Practices: Transactional Intellectual Property

In today’s global economy, ownership of and licenses to patents, trademarks, copyrights, trade secrets and other intellectual property (IP) rank among any company’s most valuable business assets. When fully leveraged, IP can be a major source of profitability; when underused and improperly protected, it can put your competitive position at risk. If you’ve made a major investment of time and money in developing your portfolios of patents and trademarks, or depend significantly on licenses allowing you to use IP of others, you need more than just traditional patent or trademark counsel. Your competitive advantage depends on lawyers who understand the risks and rewards of intellectual asset management — and know how to make them pay off for your company.

Transactional Skill

Growing companies in a wide range of technology applications use our skill as business advisors to help accelerate their market penetration through strategic business combinations and alliances. Our transactional experience includes mergers and acquisitions designed to leverage clients’ IP strengths, as well as licensing agreements that both extend and protect your ownership rights. You get focused guidance right from the start of a transaction, ensuring that all patents, trademarks, copyrights and publicity rights are fully secured even before the deal is structured. That includes carefully drafting the appropriate agreements, fully documenting all the terms of complex ownership and royalty issues and handling the details of domestic and foreign rights protection. We review your licenses to ensure that they comply with applicable laws as well as the licensing guidelines issued by the United States Department of Justice and the Federal Trade Commission. We let you know before you buy IP or assume licenses whether these agreements are enforceable.

Business Combinations

Many business combinations focus on competitive advantage from the acquisition, use or licensing of patents and trademarks, and may require intellectual property experience to deal with such issues as exclusive licensing and monopoly leveraging. In acquisitions, joint ventures or strategic alliances, you can rely on us to handle the due diligence analysis as well as the patent or trademark application issues. The result is that you get clear title and assured security for the rights that you’ve purchased, whether they involve individual patents and trademarks, entire portfolios, or licenses to use the IP of others.

Business Divestitures

The spinoff or divestiture of a business unit is the mirror image of a business combination, and it involves equally challenging IP issues. Often you may find that the intellectual property portfolio of the operation that you wish to sell, or that you want to acquire as a spinoff from another parent, is so integrated into overall business operations that you need to ensure ongoing IP and technology support for a defined period of time after the transaction is completed. We excel at crafting these transition services agreements, and make them part of an integrated service package that includes providing backup technical help and ensuring that all software is properly licensed to the new business entity.

Licensing Agreements

Clients of all kinds — manufacturers, industry and professional associations, software developers, and more — rely on us to handle the entire spectrum of licensing arrangements, from traditional license agreements to complex ventures for joint development of applications and systems. That includes drafting and negotiating complex agreements to obtain, commercialize and license computer-related intellectual property rights, as well as software licensing and distribution agreements, network services and data acquisition agreements. If you wish to structure co-branding and marketing arrangements, or professional services and consulting agreements, we can both maximize your financial return and protect your business interests.

Software Licensing

It’s worth taking a closer look at our software licensing capabilities, because they represent a value-added advantage for any company wanting to complete a customized design agreement or other software development agreement. You need protection from IP-related liabilities, particularly when open-source software is involved. Clients in applications as diverse as health care, higher education, real estate, manufacturing and financial services rely on us to ensure that development agreements for billing, modeling and operational software are properly documented to protect the purchaser from future vendor claims of infringement.

Unique Strengths

Your competitive advantage in using Ungaretti & Harris for IP transactional counsel is our unusual combination of business perspective with technical insight. Members of our team work regularly with patent and trademark prosecution, and have experience in information technology consulting that creates instant credibility with developers and vendors on your behalf. Yet, unlike what you often find at IP boutiques, your business interests are always paramount in all that we do. Here’s what that means in every transaction involving IP:

• Agreements are properly and completely documented.
• Due diligence is thorough.
• The right questions — whether of your CFO or your CIO — get asked and answered before the deal is complete.
• Costs are controlled, due to lean and efficient staffing by a knowledgeable team of partners and associates.

The result is a real-world perspective that gives you the liability protection you need and the transactional flexibility you want.