Structuring software and technology licensing and development agreements

Technology transfer and licensing technology porter. For a company that has a great product but no ability to manufacture it, licensing is a great way to get that product to market. While a domestic jv partner can help a business navigate the regulatory, commercial and cultural complexities, licensing agreements can also be an attractive method of exporting technology. Structuring software and technology licensing and development agreements crafting provisions to allocate risk, avoid common pitfalls, and minimize liability paul c. The basics of software license agreements legalnature. Hes a wellknown speaker and author in the field of information technology agreements and he provides training.

There are many reasons to have one in place, so if you do not yet have one. Get an attorney who has expertise in licensing agreements. Members of that group have coauthored two major textbooks on rights in technical data and computer softwarethe more recent of which licensing software and technology to the u. We draft and negotiate substantial software license and development agreements, representing both licensors and licensees.

We serve as a business partner to our clients to identify, acquire, and monetize it and ip assets, regularly advising on licensing and cloud services agreements, including saas, paas, iaas, and naas. Create a licensing agreement to benefit both parties. Our team handles both complex and routine matters related to the development, use, licensing, and transfer of information technologies. Attorney david tollen is the author of the american bar associations bestselling manual on technology contracts, the tech contracts handbook. Foletta is a hightech corporate and licensing attorney practicing in silicon valley since 1984, including several years at wilson sonsini, several years at skadden arps sf office, and five years as a partner in the. In addition to licensing agreements, we negotiate agreements that often accompany these licensing arrangements, such as agreements for software development, it platforms, implementation and integration, and managed services.

Our technology lawyers offer a wide variety of services, including trademark and domain name selection, registration and enforcement, preparation of software and database development and licensing and maintenance agreements, negotiation of joint development and strategic alliance agreements, and structuring technology transfer and licensing. Technology is essential to remain competitive in todays worldwide marketplace. Commercial contracts lawyers technology transactions legal. Structuring patent licensing agreements cle webinar. Whether you are in the position of selling licenses to your technology or buying third party technology licenses, we have the experience and expertise to help you. Structuring software and technology licensing a nd development agreements crafting provisions to allocate risk, avoid common pitfalls, and minimize liability paul c. The panel will offer best practices for structuring the agreement to avoid litigation, allocate risk and maximize patent value. From forging an initial ip agreement among founders to the numerous confidentiality, ip ownership and licensing agreements a new company needs for every entity with which it interacts, pillsburys businesssavvy lawyers work with clients on technology and intellectual propertyderived transactions as an avenue for generating revenue and increasing value.

Technology agreements technology licensing attorneys in dc. Todays nontechnology companies regularly engage in technologydriven transactions and potentially have a more pressing need for experienced counsel. Examples of our experience in this area include agreements covering biotech, hardware, medical devices, software and other innovations. Agreements, software distribution license agreements and codevelopment. App and device distribution agreements with leading technology companies, including apple, amazon, microsoft, and roku. Whether looking to acquire technology for your companys internal infrastructure needs, or developing technology for distribution into the marketplace, our attorneys are experienced at structuring and negotiating complex software licensing and distribution transactions. Ipr helpdesk fact sheet on ipr management in software development published in our online library. Issues to consider when structuring medical device. We strive to have a close relationship with our clients and strive to understand their business needs and influences on our clients respective industries. Our global technology transactions group structures and negotiates agreements and provides sophisticated, business advice on the legal and commercial issues that arise in complex multijurisdictional technology and iprelated transactions, including mergers and acquisitions, software and information technology licensing and procurement, patent. We understand that licensing technology is often done in conjunction with other business deals, and we have a broad range of experience drafting and negotiating allied.

Software development and consulting agreements, including website. Structuring software and technology and development agreements. If you create software for customers, then you need to consider creating a software license agreement to help protect you and your business. Attorneys in the duane morris technology transactions, licensing and commercial contracts group assist a wide range of clients with maximizing company value from the intellectual property and technology assets that they own or license from third parties. To find out more about our technology licensing, acquisition and negotiation group, contact any of the following team members. The licensing revenue model for technology products.

Software programming and technology development agreements services, vendor, manufacturing, distribution and licensing agreements. Structuring software and technology licensing a nd development agreements drafting key provisions to allocate risk, avoid common pitfalls, and minimize liability todays faculty features. An important consideration in structuring licensing agreements is the portion of income derived from licensing revenue versus that deriving from royalties. Licensing and other technology transactions represent a critical component of any comprehensive monetization program relating to a companys intellectual property rights. Ice millers ip attorneys additionally assist clients in negotiating and structuring licensing agreements in conjunction with product and service distribution agreements. We can prepare software development agreements or application development. Emphasis is placed on agricultural technology licenses. Software development agreements we have years of experience in drafting contracts to deliver software development agreements customised specifically for your software development project.

Attend acis 2nd advanced legal forum on technology licensing agreements to learn how your peers are structuring licensing deals to achieve the most successful outcome for their company. Both technology licensing agreements and joint ventures offer clear advantages to businesses looking to enter foreign markets. The attorneys in wilmerhales technology transactions and licensing practicemany of whom have backgrounds in computer engineering, biochemistry and other technical fieldscollaborate closely with our corporate, licensing, intellectual property, regulatory and tax lawyers to negotiate agreements for clients across a broad spectrum of. Numerous software application development agreements and complex licensing and service agreements. The next paragraphs follow the common structure of a licence agreement. Represent leading online information technology outsourcing and procurement firm and advised on contracting issues, including eservices agreements, web hosting and development agreements, software licensing agreements and various strategic partnership arrangements, including the creation of implementation partner programs and reseller programs. Adelson on march 24, 2011 in the legal refresher as a consultant, entrepreneur, client or professional, you are often dealing with contracts, your own and others.

Commercial contracts lawyers ready to advise on, structure, draft and negotiate all. Licensing and development agreements should include key provisions such as ownership, indemnification, liability, and payment structure. Since most people engaged in deal making are involved in multiple deals at the same time, important aspects can be forgotten or. At structure law group, llp our attorneys assist clients in protecting and. Issues to consider when structuring medical device development and license agreements. Skilled attorneys command respect for their deeprooted knowledge in areas such as software licensing, technology transfer and outsourcing. Our experience includes assisting clients with the licensing of source code under open source licenses. Technology services and website design, hosting and maintenance agreements.

Toward that end, this booklet provides a primer on licensing in general, with a focus, where appropriate, on licensing basics and related issues of interest to technology and life sciences companies. These transactions generate significant economic value, leading to strategic growth and other competitive advantages when effectively structured and executed. It also provides a little guidance as to the different approaches to some of the the issues. Duane morris llp technology transactions, licensing and. Listen as our authoritative panel of patent attorneys examines patent licensing agreements, including standard clauses and variations to those clauses, sublicensing rights, and licensing in joint development projects. For more details and contact information, select the about the author link. To take the products to market, they must enter licensing agreements with the owner of the preexisting software or technology. Data measurement and matching agreements with leading providers of data services, including nielsen, comscore, adobe, and equifax. These questions must be answered whether the party is the licensor the one who owns the ip and gives the license or the licens ee the one who wants to use the ip and wishes to receive the license. Structuring technology licensing agreements cle webinar. Software development, licensing and services technology. Jennah michalik is a software asset management specialist with experience structuring and negotiating software and technology agreements.

The conditions under which this team will be available to the licensee should be included in. Structuring software and technology reseller and distributor agreements, strafford webinar, september. We prepare agreements in intellectual property transactions, including technology transfers. Royalty revenue is dependent on the selling ability of the party integrating the licensed technology, and the size of the addressable market for the endproduct. Ip can be transferred or licensed, offered to enter into cooperation. Legal issues in consulting, licensing, subcontracting and software development by robert a. We negotiate and prepare technologyrelated contracts and assist clients with. Structuring software and technology and development. We are experienced in technology licensing and structuring collaborative relationships among companies, universities and government research organizations. This chapter provides a road map for licensing professionals to identify the most common terms, contractual obligations, and other provisions that are likely to be encountered in crafting a license agreement. Cloud computing agreements, software licenses, and other it contracts, for lawyers and businesspeople, 2nd ed. Successful technology licensing ip assets management series. One response to issues to consider when structuring medical device development and license agreements counselling.

Technology licensing and development agreements authored by cynthia cannady. This checklist is designed to help those new to software development agreements ensure that they have considered the principal issues that a typical agreement should cover. Licensing basics for technology and life sciences companies. We also help you navigate emerging technologies and platforms, from social media to. Companies or individual inventors often use or adapt existing technologies to create new products. To take the products to market, they must enter licensing agreements with the owner of the preexisting software or technology licensing and development agreements should include key provisions such as ownership, indemnification, liability, and payment structure. Entrepreneur says that, of the possible ways to market a product. Software development, licensing and services technology porter. Legal issues in consulting, licensing, subcontracting and. Structuring software and technology licensing and development agreements drafting key provisions to allocate risk, avoid common pitfalls, and minimize liability. Technology licensing and development agreements are increasingly important to businesses in both the united states and abroad, in industries including computer hardware and software, nanotech, biotech, medical devices, pharmaceuticals, bioinformatics, energy, and environmental technology. The proper development and exploitation of the technology often depends on the availability of the proprietor and the licensors technical team to provide support and assistance to the licensee. Successful technology licensing preparation for technology licensing negotiation begins with the parties asking themselves a series of questions. Employment agreements and workplace policieshandbooks.