Technology Licensing & Transactions

Our IP attorneys work side-by-side with our attorneys in other groups: corporate & securities, business transactions, international law, labor and employment, public finance, regulatory & legislative and tax. With in-depth experience in practice areas such as for-profit and non-profit entity formation and governance, financing, mergers and acquisitions, tax, and technology transactions, and having worked with a wide range of entities, including universities, the United States government, Fortune 500 companies, emerging companies, venture capitalists, and investors, our attorneys add value by enabling us to offer our clients an integrated approach to valuing, protecting, and commercializing intellectual property.

We have substantial experience in assisting our clients in a wide variety of financing and joint venture transactions in which intellectual property assets are particularly significant. With clients ranging from entrepreneurs, to emerging growth companies, to larger multinational corporations, to educational institutions, we also assist our clients in commercially developing their intellectual property rights—whether those rights be trademarks, patents, copyrights, or trade secrets—to maximize return-on-investment by drafting and negotiating a wide range of transaction vehicles, from marketing and distribution to technology transfer to transactions involving the sale of goods and services whose manufacture, distribution, marketing, and sale is protected by intellectual property law.

Together with our Corporate and Securities Group, we regularly advise our clients in forming and financing new companies, joint ventures, and partnerships. We have represented our clients in all stages of financing, from initial seed capital to bridge loans, to mezzanine financing, to initial public offerings and buyouts. In addition, our lawyers are experienced in counseling clients on IP holding companies, secured transactions, regulatory naming approval, sourcing (in and out), due diligence on IP in mergers and acquisitions, and bankruptcy.

We counsel our clients on all aspects of developing the value of their copyrighted materials, and support them by negotiating and drafting the releases, licenses, and related agreements needed to implement their plans, as well as to facilitate their use of third-party IP assets, including graphics; music; and celebrity names, voices, and likenesses.

Practice Category

Review and Assessment of Technology Assets associated with Major Transactions

The firm’s intellectual property attorneys have worked closely with its commercial attorneys in developing the intellectual property rights agreements for a half-billion dollar medical facility involving an engineering and building contractor, an investor, and a medical center. The technology incorporated in the center was to be jointly developed as the center was designed and constructed. Our representation included rights-to-use studies, joint inventor agreements, in-licensing the technology of other parties, and downstream rights of the parties.

Corporate Due Diligence for Transactions having Intellectual Property or Technical Asset Components

We have substantial experience in the area of due diligence to support transactions with intellectual property or information technology components, including assessment of risks relating to intellectual property infringement, right-to-use opinions, validation of presumed intellectual property rights, confirmation of protection for key product and service lines, proper documentation of assets, confirmation of title, presence of liens and security interests, analysis and assignability of key licenses and agreements, presence of warranty issues, development of appropriate IP representations and warranties, and physical audit of records.

Negotiation and Preparation of Outsourcing and Insourcing Agreements, including Master Sourcing and Master Service Agreements

Typically, this involves helping a client identify its core technologies or core business, assuring that the client has a protected position, qualifying vendors, and developing license and operating agreements between the parties. This may further include operating contracts for foreign and third-party operators; non-disclosure, non-compete, and non-solicitation agreements with employees, consultants, and vendors; and tail-end termination agreements.

Assisting Clients in Qualifying for or Participating in Government Contracts

We have substantial experience in negotiating and preparing agreements that include intellectual property rights requirements for the Department of Defense, the Department of Energy and under the Federal Acquisition Regulations, including a good understanding of the underlying issues which must be met in order to be granted exceptions to the regulated government rights, such as single sourcing, outright ownership of background technology, maximizing ownership in limited rights data, and restrictions on march-in rights. We also have worked closely with clients in negotiating and developing cooperative agreements under federal statutes as well as underlying teaming agreements, host site agreements, and government funds repayment for research and development initiatives, as well as proof of commercial viability initiatives. In many instances, these transactions involved contributions of funds by the U.S. government, technology by a university, and commercial expertise and capabilities by an outside third party participant.

Intellectual Property Audits

We have performed numerous audits for clients in order to (i) identify a client’s intellectual property; (ii) determine what products or services are covered by the client’s intellectual property rights; and (iii) assess the financial performance of the intellectual property assets. Based on such audits, we can make recommendations for acquisition and/or divestiture of such assets. Such audits are particularly crucial as a precursor to an acquisition of rights, including asset purchase and stock purchase transactions.

Review, Assessment and Development of Policies and Procedures

We have prepared numerous intellectual property policies and procedures for our clients, including patent development and disclosure policies, IT policies, copyright policies, comprehensive trademark use policies, inventor and author policies and releases, and employee policies relating to inventorship, authorship, confidentiality and non-compete issues.

Executing Long-term Strategies for the Exploitation of Intellectual Property

We can assist clients in identifying the attributes of target licensees for a new technology, in understanding how a product would fit into the marketplace and in developing strategies for implementing commercialization of the technology. These strategies may include the leveraging of intellectual property rights through licensing, technology option agreements, joint development agreements, teaming agreements, distribution agreements, OEM agreements, and the like.

Perfecting Ownership and Security Interests in Intellectual Property

There are unique issues with respect to both the perfection of ownership, the perfection of license rights, and the perfection of security interests in intellectual property assets. We have substantial experience in this area, including chain of title verification, initial lien filings, correcting deficient interests, and lien cancellations. Likewise, we can assist in registration of licenses in foreign jurisdictions.

Supporting the Conducting of Business Over the Internet

We have substantial experience in developing Internet business models and agreements, covering such diverse issues as web site user agreements; resolution of domain name ownership issues; interpretation, compliance, and development of policies relating to the Digital Millennium Copyright Act; multi-state taxation; distribution laws and warranty issues. Also, we have experience in searching and protecting domain names and in assessing the relative rights of domain name holders and trademark rights holders.

Naming Rights Agreements

Jackson Walker attorneys have been directly involved in the naming rights agreements involving a professional stadium for football, baseball, and basketball teams, including clearance and protection issues as well as the specific naming rights issues in the lease of the facility between the primary tenants and the landlord.

ISP Agreements

We have represented both the ISP provider and the ISP user in developing comprehensive agreements covering delivery and support of services, bandwidth issues, security, and functional management issues such as firewalls, downtime risks, and software development and ownership. This includes gateway agreements, negotiation of transportation systems, network support, and related issues such as licensing and sub-licensing of operating systems.

Software and System Development, Operating and Service Agreements

We have assisted in the negotiation and development of comprehensive network IT development and support agreements for numerous clients. Jackson Walker attorneys have headed the negotiating team for IT service agreements for numerous universities, colleges and school districts, as well as large, multinational businesses with distributed IT networks.

Public-Private Partnership for Intellectual Property Commercialization

We can assist universities in implementing and funding unique public-private partnerships to help maximize various IP rights. One such effort was the production of films intended to further the university’s educational mission and provide faculty and students experience in the commercialization of intellectual property. The project ultimately required formation of several new entities (a non-profit corporation, a limited partnership with outside investors, and limited liability companies to serve as the production company, the general partner, and special purpose entities for individual films), each with its own governance structure and different federal and state tax considerations. Our work in this area includes the preparation of contracts relating to the creation and use of specialized intellectual property. These projects necessitate the involvement of attorneys with experience in the formation and governance of business and non-profit entities and in entertainment, intellectual property, securities and tax laws.