We have worked with both venture start-ups and international clients involved in a range of areas including technology acquisition, technology hardware and software development, marketing, licensing and distribution, entertainment, and research & development ventures.

As technology lawyers, we also advise companies and organizations outside of the IT sector, who are working with technology companies, negotiating and closing deals ranging from custom technology development ventures to complex services, licensing, and integration projects.

Our involvement with clients starts at the ground level, understanding the value of what is being developed or acquired, setting up appropriate confidentiality protocols, working with structuring investments, and establishing and confirming ownership rights in both pre-existing and post-development intellectual property assets. We also work with clients to determine a suitable methodology for research, development, testing, acceptance efforts, and licensing where required.

While there may be overlapping intellectual property law principles available to protect the same innovation, the practical and legal protection available requires some insight and planning. Copyright and trade secret protection of computer source code does not inhibit someone else from independently developing software with similar functionality. Is applying for a patent the right choice in all circumstances when by the time the patent issues the technology may be obsolete, or the protection afforded by the patent is such that legal circumvention is not that difficult to those experienced in the art?

As licensing lawyers, knowing the different characteristics of intellectual property rights, we can help you develop an effective licensing strategy. Technology owners and licensees also have to appreciate the differences between the intellectual property, the assets in question, and the agreements which grant various rights relating to the assets and the related intellectual property rights.

Many licensing agreements combine the licensing of multiple intellectual property rights and assets in a single agreement.

The considerations for patent and trade secret licenses tend to be complex. Royalties should be allocated directly to each specific type of intellectual property being licensed. For example, you cannot validly charge a royalty on a patent after it has expired, however a royalty in exchange for disclosure of a trade secret may be maintained.

Other opportunities exist for copyright, trademark, and trade secret licensing where copyright and trademark statutory protections will provide distinct rights and remedies in addition to the contractual rights and remedies in relation to the license of a trade secret.