IP Licensing
K&L Gates' Licensing and E-merging Commerce group advises clients on all aspects of IP asset protection, ownership/assignment issues, IP licensing, and IP-driven joint ventures, R&D collaborations, and strategic alliances. We work with a range of clients—from Fortune 500 companies to major academic institutions to tiny start-ups—to structure and negotiate business transactions that have significant intellectual property aspects. We also routinely address patent licensing issues as part of our technology transfer practice. Our lawyers have extensive experience helping clients with patent licensing issues, including:
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Establishing patent/technology licensing programs
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Industry-sponsored academic research
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Cooperative research agreements with federal agencies
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Material transfer agreements
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Biopharmaceutical research and development alliances (pre-clinical and clinical)
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Contract research and manufacturing agreements
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Strategic coordination of multiple licensing partnerships
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Co-development, co-marketing, and co-promotion arrangements
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FDA regulatory issues
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License versus covenant-not-to-sue issues
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License grant backs, sublicensing rights, anti-foundry provisions
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Compliance with technical standards
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Open source issues
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Coverage of affiliates
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Patent marking, certification and logo programs
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Royalty and payment issues
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Limited or perpetual term consideration
Working with our interdisciplinary Life Sciences Practice Group our team handles licensing of research, development, commercialization, and marketing rights in pharmaceuticals, biologics, and devices, from the earliest stages of pre-clinical research to post-NDA Phase IV trials. The regulatory knowledge of our FDA Practice Group underpins these transactions, as does the experience brought by our Venture Capital and Private Equity Group to the equity investments frequently accompanying these deals. Our life science clients include a number of the world’s largest pharmaceutical companies and a roster of some of the most renowned academic and research institutions, as well as small- and mid-cap biotechnology and medical device companies.
In the information technology and telecommunications sectors, our team has experience assisting clients with all aspects of agreement negotiation, including program design, initial document creation, publicity, licensing target portfolio diligence, technical support for infringement proof packages and program/agreement administration. We work closely with in-house teams to seamlessly manage the patent license process and help achieve our client’s business goals. Current information technology clients of the Licensing and E-merging Commerce Group include Amazon.com, T-Mobile and Microsoft.
Additional aspects of our licensing practice range from character and trademark licensing for television stars to cross-licensing and joint development agreements in diverse fields, including chemistry, metallurgy, semiconductors, beverages, marketing and advertising, electromechanical systems, computer hardware and software.
In licensing activities, our lawyers strive to integrate intellectual property protection and business objectives. For example, if the intellectual property protection and licensing during the development cycle of a product is based on trade secret protection, then the license agreement must be crafted to provide the maximum trade secret protection. When a patent is issued for that same technology (and trade secret protection is, in many cases, virtually surrendered), the relationship must be transitioned into a patent license. Joint research agreements require careful attention to ownership of any resulting intellectual property. A client’s umbrella strategy involving multiple grants of product development licenses, exclusive as to field or medical indication, to numerous third parties, can create serious legal problems when not designed with careful forethought. When foreign patent rights are involved, consideration of ownership, marketing and licensing rights can be critical. Proper development and maintenance of trademark rights requires sensitivity to control issues; failure to provide for such control can adversely affect the value of a trademark, and proper protection can enhance it. By considering the various implications of merchandising and licensing activities, our lawyers fashion agreements that develop and enhance a client’s intellectual property rights.
We regularly handle the drafting and negotiation of substantial software license and development agreements, representing both licensors and licensees. Our intellectual property practice also encompasses the transfer of intellectual property assets, ranging from sales and assignments of patents, design rights, trademarks, trade secrets and/or copyrights to business acquisitions and mergers. In structuring and negotiating domestic U.S. and U.K. and international business transactions, intellectual property issues often have a large, if sometimes unappreciated, significance. The key agreements must reflect an understanding of the value of the intellectual property assets and related legal issues, including the perfection and maintenance of intellectual property assets and an assessment of any litigation or infringement claims.
E-merging Commerce Practice
One focus of our Licensing and E-merging Commerce practice is E-merging Commerce, i.e., how these laws 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.
K&L Gates' Spectrum Approach to E-merging Commerce
A picture is worth a thousand words, so we have developed an electronics-in-commerce wheel to illustrate the spectrum approach we provide for clients doing any part of their business electronically. Click on the wheel to learn more.
What makes us different? Look at the electronics-in-commerce wheel. Most law firms have traditionally practiced, and continue to do so, in the "Traditional Commercial Law" area. Two additional areas, "Information Laws" and "Intellectual Property Laws," have been a mainstay of a few firms such as those representing the motion picture industry. However, in our modern economy those previously isolated areas are increasingly an integral part of traditional transactions and business. Further, there are three new areas impacting this legal picture: the new laws and concepts in the "Electronics Laws" area and in the "Internet Laws" area; and the significant impact of global laws affecting business done in global media such as the Internet.
K&L Gates is unique for two reasons over and above the quality of its attorneys:
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We practice in all of these and additional areas.
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We have long represented technology clients. This allows us to envision or be on the cutting edge and to better craft, maneuver and apply the wheel.
There is much uncertainty in our modern economy. We believe our experience and ability to predict issues before others allows us to provide more valuable assistance to clients. We do this in transactions, business forms, policies and procedures, and litigation — whether that litigation be defensive or offensive.
Our E-merging Commerce Practice — Generally
K&L Gates has long represented some of the world's leading technology companies. Many of our clients were pioneers in and remain at the forefront of business done electronically. This history and continuing advantage of working with technology companies has encouraged us to adopt our "spectrum" approach to understanding and working more effectively with pertinent laws and business practices.
At the same time, we continue to offer ready access to attorneys in traditional substantive legal areas and industry groups - we view our "E-merging Commerce" wheel 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 attorneys 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.
To illustrate, the E-merging Commerce group advises on:
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Consumer protection laws, including unfair acts and practices and product distribution and warranties
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Online access arrangements, software and content licensing, and technology transfers
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Online terms of use and attribution of electronic acts
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Payment mechanisms, including credit cards, ACH, stored value, payroll and gift cards, electronic check conversions and other ACH transactions and the like
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Privacy of personal information, data protection, identity theft, internal and external privacy policies, and impacts of using a "consumer report" such as a background check
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Security of information systems internal and external information security policies, and preparing for and responding to information security breachese and identity theft
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U.S. and international tax and export/import obligations for online commerce
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Uniform Commercial Code for sales of goods, including proposed revisions and application (or lack thereof) of the UCC to software and other information
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Contract law for software and other information and U.S. government contracts (e.g., licenses, click-wraps, browse-wraps, shrink-wraps and copyright management information)
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Federal and state e-contracting laws, including "E-SIGN", UETA and UCITA
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E-records, e-evidence, and e-commerce laws, including computer usage policies and new laws impacting programming
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State and federal information laws, including liability of information providers and online defamation
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Data protection, Internet "trespasses," laws regarding unauthorized access to computer systems and spyware, malware and the like
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Federal and state laws regarding unsolicited emails (both standard and mobile service messages for wireless devices) and protection of systems against spam
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Trademarks and domain names - creation, protection and management
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Intellectual property rights identification, protection, management and due diligence
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Financing (including of software), tax and securities work
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Federal and state financial institutions laws, including US PATRIOTS Act, Bank Secrecy Act, and Gramm Leach Bliley obligations of businesses deemed to be "financial institutions"
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Joint ventures, acquisitions, mergers, and other business combinations
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Federal and state requirements for regulated activities such as "money service businesses" and issuers of stored value cards and the like
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National and international industry-wide software and data standards development
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Federal and state anti-kickback and self-referral restrictions
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Telecommunications "backbone" contracts for online networks and VOIP and BPL issues, and telecommunication privacy rules, pretexting and so on; and
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Electrical power contracts, defense of industrial users in rate hearings, electronics waste laws
We Wrote the Book
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 invite you to go to the URL and click on the link to the work’s Table of Contents in order to see the range of issues which we track and utilize for our clients.
We also provide newsletters to clients desiring to learn more about existing or new issues regarding E-merging Commerce. CCH, publisher of The Guide to Computer Law, republishes these newsletters in its “Practitioner’s Perspective” column.
Industry Sectors
K&L Gates views the spectrum of E-merging Commerce like an overlay: before any part of business is conducted electronically, the overlay of laws impacting electronic activities should be applied and traditional legal analysis adjusted - it is no longer sufficient simply to comply with traditional rules. The areas of law and transactions needing this overlay are as endless and varied as law itself, and application is not a rote process. While standard issues can be discussed, standard solutions seldom work.
Here's a simple example of this new situation. For years many contracts or laws required particular acts to be documented in "writing" or "signed." Under today's e-laws, that "writing" can be an email or even a recorded conversation, as can the signature. So if a contract still says it may only be amended in a signed writing, what do the parties actually intend with that wording?
Our E-merging Commerce group works with other groups in the firm focusing on substantive areas such as "real estate" or "securities" or industry sectors. Together, the two groups work to apply a "E-merging Commerce" overlay as appropriate.
Commercial Contracts and Outsourcing Practice
Commercial activities remain the heartbeat of every business enterprise. Businesses live or die depending on their sustained ability to buy, sell and license. From the village marketplace to the global marketplace, from basic consumer needs to electronic commerce and technology transactions, commerce continually evolves in its sophistication and reach. Fueled by human imagination, new commercial activities demand legal services to support them. Outsourcing, off-shoring and on-shoring are some of the most recent indicators of commercial evolution.
Our commercial contracts and outsourcing practice at K&L Gates is built upon the fundamental tenet that our clients’ business success depends upon their ability to buy, sell and license goods, information and services at favorable prices and other terms. These transactions range from stand-alone acquisition contracts to formation of joint ventures and other structures to implement client goals. In our commercial contracts and outsourcing practice we focus on corporate and commercial issues. We also work in tandem with our E-merging Commerce group, which focuses on issues arising from particular technologies, laws peculiar to information, data privacy and security, electronic contracting, and so on. Together, we cover the landscape of traditional and electronic commerce.
Our clients vary in size from emerging growth companies to some of the world’s largest companies. We advise on commercial contracts performed globally and governed by the legal systems of the United States, the United Kingdom, and across the Asia Pacific. We work with companies to develop consistent approaches to addressing commercial risk through good contracting practices appropriate to their business model. We assist businesses in developing an efficient, effective contractual infrastructure for new and existing products. Our commercial contracts lawyers negotiate a wide spectrum of contracts ranging from the routine to the highly complex. With every contract, we seek to balance risk mitigation with economic opportunity.
Within our firm of approximately 1,700 lawyers located in offices throughout the United States, England and the Asia Pacific, we draw on a tailored mix of general commercial practitioners and specialists, including in electronic commerce, to address the individual needs of each business. We respond to our clients’ dynamic commercial endeavors by providing prompt access to specialists in diverse fields of law, such as intellectual property, information, data privacy and security, software and technology licensing, insurance coverage, construction and government contracting, international law, creditors rights, and dispute resolution. The interdisciplinary nature of our practice provides flexibility to the client and allows us to remain price and need sensitive.
We work closely with our clients to understand their businesses and objectives so that we can aggressively pursue and protect their interests. We encourage continuity in the relationship between the commercial contracts lawyer and the client to foster efficiency and understanding of the client’s industry. K&L Gates lawyers have represented clients in virtually all major industrial sectors, including the metals and manufacturing industries, the life sciences sector, and the information technology and financial services industries.
Our commercial contracts lawyers strive to provide efficient, effective services commensurate to the value of the contract. To further those efforts, we devote significant effort to in-house training and knowledge sharing in order to encourage effective practices in our firm and in our field. Our integration of technology and legal practice is cutting-edge. At K&L Gates, we believe it is good business to get to know our clients and to be of assistance not only in large-scale transactions such as mission-critical outsourcing arrangements, strategic alliances, and mergers and acquisitions, but also in the thousands of day-to-day and strategic commercial transactions such as outsourcing and services contracts, purchaser and supplier agreements, consignments, development efforts, management services, licensing arrangements, technology transfers and joint ventures.
We are intensely committed to supporting our client’s commercial activities—the heartbeat of the enterprise.
Examples of how we work with our clients:
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Create modular infrastructures for various technology services providing multiple service options for use by clients for in-house contract administration and conduct related in-house training. These efforts shorten the contracting cycle and encourage good contracting practices.
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Coordinate negotiations of significant technology contracts with in-house counsel from multiple legal areas.
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Build client- and industry-specific technology contracts legal teams, which encourages continuity and efficiencies in services.
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Provide analysis of historical contract risk management and recommendations for improvement. Clients receive a market sense of appropriate and “best practices” risk management legal protections.
Representative transactions:
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Represented e-sourcing service providers, e-sourcing companies, and e- sourcing bidders in numerous transactions.
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Negotiated integrated supply management agreements incorporating technology licensing between a major integrated supply manager and large manufacturers.
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Replicated within a few months the entire technology infrastructure of a major manufacturing corporation as part of a significant asset spin-off.
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Negotiated numerous international business process outsourcing contracts within various industries, including the financial services industry.
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Negotiated supply chain agreements on behalf of buyers and sellers of a wide variety of products.
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Represented manufacturers, distributors, and resellers in various national and international distribution arrangements in numerous industries, including information technology, biotechnology, and advanced manufacturing.
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Negotiated compliance, data processing and business processes software licenses for a variety of financial services clients.
IP Audits
K&L Gates assists clients to assess the strength of their intellectual property assets, including copyrights, trademarks, trade secrets and patents, and to identify potential issues regarding those assets. These assessments may be for internal audit purposes or for the purposes of evaluating existing or potential investments in technology companies, or other companies with meaningful intellectual property assets. We analyze whether the company in question owns or has sufficient rights to the intellectual property assets that are essential to its business, and identify any significant risks associated with the company’s use of intellectual property and, where appropriate, its related e-commerce business practices. K&L Gates also assists clients in resolving issues identified through the audit process.
IP Due Diligence — Including Information and Electronic Due Diligence
Sometimes it is vital to determine whether a company owns or has sufficient rights to use intellectual property, such as in a merger or when a company desires to obtain a license for critical IP. K&L Gates lawyers help identify potential issues that might significantly affect the ability of the company, to acquire sufficient rights or to market its products. These issues include: employee and independent contract agreements, nondisclosure agreements, exclusivity arrangements, open source and other license restrictions, standards, IP restrictions, and distribution agreements.
The IP practice group at K&L Gates is also increasing its 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 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. Electronic commerce and our information economy also creates a need to take another look at traditional language to see whether it fits the new economy (e.g., words like “sale” and “property” are out of step in a world of licensing or assets that are not necessarily “property”).
The lawyers in the IP practice group at K&L Gates are experienced in helping clients conduct due diligence and IP audits and also help them develop and apply E-DD concepts.