Technology

Technology drives business, and our attorneys recognize that our clients face technology-related issues on a daily basis. Whether as a provider of technology solutions or as a customer leveraging those solutions, we have the experience to address all aspects of these complex transactions. Our team has provided counsel regarding technology licensing, distribution, software and website development, trade secrets, and privacy and data security issues. We know how the market views these challenges, and we can guide you through the issues that arise.

Our technology group draws from our e-commerce experience providing clients with experience in all aspects of the Internet including linking and framing, portal development, application service provision, security, site usage jurisdiction, privacy, taxation, and various other issues related to an online presence. We have both the resources and the commitment to respond to the rapidly changing business climate to meet our clients’ needs cost-effectively. Regardless of whether you are a start-up or a traditional brick-and-mortar operation, we have considerable experience developing technology strategies and providing creative solutions to complex technology impacted relationships.

We provide a holistic approach to business matters with a technology component, and our experience is far reaching:

  • Inbound and outbound technology licensing including Software Licensing Agreements, Software Installation and Maintenance Agreements, Value Added Reseller Agreements and Consulting Service Agreements
  • Business Process Outsourcing (BPO)
  • Software as a Service and Application Service Provider (ASP) Agreements
  • Website policies and E-Commerce and electronic transaction agreements including Terms of Use Agreements, Privacy Policies, and Electronic Signatures (Click-Wrap, Clickthrough, and Browsewrap Agreements)
  • Domain name and cyber-squatting Issues
  • Hosting agreements
  • Joint Development, Partnering and Joint Venture Agreements with a technology focus
  • Investment in technology companies including securities issuance through both public offerings and related SEC compliance work and private equity offerings
  • Acquisition or disposition of technology companies and their assets and intellectual property and due diligence in connection with acquisitions and licensing
  • Technology insurance coverage (hacker, ecommerce, etc.)
  • Software development, protection and licensing; database protection and licensing; trade secret protection and licensing
  • Complying with import and export regulations, including deemed export concerns with respect to non-U.S. employees working in the U.S. and outsourcing of information technology or development functions to foreign companies, and compliance with International Traffic in Arms Regulations (ITAR)

Developing, negotiating and analyzing software and services contracts

  • Assisted national bank with services agreement related to security management outsourcing including hardware and software tool support and incident reporting
  • Assisted large retirement system with negotiation of hosted services contract related to account management and web portal access for all system participants including allocation of risk for data breach issues
  • Negotiated SAP system acquisition by large multi-national construction company
  • Assisted in the development of a new software, service and maintenance contract regime for a biometric technology vendor
  • Assisted in the development of a services agreement regime for a application service provider in the healthcare industry and related privacy compliance analysis
  • Negotiated software license and development agreement for medical school concerning voice recognition software
  • Negotiated software license relating to clinical trial management software
  • Negotiated software license and development agreement for GPS services in energy industry
  • Prepared form end user license agreement for document management software
  • Assisted negotiation of technology license for energy industry client
  • Negotiated IT out-sourcing agreements

Acquisition and divestiture of technology-related ventures

  • Acquisition of technology consulting services company by traditional bricks and mortar oil and gas industry parts manufacturer
  • Acquisition of domain name registrar by domain hosting company
  • Assisted on software issues in acquisition of health management company by managed care company
  • Assisted in IP issues in acquisition of three software/technology companies in asset management field
  • Assisted large construction firm with substantial national energy development project with due diligence review of software licenses, electronic document retention policies
  • Issued patents and other technology related documentation in conjunction with acquisition of engineering firm specializing in power plant development and operation
  • Acquisition of technology consulting services company by traditional bricks and mortar oil and gas industry parts manufacturer

Assistance with providing technology-related solutions

  • Assistance in the development of policies in relation to security and enforceability for online transactions for a banking institution
  • Prepared agreement for development of Internet-based training course for energy industry for U.S. government contractor
  • Assist in the capacity of outside specialty counsel to energy derivatives trading firm in conjunction with their data acquisition technology solutions, technology law compliance issues and all software licensing issues

Funding technology companies

  • Representing technology companies in connection with raising equity and debt capital
  • Representing investors in technology companies
Chris Rourk with Jackson Walker logo

July 6, 2021
Mentions

Ofinno and Honda Complete Large Patent Transaction | Asia IP

American technology research company Ofinno announced on June 2, 2021, the completion of a large patent transaction with Honda Motor. In an article by Asia IP Magazine, Jackson Walker partner Chris Rourk provided background on the deal.

May 20, 2021
Spotlight

Chambers and Partners Recognizes Jackson Walker Attorneys and Practices in 2021 USA and Global Guides

Jackson Walker is pleased to announce that Chambers and Partners has selected 41 attorneys and 14 departments for inclusion in the 2021 edition of the Global and USA guides.

Cell phones in group with Jackson Walker logo

April 29, 2021
Insights

One of These Things Is Not Like the Other: SCOTUS Narrows the TCPA’s Application in Autodialer Cases, But Certain Marketing and Messaging Practices Are Still at Risk

By Emilio B. Nicolas and Eric Wong

Back in 1991, when mobile phones were a luxury item weighing about two pounds and dial-up internet was getting ready to hit the market, Congress passed the Telephone Consumer Protection Act (TCPA), with an eye towards reigning in robocalls and other abusive telemarketing practices of the time. Thirty years later, the TCPA still stands.

Chris Rourk with Jackson Walker logo

April 20, 2021
Mentions

Nokia and Lenovo Conclude Patent Cross-Licensing Agreement | Asia IP

“In September of 2020, a German court ruled that Lenovo had infringed one of Nokia’s patents, and ordered an injunction and product recall, although that order was stayed by the appeals court,” Christopher Rourk told Asia IP. “It is possible that the injunction factored into the settlement decision, and that the parties might not have settled the litigation if an injunction was not a factor. However, it is not uncommon for such matters to be resolved through a settlement and patent portfolio license prior to a verdict being rendered, with net payments going to the party with the stronger portfolio position.”

March 29, 2021
Mentions

Nokia and Samsung Sign Patent Licensing Agreement | Asia IP

“The license agreement between Nokia and Samsung is reported to relate to such standards-essential patents for 5G and to be offered in accordance with FRAND terms and conditions, but the current situation with 5G standards is more complicated than with older standards because there is presently not a single patent pool for 5G standards (unlike many older standards),” Chris Rourk notes in this Asia IP article discussing the patent license agreement between Nokia and Samsung.

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