warranties.

ERP & OTHER MAJOR PLATFORM IMPLEMENTATIONS

We guide clients in major cloud offerings, including those involving ERP software systems that help organizations automate and manage core business processes to optimize performance. Our lawyers advise on a broad range of areas including sophisticated inventory management applications, major implementations of healthcare payment platforms, oversight of warehouse management software, and often-sensitive electronic health records (EHRs). Our experience in this space includes helping the world’s largest supplier of specialty gases to negotiate a license agreement with the world’s leading ERP software vendor, including implementation of the system—from design, to development, to deployment.

X AS A SERVICE NEGOTIATIONS

Our team provides extensive support to both the client side and vendor side. We advise on Software as a Service (SaaS) relationships, NFT and other blockchain-related agreements, commercial agreements, software development, licensing, and general technology and intellectual property issues. We assist clients in hundreds of technology transactions each year. Our work has included counseling a major fashion company on numerous and ongoing technology transactions, a global financial institution on investment management services to a significant player in Middle Eastern finance, and several global cloud-based SaaS systems providers on, among other things, ongoing regulatory compliance for client transactions in the United Kingdom and Europe.

CONSULTING, DEVELOPMENT & IMPLEMENTATION

To sustain a competitive advantage in today’s marketplace, continuous product development and quick-to-market commercialization efforts are essential. Companies increasingly rely on outside experts to assist them in expediting the evaluation, development, and implementation of new products and commercialization initiatives. We routinely advise clients on third-party consulting, development, and implementation arrangements that lay a foundation for IP protection and future business success.

SEP LICENSING ADVICE & STRUCTURING SSOs

Our technology transactions attorneys have an intimate understanding of the issues surrounding standard essential patents (SEP) and standards setting organizations (SSO). Our team has helped set up some of the most successful commercial SSOs and we regularly advise clients on their participation in SSOs including issues related to licensing and disclosure obligations.

ECOMMERCE

The electronic sale of products and services and exchange of information are essential to virtually all businesses, and owning or applying cloud computing and open-source software is now nearly a given for most enterprises. These ecommerce innovations raise a host of business and legal risks—including security and privacy concerns and IP ownership and contractual issues—against a backdrop of heightened regulation. We work closely with our clients to identify and develop solutions to avoid or minimize such risks.

FINTECH

We represent major software and technology providers in industry-leading transactions. Our experience includes negotiating a 10-year strategic partnership with a major data enterprise, resulting in the migration of records from existing data centers to a cloud solution, navigating a client through the overhaul of a complex payment system, and facilitating the outsourcing of broker-dealer regulatory responsibilities.

DATA RIGHTS & SERVICES

Data rights can be a key business asset enabling companies to differentiate their businesses and products. However, aggregation, compliance, retention, security, use restrictions, and other issues can hinder technology deals. Our lawyers stay at the forefront of developing best practices and contract models to support our clients in the collection, use, protection, and commercialization of data.

PRIVACY & CYBERSECURITY

Our clients engage in a wide range of technology transactions involving the disclosure, processing, collection, and use of critical business and sensitive personal data. We understand the current state of the regulatory and industry environments affecting these transactions and provide business-oriented advice on vendor and customer transactions, due diligence, and data collection, acquisition, and use.

CONTRACT WORKFLOW

As the pace of technology innovation increases, the volume of technology transactions has exploded. We help our clients manage that workflow efficiently and effectively. Whether it is developing form agreements, assisting with peak demands, or managing entire contract portfolios, our lawyers—many of whom have served in-house—work closely with in-house legal and procurement teams to minimize legal bottlenecks.  

M&A AND VENTURE CAPITAL INVESTMENTS

We coordinate and document assignments, licenses, and other transfers of technology assets and their associated IP rights as part of mergers, acquisitions, venture capital investments, initial public offerings, and other changes in corporate structure. Drawing on our lawyers’ deal experience and technological savvy, we quickly identify, evaluate, and classify material technology, IP, and licensing issues important to pending sales and other transfers of such assets and IP rights.

OUTSOURCING & MANAGED SERVICES

Outsourcing transactions are complex and require a specialized skill set. Our team has experience handling all types and sizes of outsourcing transactions, including many of the largest information technology and business process outsourcing transactions to date, in addition to innovative and strategically important process-specific transactions.

CROSS-BORDER & TECHNOLOGY-RELATED TAX PLANNING

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. Strategies include evaluating options for technology and patent ownership such as joint ownership, assignments, licenses, and splitting of rights.