General Intellectual Property and Technology Counseling and Transactional

In addition to the firm’s core intellectual property law practice, our attorneys regularly collaborate with the firm’s Business Law and Corporate/Transaction Team, as well as the firm’s Cyber-Security Practice Committee, to assist and counsel our business and technology clients to develop and implement strategic guidance and protocols that allow them to put their business’s intellectual property and technology to work by maximizing return on investment, while minimizing risk and maintaining optimum protection.

Each client is different and so is each client’s legal representation needs.  While different businesses may face common legal challenges, the nature of a client’s business, its competitive market and its business model for growth must be examined to fashion a coherent legal strategy that addresses the specific issues that confront the business.  A software company that migrates from an enterprise product based model to a cloud service platform, for example, will necessarily face novel legal issues attendant with the changes in its business operations.  While a licensing oriented arrangement may have previously been the preferred vehicle for implementing the client’s business model, under a service based platform, the client’s contractual infrastructure must be modified to address the different legal issues arising under a cloud service platform.  Our attorneys understand the changing markets faced by our clients, the legal hurdles presented by those changes, and the need by our business clients to quickly adapt to maintain a competitive edge.

Our clients’ general intellectual property and technology counseling needs vary greatly.  Working in close collaboration with our clients, our attorneys identify those specific needs and provide a wide range of services that include the following:

Trade Secret Protection and Enforcement

  • Trade secret guidance and counseling
  • Confidentiality agreements, non-disclosure agreements, social media use agreements, employee/contractor agreements
  • Compliance/enforcement of trade secret rights under federal Defense of Trade Secrets Act of 2016

Due Diligence

  • Due diligence investigations related to licensing, acquisitions and other technology-related transactions

Clearance Opinions

  • Clearance opinions for trademarks, service marks and brand devices
  • Clearance opinions (novelty/patentability, non-infringement, freedom to operate) for new products, devices, compositions, designs, structures, systems and methods
  • Legal opinions directed to issued patents – validity, enforceability, infringement, non-infringement


  • Negotiating and drafting in-licensing, out-licensing and cross-licensing agreements for intellectual property, technology and related know-how, including consulting agreements related thereto
  • Software development, consulting and licensing agreements; enterprise-level master service agreements
  • Cloud/web based service agreements – master service agreements, service level agreements, platform service agreements, migration/integration service agreements, data security agreements, privacy agreements, terms and conditions of use agreements, hosting services agreements
  • Consulting agreements
  • Collaboration agreements, purchase agreements, and development agreements
  • Source code escrow agreements

Computer, Internet and Related Technology

  • Computer contract preparation, negotiation and review
  • FTC compliance counseling
  • Website development and hosting agreements, terms and conditions use, privacy policy statements
  • E-commerce, electronic contracting and electronic signatures
  • Internet advertising activities and co-branding agreements
  • Outsourcing arrangements and agreements with information technology consultants
  • Internet and e-mail privacy and security
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