OVERVIEW

We have in-depth experience negotiating licensing and technology commercialization agreements for diverse clients ranging from ‘garage’ based startups and mid-market companies to Fortune 100.  We have structured, drafted and negotiated a wide variety of arrangements to acquire, develop, commercialize, protect and distribute technologies, both domestically and internationally. We also regularly represent technology companies in diverse intellectual property (IP) transactions, including trademark and copyright registration, IP acquisition, IP diligence and counseling, and IP issues arising in corporate transactions. Our outsourcing experience covers both customer-side and vendor-side representation, occasionally in collaboration with outside consultants. We provide end-to-end representation, including pre-RFP strategizing, on-site diligence, vendor assessment, contract negotiation, transition planning, relationship governance, and contractual disagreements. We also regularly counsel companies on domestic and international privacy and data security issues.

SERVICES

IP Acquisition

  • Acquisition of IP and technology rights
  • IP sale, assignments and licensing
  • University technology licensing
  • Patent, copyright and trademark licensing

Licensing

  • End-user license agreements (EULAs)
  • Software evaluation and testing agreements
  • Software and technology licenses
  • Technology acquisition and transfer
  • University technology licenses
  • Content licenses
  • Copyright, patent and trademark licensing
  • Enterprise licenses
  • Software assignment and grant-back licenses
  • Source code escrow and escrow agreements

E-commerce

  • E-commerce platforms and agreements
  • Internet domain names
  • Website development, hosting and linking agreements
  • Website terms of use and privacy policies

Cloud Computing

  • Cloud computing agreements
  • SaaS, PaaS and IaaS agreements
  • IT resources and communications systems policy

Outsourcing Issues

  • Sourcing strategy and counseling
  • Drafting RFIs and RFPs
  • On-site due diligence
  • Vendor assessment and selection
  • MSA, PSA and SOW drafting and negotiation
  • Counseling on SLAs, pricing, disaster recovery and other operational and risk-management matters
  • Transition planning and counseling
  • Employee transfer and personnel management, including contingent labor issues
  • Vendor management and oversight, including prime and subcontractor arrangements
  • Contract lifecycle management
  • Customer-vendor relationship governance and management
  • Dispute resolution, including service credits computation
  • Exit strategizing, including MSA renegotiation, restructuring and termination of engagement
  • Data center, co-location and shared services
  • In-sourcing, onshoring and offshoring issues

IP Counseling

  • IP due diligence and audits
  • Counseling on IP issues in corporate, M&As and financings
  • Proprietary invention assignments
  • Domestic & international IP strategies

Commercial Contracts

  • Advertising agreements
  • Collaboration, partnering and teaming agreements
  • Confidentiality and non-disclosure agreements
  • Consulting agreements
  • Click-wrap and shrink-wrap agreements
  • Design and development agreements
  • Foundry agreements and semiconductor issues
  • Manufacturing agreements, including OEMs
  • Reseller agreements, including VARs
  • Marketing campaigns, promotions and sweepstakes

Procurement

  • Procurement and vendor contracts
  • Distribution agreements
  • Franchise agreements
  • Sales and supply agreements

Privacy & Data Security

  • Privacy policies for websites and mobile apps
  • Data security and IT protection policies
  • U.S., E.U. and India specific counseling

BPO, ITO & KPO Engagements

  • Billing services, including large balance transfers, missing payments and collections, and financial care
  • Call center agreements and customer care contracts
  • Data and revenue management
  • Finance and accounting, including accounts payable, cash applications, contract sales code administration, dealer financial services, and outside collections and bankruptcy
  • Marketing campaigns and retail sales force
  • Payroll and employee benefits administration
  • Prepaid card services 
  • Application development and maintenance (ADM)
  • Application lifecycle management and support
  • Database management and desktop support
  • ERP deployment and implementation
  • Help-desk, service desk and staff augmentation
  • Software design, development and support
  • Systems integration (SI)
  • Systems management and computer operations
  • Voice/PBX and LAN services
  • Data and risk analysis