Technology Transactions and Data Protection

We advise clients on all aspects of technology transactions and IP licensing, including IP-driven joint ventures, R&D collaborations, and strategic alliances. Our experience includes structuring and negotiating business transactions involving significant intellectual property aspects for both the largest public companies in the world and small private enterprises.

We draft and negotiate substantial software license and development agreements, representing both licensors and licensees. We also understand issues associated with open source and “free” software, and help clients build compliance programs to avoid unwanted surprises with their software.

Additional aspects of our licensing practice includes cross-licensing and joint development agreements in diverse fields, including chemistry, metallurgy, semiconductors, beverages, marketing and advertising, electromechanical systems, computer hardware, and software.

Our lawyers have worked with issues related to the Internet since the early 1990s, and they understand the speed at which Internet-enabled businesses change and evolve. Whether it is the negotiation of a simple website hosting agreement, research of complex issues related to cross-jurisdictional protection of personal information, or anything in between, our lawyers know how to provide advice in an efficient manner.

We also have extensive experience with cloud computing and Software as a Service (SaaS) agreements on both the provider and customer sides. We provide advice that balances the cost benefits with the potential risks, and help our clients make informed decisions and create practical policies with respect to cloud computing usage.

We understand e-merging commerce, i.e., how evolving laws relating to technology and information apply and how our clients, whether they be licensors, licensees, or buyers or sellers, may protect their opportunities and respond to the transformative nature of doing all or part of their business electronically.

At the same time, we continue to offer ready access to lawyers in traditional substantive legal areas and industry groups; we view "E-merging Commerce" law as an overlay to traditional laws and industry practices. It is the intersection of that overlay with traditional laws and practices that is new, but it is still necessary to deal with lawyers who understand the base. The combination of the base and the overlay is the stuff of modern commerce and the K&L Gates E-merging Commerce practice.

Partner Holly K. Towle is the author of the two-volume reference work, The Law of Electronic Commercial Transactions. Authoring and updating this book requires a drawing together of numerous disciplines. This helps us to stay on the cutting edge and spot connections and new defenses and legal trends.

We have increased our focus on a less-developed phase of due diligence, what we call “Non-Intellectual Property/Electronic” due diligence (E-DD). Although intellectual property issues remain relevant, in E-DD the focus is on information that tends not to have direct intellectual property protection (such as data) and on issues arising from doing business electronically such that computer information exists or is collected, held, used, or discarded. Numerous new laws create a need for E-DD because they can have as much, or more, influence on acquired (or lost) value or rights than the subjects of traditional or intellectual property due diligence. Our lawyers are experienced in helping clients conduct due diligence and IP audits and also help them develop and apply E-DD concepts.

We advise clients on many federal, international, and local intellectual property tax issues. We advise clients with respect to the tax implications of licensing, distribution, and related agreements; online services provider agreements; mergers and acquisitions of companies owning significant intellectual property; and the organization of start-ups and joint ventures. We understand and help shape the emerging tax issues that arise concerning intellectual property, telecommunications, electronic commerce, and related areas.

A technology company considering potential participation in a standards organization—whether as a promoter, a member, or adopter of a resulting specification—must analyze the plethora of business and legal ramifications of such participation. Such analysis is increasingly warranted whether the standards organization is based upon "openly shared" intellectual property rights or upon intellectual property rights that require licensing between members and adopters.

Our lawyers assist in the initial analysis that any technology company should undertake in evaluating whether participation in a particular standards organization conforms to the company's business plans and goals.

Our team has experience preparing the intellectual property rights policies (IPR Policy) of many cutting-edge standards organizations and counseling clients concerning the legal ramifications of joining, and continuing their participation in, standards organizations that have already adopted an IPR Policy. Our lawyers also assist companies with other issues associated with participation in a standards organization, including tax issues, the impact of the structure of the standards organization's board of directors and working groups, other corporate governance issues, the processes for certifying products that are compliant with the specification, and counseling regarding unfair competition issues.

We offer clients a wide variety of legislative and administrative solutions to the opportunities and challenges presented by technology and an evolving knowledge economy. Lawyers throughout the firm are engaged at numerous levels with state, national, and international legislative and administrative initiatives to deal with the information economy, including initiatives regarding e-contracting, e-signatures, privacy, e-commerce, and intellectual property proposals, as well as initiatives to revise "smokestack" laws to work for "smart goods," licensing, and other examples of the existing and future economy. The firm assists clients with national and international standards-setting organizations for high technology and helps those clients balance their competitive and cooperative interests. The "rules" created by these standards-setting bodies can more directly and immediately affect clients than any legislation or administrative rule.