Technology and Intellectual Property Law
Call us 215-205-0059 or email us fred@wilftek.com

Issues & Matters

Technology Product Life Cycle

Wilftek advises on the lifecycle of technology products and their related legal issues.

life

Raw Idea

Issues: An idea is a good start, but difficult to develop and protect

Area of Law: Trade secret; initial discussion of whether other forms of intellectual property would be helpful

Examples of Documents: Non-disclosure and confidentiality agreements

Company Formation

Issues: Without a company, each individual has unlimited liability and ownership of whatever he or she develops

Area of Law: Corporate law; tax law; securities law; ownership issues in intellectual property law

Examples of Documents: Formation documents (corporation, limited liability company, limited partnership); shareholders agreements and operating agreements; stock option plans and agreements

Development

Issues: Partially-formed technologies and products are attractive to others, but vulnerable to infringement

Areas of Law: Business agreements; licensing; intellectual property protection

Examples of Documents: Development and consulting agreements; joint venture agreements; technology licensing; prosecution of intellectual property applications (patent, trademark, copyright, mask work)

Licensing or selling underlying technology or products

Issues: Technology may be licensed or sold at any time, including in as part of the development process or to make money (often a good tactic) or for strategic reasons

Area of Law: Business issues; licensing issues; sale of technology and product components; transfer of technology and intellectual property

Examples of Documents: License agreements; asset purchase agreements; stock purchase agreements (acquisition or strategic investment); technology transfer; assignments

Proof of concept and initial testing; refinement and pre-market testing

Issues: Initial implementations and subsequent refined versions need to be evaluated in a confidential environment

Area of Law: Trade secret issues; development issues

Examples of Documents: Alpha test agreements; beta test agreements

Go to Market

Issues: Bringing the product to market is the ultimate test for the product

Area of Law: Business and commercial issues, including warranties; privacy issues

Examples of Documents: Manufacturing agreements; sales or license agreements, including end-user license agreements (EULAs); online agreements and related forms where applicable, including terms of service, privacy policy; and copyright designation of agent

Market Proliferation

Issues: If the product does well in the market, then the legal issues often scale up with sales

Area of Law: Business and commercial issues

Examples of Documents: Warranty claims; litigation, including claims of intellectual property infringement

Development and distribution of new versions; adaptive re-use

Issues: As the technologies and the products mature, newer versions are needed, and older technologies and products may be recycled into newer technologies and products

Area of Law: Business issues; licensing issues, including warranties; privacy issues; sales or license agreements; online agreements and related forms where applicable

Examples of Documents: Development and consulting agreements; joint venture agreements; technology licensing; prosecution of intellectual property applications (patent, trademark, copyright, mask work)

Investment, merger or acquisition of company or technology

Issues: If the company or the technology has any success, then growing the company by adding investors or merging with another company can be attractive

Area of Law: Securities law; corporate law; business and contract law; intellectual property law

Examples of Documents: Option agreements; warrants; asset purchase agreements; stock purchase agreements; assignments

Accessibility of Websites, Apps and other Telecommunications Technologies

Laws and regulations at both the Federal and State levels require that many businesses that deal directly with consumers make reasonable accommodations to address physical and other handicaps and challenges. A number of businesses have been sued for failing to make their websites, apps and other telecommunications technologies accessible. We address the legal issues in analyzing and remediating websites and other communications channels.

Corporate and Partnership Matters

Professional and Consulting Services Engagements: Buy- and sell-side support for negotiating professional services, management consulting, software support and maintenance, and systems implementation and integrator transactions.
Client and Mobile Software Application Development: Consideration of copyright and licensing matters unique to software development agreements including employee rights, moral rights, source code management, open source software issues, and ongoing support, service and maintenance requirements.
Software-as-a-Service Engagements (SaaS, Managed Services): Management of legal issues unique to cloud-based Application Service Provider (ASP) and SaaS engagements including encryption, privacy, security, service levels, availability, disaster recovery, business continuity, recovery and migration; support for ongoing service and support agreements; management of shared or leveraged services arrangements as well as high-end dedicated environment transactions.
Business Process Outsourcing and Information Technology Outsourcing (BPO/ITO): Buy- and sell-side support for negotiating outsourced services transactions; identification and management of related legal issues, including intellectual property rights, human resources, labor and employment and employee benefits matters, and audit and tax issues. Buy-side preparation of requests for proposals, documentation of internal procedures and requirements, and vendor selection and due diligence. Management of regulatory and operational issues unique to outsourced services transactions including management of offshore locations, OFAC, FCPA and WARNAct compliance, and required securities filings. Ongoing support for managing relationshipgovernance and service level agreement (SLA) obligations.
Procurement and Supply Chain Management Support: Complete support for enterprise strategic sourcing, procurement or supply chain management groups from template drafting and management through ongoing training and buy-side contract negotiation.
Software Licensing: Support for inbound and outbound (buy- and sell-side) software licensing arrangements from custom-developed software to commerciallyavailable “off the shelf” enterprise software packages; review and negotiation of support, maintenance and software assurance agreements.
Equipment Finance, Purchase and Leasing: Consideration of tax and accounting consequences of lease-versus-purchase decisions; review and negotiation of financing, acquisition and leasing agreements and related documentation.

Technology and Commercial Transactions

Professional and Consulting Services Engagements: Buy- and sell-side support for negotiating professional services, management consulting, software support and maintenance, and systems implementation and integrator transactions.

Client and Mobile Software Application Development: Consideration of copyright and licensing matters unique to software development agreements including employee rights, moral rights, source code management, open source software issues, and ongoing support, service and maintenance requirements.

Software-as-a-Service Engagements (SaaS, Managed Services): Management of legal issues unique to cloud-based Application Service Provider (ASP) and SaaS engagements including encryption, privacy, security, service levels, availability, disaster recovery, business continuity, recovery and migration; support for ongoing service and support agreements; management of shared or leveraged services arrangements as well as high-end dedicated environment transactions.

Business Process Outsourcing and Information Technology Outsourcing (BPO/ITO): Buy- and sell-side support for negotiating outsourced services transactions; identification and management of related legal issues, including intellectual property rights, human resources, labor and employment and employee benefits matters, and audit and tax issues. Buy-side preparation of requests for proposals, documentation of internal procedures and requirements, and vendor selection and due diligence. Management of regulatory and operational issues unique to outsourced services transactions including management of offshore locations, OFAC, FCPA and WARNAct compliance, and required securities filings. Ongoing support for managing relationshipgovernance and service level agreement (SLA) obligations.

Procurement and Supply Chain Management Support: Complete support for enterprise strategic sourcing, procurement or supply chain management groups from template drafting and management through ongoing training and buy-side contract negotiation.

Software Licensing: Support for inbound and outbound (buy- and sell-side) software licensing arrangements from custom-developed software to commercially available “off the shelf” enterprise software packages; review and negotiation of support, maintenance and software assurance agreements.

Equipment Finance, Purchase and Leasing: Consideration of tax and accounting consequences of lease-versus-purchase decisions; review and negotiation of financing, acquisition and leasing agreements and related documentation.

Business Litigation and Counseling

Antitrust and Unfair Competition: Defense of corporations and other business organizations in antitrust cases involving individual and class action claims concerning unfair competition conspiracies, price fixing, market allocation, exclusive dealing and monopolization.

Contract Disputes: Assessment and counseling related to business contract disputes, including product development, distribution and other commercial agreements, and management of all phases of any actual or threatened litigation, from discovery and pre-trial motions to settlement negotiations, trial and appeal.

Business Torts and Tortious Interference: Representation and defense against business tort claims, including interference with business dealings or contractual relations, fraudulent misrepresentation and interference with prospective business advantage.

Confidentiality Agreements: Implementation of confidentiality agreements and related processes to protect against misappropriation, infringement or leakage of company trade secrets and other proprietary and/or confidential information, and management of any related disputes and litigation.

Corporate Compliance and Internal Investigations: Advice on corporate compliance issues, including codes of conduct and anti-bribery policies, and counseling boards of directors and companies in connection with internal investigations of alleged corporate wrongdoing.

Derivative Lawsuits and Class Actions: Defense of companies in shareholder derivative lawsuits and class action litigation, including allegations of securities fraud, consumer fraud and antitrust conspiracies.

Employment Disputes: Management of employment disputes involving confidentiality agreements, non-competition agreements, and claims of wrongful termination and discrimination.

Financial Fraud and False Claims: Defense of companies, officers, directors and principals in securities fraud, false claims and conspiracy to defraud lawsuits.

Liability Mitigation: Advice on litigation mitigation, risk management and liability prevention issues.

Non-Competition Agreements: Protection of employer interests including human resources, competitive market position, and intellectual property assets, and management of any related disputes and litigation.

Professional Malpractice and Breach of Fiduciary Duty: Representation and defense of organizations and individuals against claims of professional malpractice, breach of fiduciary duty and breach of the standard of care.

Trade Secrets: Management of disputes involving alleged misappropriation of trade secrets and advice on implementing trade secret programs and processes to protect against misappropriation or leakage of company trade secrets.

Construction and Other Personal Injuries: Representation and defense of organizations and individuals in construction and other personal injury litigation.

Wrongful Termination and Discrimination: Management of actual or threatened litigation related to claims of wrongful termination and discrimination.

Real Estate

Real Estate Finance: Review and negotiation of commercial collateralized loan and security agreements.

Purchase and Sale Transactions: Complete negotiation, documentation and management of buy/sell transactions including purchase agreements, selection and management of title insurance providers, side letters, remediation activities, and lease-back arrangements.

Leasing: Review and negotiation of commercial lease arrangements including insurance, tax, repair, remediation, restoration, subleasing and assignment provisions.

Technology: Review and protection of new technology used in the real estate industries; protection, regulation and security of real estate-related data; terms of service and privacy statements for websites, apps and related telecommunications services; accessibility of technology.

 

Employment

Independent Contractor Agreements and Compliance: Management of issues unique to independent contractor (“1099”) engagements including oversight, control, use of assets, tax withholding and benefits liabilities.

Separation and Severance Agreements: WARN Act compliance and management of residual liabilities due to claims of wrongful termination or discrimination.

Restrictive Covenants and Non-Competition Agreements: Protection of employer interests including human resources, competitive market position, and intellectual property.

Confidentiality and Non-Disclosure Agreements: Protection of company trade secrets and other proprietary and/or confidential information from misappropriation, infringement or leakage.

Hiring, Suspension and Termination: End to end support for ongoing human resources operations.

Employment Agreements and Compliance: Documentation of hiring, salary and severance terms; ongoing compliance management through preparation and use of employee handbooks, workplace policies and training.

Intellectual Property

Privacy and Information Security: Support for complying with the rapidly changing legal and regulatory requirements for personal privacy, data protection and secure information exchange, including federal, state, and foreign (European Union, Canada and others) legal and regulatory requirements, and associated contractual obligations.

Media and Arts Management: Support for the unique legal issues arising in the media and arts world including content licensing and sublicensing, digital rights management, and individual and corporate releases, permissions and rights management.

Technology Licensing, Acquisition and Transfer: Negotiation of technology transfer through various purchase and licensing mechanisms with universities, collaborators, customers and competitors.

Infringement Counseling and Dispute Resolution: Management of actual and potential disputes including early identification, risk assessment, and negotiation of mutually beneficial settlements.

Trade Secret Protection Programs: Implementation of strategies and tactics for identifying and protecting non-patentable inventions, pending patent applications as well as other methodologies, protocols, processes and assets that benefit from continued protection from disclosure.

Patent, Trademark and Copyright Licensing: Inbound and outbound licensing of all forms of intellectual property including those in commercial transactions, mergers, acquisitions and negotiated settlements of intellectual property litigation.

Copyright Clearance and Prosecution: Review of external communications for compliance with copyright laws and FTC regulations as well as avoidance of general commercial liability; prosecution to seek protection for original content and works of authorship including textual content and software.

Trademark Search, Clearance and Prosecution: Review of third-party search data, provision of opinion letter and management of prosecution activities including trademark applications, US PTO Office Actions, opposition proceedings, appeals and co-existence settlements.

Invention Disclosure Programs: Proactive approach to identifying, organizing and targeting novel intellectual property conceived or reduced to practice by employees and contractors.

Enterprise IP Strategy: Identification and documentation of intellectual property (IP) assets; consultation and support for executive decision-making regarding intellectual property objectives, strategies and tactics; creation of thoughtful, market-driven strategies taking into consideration competitive landscape and expense allocations;ongoing support of enterprise IP strategy through preparation and use of employee handbooks, workplace policies and training.

Personal Services

Family Asset Protection: Consideration and implementation of strategies, including partnerships and trusts, for protecting assets from creditors while optimizing tax and accounting consequences; protection for licensed professionals unable to use corporate or partnership protections.

Wills, Estate Planning and Wealth Transfer: Management of intestacy and probate matters; consultation and review of estate planning goals and financial assets, and preparation of appropriate estate planning documents, including wills, revocable trusts, powers of attorney, living wills and health care powers of attorney; consideration and management of issues arising from disability and incapacity as well as guardianship of minors.

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