We bring a breadth of experience through drafting, negotiating, and due diligence for a broad variety of service and tech transactions:

• Licenses of patents, knowhow, software, copyrights, & data rights
  • Inbound 
  • Outbound
  • Cross
• M&A, IP Matters
• Technology (Asset) Acquisitions
• Project Team Agreements
• Joint R&D
• Strategic Alliances
• Joint Ventures
• Joint Industry Projects/Consortia Research/CRADAs
• Consulting 
• Technical Service
  • Lump sum
  • Milestone
  • Time & materials
• Dispute Settlement
  • Mediation Agmt.
  • Arb. Agmt. 
• Confidentiality
  • Receiving
  • Providing
  • Mutual
  • Dispute Resolution
• Revenue Sharing
• Master Agreements
• Support for Standard Setting
• Exceptions to Standard Setting
• Facility Lease
• Release of Invention
• Options
• Sublicense
  • Revenue Sharing
  • W/o duty of accounting
• Software, Con’t.
  • Develop
  • Maintain
  • Escrow

Synopsis of Selected Agreements

• Joint Venture: Reviewed and developed recommendations for Model Project Team Agreement addressing technology transfer and IP rights in major multi-party projects.  Developed and applied strategic analysis tools to focus on IP choices applicable to major, successive joint ventures.  
• Acquisition:  Acquisition of assets in spin-out from diversified defense contractor including patents, software, and knowhow.  Drafted term sheet, negotiated and drafted MOU, and negotiated and the drafted acquisition agreement ultimately executed.  This acquisition agreement was later adopted the model for a substantial spin-out/acquisition between major companies in another sector.
• Cross License of Patents and Knowhow:  Led mediation resulting in a term sheet and then drafted and negotiated settlement of multiple patent disputes through a multi-million dollar cross license clearing the way for a series ofprojects ranging on capital costs from $800 million to over a billion dollars each.
• Patent License:  Royalty bearing out-license in resolution of a dispute involving a patent we enhanced through a broadening reissue.
• Joint R&D:  Multi-party development agreement for exploring the feasibility of a potential game changing technology for eliminating the most common failure mode in infrastructure costing hundreds of millions per installation.
• Software License:  Negotiated and edited agreements to in-license mission critical software for new subsidiary.
• Patent Settlement:  Negotiated license agreement settling multi-year patent dispute and ending arbitration with major competitor.  Financial modeling in decision tree aided client review.
• Copyright, Data License:  Drafted license agreement for incorporating design information into interactive offering facilitating design of certain oilfield infrastructure. 
• Software Distribution Agreement:  Out-license of engineering design software for distribution through government entity working with private contractors.
• Strategic Alliance: Drafted agreement defining several relationships in strategic partnering for emerging chemical analysis technology including joint development, joint marketing, license, consulting, etc.
• R&D Contract:  Drafted and negotiated license and development agreement with R&D arm of major operating company. 
• Patent Cross License:  Drafted and negotiated cross license agreement ending longstanding dispute with major competitor involving acquired product service line.
• Media License:  Copyright transfer/license agreement for media works.
• License: Drafted and negotiated license for technology to be repurposed.  Critical field of use restrictions.
• Software License:  Negotiated and drafted out-license for providing software to university.
• R&D Contract:  Drafted agreement for next stage in development of software and digital consulting product service line.  Substantial involvement in negotiation support.