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Technology Transactions

Our technology transactions lawyers have extensive experience counseling users and suppliers of technology on a broad range of licensing and commercial transactions matters. Our services include reviewing and analyzing potential and pre-existing licensing opportunities; structuring, negotiating and drafting license and technology transfer agreements; representing licensees in acquiring new licenses and technology; assisting vendor clients with EULAs, SaaS terms of service, procurement agreements, and other commercial contracts; conducting due diligence; structuring, negotiating and drafting technology development agreements; and advising on joint ventures and strategic alliances.  We work in a wide variety of technologies and industries, including computer and semiconductor technology, internet and e-commerce, pharmaceuticals and medical devices, biotechnology, artificial intelligence, blockchain and cryptocurrency, and media and entertainment.

Our experience includes licensing, technology transfers and other commercial transactions with respect to all types of intellectual property including patents, know-how, copyrights, trade secrets and trademarks.  We are familiar with and proficient in dealing with complicated and sophisticated licensing issues and techniques, including royalty stacking provisions, combination product issues, antitrust issues and patent misuse issues.

We represent clients ranging from entrepreneurs, startups and emerging growth companies to large multinational corporations in a wide variety of financing and joint venture transactions in which intellectual property assets are particularly significant. Our lawyers regularly advise clients on intellectual property matters in forming new companies, joint ventures and partnerships, and mergers and acquisitions. We handle complex venture capital and other financing arrangements, as well as securities offerings involving intellectual property rights in conjunction with our corporate, securities and financial services groups. We also negotiate and draft agreements involving the sale of goods and services whose manufacture, distribution, marketing and sale is protected by intellectual property law.

Why choose us:

  • Worldwide reach allows us to provide efficient cross-border support in delivering complicated multijurisdictional transactions and advising on a range of issues related to such transactions, including sales of goods, import/export, tax, privacy and data security, and employment issues.
  • Expertise extends beyond the purely contractual aspects of commercial arrangements to regulatory concerns and working knowledge of best practices across a broad range of industries.

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  • Assisting an online service provider with the structuring, drafting and negotiation of a white label software-as-a-service (SaaS) offering for its online financial transactions solution, including outsourced help desk, data center management and operations offered by the service provider to the customer. The agreement included custom software development, system operation and hosting services, internal customer-facing help desk services, external end user call center services, and service level agreements covering service availability, system performance, transaction processing, data transfer, problem management, call center reporting and external sales service reporting.
  • Assisted cloud-based service provider with the preparation of standard subscription agreements for its enterprise tag management service that enables subscribers to manage tags placed on their websites and to integrate website pages with analytics, testing or marketing partners.
  • Representing an iPhone application developer in licensing and development transactions.
  • Advising Google UK on the launch of the Google Talk project.
  • Assisting a US-based pharmaceutical company with a software license and hosting agreement for a benchmarking and budgeting application for the prediction and management of investigator costs and budgets for clinical trials.
  • Assisting a pharmaceutical company with the drafting and negotiation of a patent and know-how license agreement for a patented drug delivery system for the sustained release of drug formulations.
  • Assisting a pharmaceutical company with the planning, structuring and negotiating of a variety of in-licenses for a variety of small molecule compounds for use in drug products.
  • Providing assistance with the drafting of internet website terms and conditions of use and privacy policies.
  • Providing advice, negotiation and drafting assistance to a major semiconductor manufacturing materials supplier with the company’s development and licensing programs, including patent and know-how license agreements and joint development agreements with the industry’s major computer and semiconductor suppliers.
  • Assisting a large, well-known high-end computer storage equipment vendor in major OEM and other licensing arrangements with key players and customers in the computer storage industry.
  • Representing a leading financial services institution in outsourcing and licensing transactions.
  • Representing a life sciences company in sourcing of ERP solutions.
  • Representing a software provider in data center agreements, IP licenses, EULA, collaboration agreements, financial data services/cloud computing agreements, and employment and developer agreements.
  • Advising National Grid on the acquisition of a new IT system to provide business critical electricity balancing services to the UK electricity grid.
  • Drafting and advising a fast-growing provider of advanced converged networks and infra-structure solutions on its contract for the supply and support of IT and telecoms network infrastructure to a key client. The networks provided included a mix of systems sourced predominantly from Cisco and Alcatel-Lucent.
  • Advising Focus Solutions Group Plc on a £10 million contract for the supply of its multi-channel distribution software solution to a major international bank. The work included advising on issues arising from the use of open source software, ownership and use of developed IPR, and solution delivery and acceptance as well as ongoing support and maintenance services.
  • Drafting and advising a software supplier on its standard solution supply terms and on the use of open source software with its own proprietary solutions, including advising on GPL, Lesser GPL and Apache open source licenses.
  • Advising Ricardo plc on the negotiation of contracts for the acquisition and implementation of an SAP based ERP solution to be rolled out to its group worldwide.
  • Advising an international retailer on contracts with BT for the acquisition and implementation of new telecoms networks and on contracts with numerous IT solutions providers for the supply of hosting services and business critical IT systems.
  • Advising an AIM-listed software supplier on contracts for the supply, licensing and sup-port of its point of sale and back office accounting software packages to key customers in the retail and leisure sectors, including customers such as YO! Sushi, Merlin Entertainments and Pret a Manger.
  • Advising a consortium of investment banks (including Barclays Bank, BBVA, BNP Paribas, Commerzbank, Credit Agricole Corporate and Investment Bank, Credit Suisse, Goldman Sachs, HSBC, ING, JP Morgan, Morgan Stanley, RBC Capital Markets, Santander, Societe Generale, UBS and UniCredit) on the establishment and formation of a not-for-profit fixed income pre-trade data information network (including establishing and negotiating development agreements with technology and infrastructure providers (and interim agreements), intellectual property assignments and the creation of access and use documents for users of the platform).
  • Advising the UK’s leading privately owned hotel and leisure group in relation to its multimillion-pound investment in the design, build, rollout and operational outsourcing of Wi-Fi, broadband and network services at its various hotels and leisure parks the UK.
  • Advising a global outdoor advertising company in relation to various digital screen procurement arrangements with a number of major manufacturers.
  • Advising a Caribbean telecommunications company in relation to the design, build, rollout and operation of a cellular network across a Caribbean country.
  • Advising a major Middle Eastern telecommunications company in relation to the design, development and build of a fibre to home and wireless access network.
  • Advising the government of the Kingdom of Saudi Arabia in relation to the outsourcing of its visa processing and biometrics services around the world.
  • Advising an electronic tolling company in relation to the design, development and maintenance of an e-tolling system for implementation throughout an EU member state.
  • Advising the world’s top three global data storage companies in relation to various customer contracts, ranging from co-location to full managed services.
  • Advising a global advertising company in relation to the outsourcing of its voice, data and mobile communications requirements.
  • Advising a major global advertising and media organization in relation to data storage, hardware and software procurement and its general technology services requirements around the world.
  • Representing a major US aerospace corporation in a number of space engine development projects undertaken together with a Russian partner, conducting a legal due diligence review of technologies subject to transfer, and drafting documents, including trademark licensing agreements.
  • Advising a US-based leading enterprise applications developer on localization of its software-related contracts (e.g., license agreements, contracts for work or service level agreements) in the Czech Republic.
  • Advising a US-based leading enterprise applications developer, with respect to negotiations of a three-party license agreement to be entered into with its Czech client and its subsequent client.
  • Acting as the lead lawyer in negotiations on behalf of a leading global IT company in agreements for Lukas Bank S.A. regarding the assembly, service and licensing of a computer system.
  • Representing and advising Poland-based operators in numerous transactions and projects concerning mobile virtual network operators (MVNOs) and mobile television in digital video broadcasting – handheld (DVB-H) standards.

  • Recognized in IAM Patent 1000 2023
  • Recognized in The Legal 500 EMEA 2023
  • Recognized in The Legal 500 UK 2023
  • Recognized in Chambers UK 2022
  • Recognized in Chambers USA 2023
  • Recognized by Managing Intellectual Property as a 2020 IP Star (France) in the Patent and Trademark categories
  • Lawyers named as Client Service All-Stars by BTI Consulting 2020
  • Ranked as one of the top 10 US law firms for healthcare patent prosecution by Intellectual Asset Magazine and Ocean Tomo
  • Recognized in The Best Lawyers in America since 2006
  • Recognized by World Trademark Review since 2016