Morgan Lewis

Technology Transactions

Our Technology Transactions attorneys aid both public and private companies in structuring, negotiating, and implementing a wide array of technology-based transactions. Our attorneys, many of whom teach intellectual property and licensing at leading law schools in the United States, are recognized for their excellence in technology transactions.

Our attorneys value long-standing relationships with our clients. We work with our clients both during negotiations and afterwards to help facilitate the day-to-day relationships and operations. We work hard to understand our clients and the forces that shape their businesses so that we can operate seamlessly as an extension of their internal teams. By leveraging the skills of seasoned transactional attorneys with deep technology and intellectual property capabilities, we offer our domestic and international clients unique, scalable, and real-time solutions in the following areas:

  • Technology Transfer and Licensing
  • Collaborations, Strategic Alliances, and Joint Ventures
  • Consulting, Development, and Implementation Services
  • Outsourcing and Managed Services
  • Commercial Transactions
  • E-Commerce/Open Source
  • Intellectual Property Protection and Valuation
  • Mergers, Acquisitions, and Venture Capital Investments

Technology Transfer and Licensing

Technology transfer and licensing are an essential part of today's technology-based economy. We regularly represent both licensors and licensees in seeking creative ways to exploit valuable intellectual property rights and to maximize their sources of revenue. We prepare and review a broad spectrum of licensing agreements from traditional patent and software licenses to cutting-edge revenue-sharing agreements for emerging technologies. We assist our clients in licensing all types of technology and intellectual property, including:

  • Patents and Know-how
  • Software, Hardware, and Semiconductor
  • Copyrights and Content (audio, video, graphics)
  • Cross-License Arrangements
  • Trademarks, Service Marks, and Trade Dress
  • University Technology Transfer

Collaborations, Strategic Alliances, and Joint Ventures

Companies regularly collaborate or form domestic and international strategic alliances with synergistic partners to exploit technology-based products and services. These relationships often involve the formation of joint venture entities. When properly designed and implemented, strategic relationships can be a win-win for both parties. If the deal structure is flawed or milestones are misleading, the relationship may falter. Our lawyers are at the forefront of crafting both traditional and more innovative agreements for companies wishing to collaborate or ally themselves with others, including establishing and working with standards setting organizations, implementing new technologies, or expanding into new territories. Whether your relationship is technology- or market-driven, we know what works and what does not work, and we use this knowledge to forge winning deals for our clients.

  • R&D Collaboration Agreements
  • Joint Marketing Agreements
  • Co-Promotion/Co-Marketing Agreements 
  • International Expansion
  • Strategic Alliance Agreements
  • Standards Setting Organizations

Consulting, Development, and Implementation Services

Despite downsizing and lean staffing, continuous product development and quick-to-market commercialization efforts are essential to maintaining a sustainable competitive advantage in today's marketplace. Accordingly, companies increasingly rely on outside authorities to assist them in expediting the evaluation, development, and implementation of new products and commercialization initiatives. We routinely provide our clients with innovative and novel advice regarding third-party consulting, development, and implementation arrangements, including:

  • Research and Development Agreements
  • Invention Assignment Agreements
  • Maintenance and Support Agreements
  • IT Development Agreements
  • Beta and Evaluation Agreements
  • Nondisclosure Agreements

Outsourcing and Managed Services

Morgan Lewis has a long history of structuring and documenting outsourcing and managed-services arrangements for customers across all industry sectors. Our lawyers are involved in the outsourcing of all phases of information technology operations, such as data center operations, client server hosting, and desktop application development and maintenance. We also represent clients in the outsourcing of a wide range of business processes, including human resources, employee benefits, procurement, logistics, document handling, financial services, and property management. Some of the outsourcing and managed-services agreements on which we have worked include:

  • IT Outsourcing and ASP Agreements
  • Clinical Services Agreements
  • Hosting/Co-Location Agreements
  • Logistics and Warehousing Agreements
  • Business Process Outsourcing Agreements
  • HR and Benefits Administration

Commercial Transactions

Perhaps the most common type of commercial transaction-and often the most complex-is the contract for the manufacture, procurement, and/or distribution of goods. We represent clients at all points in the supply and distribution chain, including manufacturers, suppliers, resellers, distributors, agents, financing entities, and end users. Our clients run the gamut from Fortune 500 corporations to fledgling startup entities. We routinely assist clients in connection with:

  • Distribution and Reseller Agreements
  • Supply and Fulfillment Agreements
  • Sales Commission and Referral Agreements
  • Foundry and Manufacturing Agreements
  • OEM and VAR Agreements
  • Equipment Lease Agreements

E-Commerce/Open Source

The explosive growth of two technologies dramatically impacts many of today's business transactions: the Internet and Open Source Software. The electronic sale of products and services and exchange of information are now essential to virtually all businesses. Many innovative Internet business models often involve an element of business and legal risk. We work with our clients to identify and develop creative solutions to avoid or minimize these risks. Open Source Software has evolved from an academic movement to critical IT infrastructure for major governments and corporations throughout the world, and our lawyers have represented licensors and licensees of open source software in this emerging market. Open Source Software issues are steadily gaining importance in merger and acquisition transactions as well. Examples of the agreements and other documentation that we work on include:

  • Online Sales/Service Agreements
  • Open Source License Agreements
  • Click-Wrap/Browse-Wrap License Agreements
  • Software and Open Source Audits
  • Terms of Use and Privacy Policies
  • IP Ownership Agreements

Intellectual Property Protection and Valuation

With increasing value placed on technology assets, more companies are looking to ensure that their intellectual property rights are sufficiently protected. Our lawyers, together with Morgan Lewis's patent, copyright, and trademark lawyers, regularly assist clients in formulating strategies to exploit their intellectual property rights and in establishing auditing procedures to safeguard these rights. To this end, we also review and prepare agreements with employees, consultants, and third-party suppliers to ensure that our clients retain all necessary rights to their technology assets.

Mergers, Acquisitions, and Venture Capital Investments

In addition to assisting our clients in safeguarding their technology assets, we regularly coordinate and document sales and other transfers of these assets and their associated intellectual property rights, whether alone or as part of mergers, acquisitions, venture capital investments, IPOs, or other changes in corporate structure. With extensive deal and technology knowledge, our lawyers quickly identify, evaluate, and classify material technology, intellectual property, and licensing issues that are important in connection with pending sales and other transfers of technology assets and intellectual property rights. In such transactions we provide an integrated solution that results in a smooth transition of the acquired assets, intellectual property rights, and commercial contracts within the existing structure of the acquiring entity. Our lawyers take a practical approach to due diligence, taking into account the type of asset being acquired or transferred, the business of parties involved, the strategic goals of the transaction, and our client's particular concerns and objectives in tailoring our services to the needs of the specific transaction.