IP Technology, Licensing & Commercialization
Our IP Technology, Licensing & Commercialization team speaks technology. We’ve done a transaction just like yours so you get an experienced team at an excellent value.
What We Do
Attorneys on the IP Technology, Licensing & Commercialization team know the industry standards and practices as well as the legal and regulatory issues for sharing and using technology and data. We have worked in-house at corporations supporting the IT and IP licensing functions, and served as lead counsel for the launch of new technologies. When you work with us, you get an experienced team that understands the legal and business implications of technology.
Our team has experience drafting and reviewing hundreds of technology and IP licensing agreements, including software and website development, SaaS, cloud computing, hosting, app development, data sharing and related agreements. We represent large purchasers of technology and related services, as well as large providers and resellers of technology tools.
We work in collaboration with our Mergers & Acquisitions team on technology due diligence and contractual risk allocation in corporate transactions. As a result, we can tell you what is conservative, aggressive or market-reasonable on critical deal terms. We also work with our Data Protection & Cybersecurity team to stay up-to-date on the latest data privacy and cybersecurity issues impacting the use and commercialization of business technology.
- Represent large technology company that provides both premises-based and SaaS model licenses in drafting and negotiating more than 50 OEM arrangements with other technology players, including Symantec, Microsoft, VMware and CSI.
- Represent publicly-traded global cloud commerce and online marketing company in strategic mergers and acquisitions and other transactional matters.
- Provide business technology and e-commerce advice to one of the world’s largest medical device manufacturers as it has dramatically increased the scope of its electronic services and electronic marketing activities. Lead counsel for:
- E-commerce initiative, which included strategic sourcing of technology resources for website creation, hosting and management; co-branding arrangements and content licensing; and data management for a suite of consumer-focused websites
- Internal information management systems including employee dashboards and patient data registries
- Represent a Fortune 100 retailer with consumer IT service offerings in negotiation of complex commercial agreements and strategic relationships involving a wide array of intellectual property and risk allocation issues, including IP ownership, in-license and out-licenses, complex indemnification obligations and co-branding and private labeling issues.
- Negotiate resolution of dispute with development partner, including contested IP ownership, transition licenses, insolvency and bankruptcy considerations and source code escrow release.
- Represent a large retailer in its negotiation of a variety of technology acquisition projects, including social media based applications designed to drive consumer awareness and interaction with the retailer.
- Represent clients developing applications to be offered on platforms including Microsoft, RIM and Facebook.
- Represent a web-based technology business with more than 1,000,000 registered users on all IT matters including email vendor relationship, legal compliance, privacy and security.
- Represent a Fortune 1,000 financial services company on cloud-based data storage, including access, security, disaster recovery and service level issues.
- Represent a cloud-based IT services vendor in relations with a worldwide hotel chain on its points/miles loyalty program, including response to a major security breach incident involving consumers and law enforcement.
- Lead outside counsel to one of the largest providers of Part D insurance coverage as it has launched its Part D business and increased its web- based marketing of a variety of its products. Work included:
- Negotiations with vendors providing hosted data services, network connectivity, call center support, website development and hosting, content delivery, advertising and co-marketing agreements
- Advice regarding web-based and other direct to consumer marketing programs, including compliance with CANSPAM, do-not-call legislation and other marketing guidelines
- Represent companies in negotiations with suppliers of various computer and technology products and services, including well known software and hardware products such as Oracle, SAP, Adobe, Siemens and Microsoft; telecom and connectivity providers such as AT&T and Qwest; and consulting service providers including IBM and Deloitte.
- Represent a large number of clients in a wide range of industries in negotiations with custom software developers, including the State of Iowa in its negotiations with technology service vendors for the creation of a $15 million on-line, interactive system to process and track unemployment insurance payments from employers.
- Handle complex outsourcing arrangements with providers including Wipro, IBM, Gartner Group, Accenture, Infosys, Deloitte, Covansys and BearingPoint.
Development of Client-Specific Forms, Templates and User Guides
- Develop and maintain templates, including annotations and fall-back clauses, for multiple clients with high-volume IP and IT transaction work (i.e., both vendors and customers). Templates include:
- Patent “out” and “in” licenses with annotations
- OEM agreements
- Hosting agreements
- Maintenance and support agreements
- SaaS agreements
- User terms
- Acceptable use policies
- Reseller agreements
- Drafted user-friendly guides related to intellectual property, information technology and data privacy issues for two Fortune 500 clients.
Finance and M&A Activities
- Act as integrated members of the firm’s M&A practice area by supporting IP/copyright, license diligence and risk allocation on the over $8 billion in transactions completed during calendar year 2014.
- Provide services in M&A and finance transactions to companies, including:
- Christopher & Banks
- Digital River
- Help Systems
- Rogue Wave Software
- Shavlik Technologies
- Thomson Reuters
- VIDA Diagnostics
News & Articles
June 1, 2016
Debuting in the 2016 edition of the IAM Patent 1000: The World’s Leading Patent Professionals were Lora Friedemann and Ann M. Ladd. Also ranked again were Thomas R. Hipkins, Kurt J. Niederluecke, Charles D. Segelbaum and David C. West. The IAM Patent 1000 identifies the top patent professionals in key jurisdictions around the world.Read More
January 22, 2016
It is not uncommon for a party seeking to license or acquire a patent to request information from the patent holder regarding the patent’s validity and strength. Often, this includes highly confidential documents between the patent holder and attorneys, which are generally privileged and protected from disclosure. However, disclosing privileged documents to a third party usually constitutes a waiver of the privilege. In limited circumstances, the “common interest doctrine” allows two or more entities with a joint interest to share privileged information without waiving its protection. This can include, for example, communications between separate parties negotiating a patent license. Before disclosing any privileged communications to a potential licensee, though, a patent holder should carefully consider whether they may be discoverable in subsequent litigation by a party seeking to invalidate the patent.Read More