DPA Law Group drafts and assists clients with contracts related to the development, ownership, acquisition, implementation, integration, protection, use, licensing, marketing and sale of technology and intellectual property (IP).
Our experience covers nearly all forms of technology and proprietary rights:
- Techniques for exploiting Internet technology
- Software
- Semiconductors
- Business methods
- Hardware
Our services range from implementing an overall licensing strategy to focused support on specific contract issues such as warranties, indemnities, disclaimers of damages, limitations of liability, enforceability, ownership of intellectual property, source code escrow and export restrictions.
Examples:
Critical Inbound Employee, Consulting and Development Agreements – We advise startup and emerging companies and provide all appropriate forms of contracts to secure company ownership, or, as applicable, appropriate usage rights, in and to the design, development, production and protection of key intellectual property – including information protected solely as trade secrets. Such inbound contracts include:
- Non-disclosure agreements
- Individual work-for-hire consulting and development agreements
- Entity work-for hire consulting and development agreements
- Independent contractor invention assignment proprietary rights agreements
- Employee and founder invention assignment proprietary rights agreements
- Founder pre-existing IP assignment agreements
Strategic IP transactions: We represent clients in the design and documentation of national and global cross-border and domestic joint ventures, strategic alliances, collaborations, research and development and other teaming arrangements.
IP Commercialization: We counsel clients on protecting, developing and monetizing their IP assets. We also help clients enter and succeed in domestic and foreign markets through value-added resale (VAR), original equipment manufacturing (OEM), distribution, licensing, and other commercial arrangements.
IP Users - We represent clients in the acquisition or in-licensing of technology, data or tools, as well as with their out-bound licensing transactions and customer and end-user agreements.
Startup Guidance: Address IP Agreements From Day One
Startups intending to achieve funding or an exit transaction in U.S. markets are advised to adopt and consistently apply from day one a suite of agreements that secure its IP ownership and rights. Neglecting to do so can result in diligence problems when the time arrives to prove to an interested investor or acquirer that the company actually owns the IP it is says it owns.
Founders of a thinly capitalized startup frequently rely upon a network of moonlighting friends, acquaintances and freelance developers (service providers) to design, develop or contribute aspects of that which the founders consider to be company intellectual property. This is true for initial design work for Internet technology, social networking, software and hardware startups as well as the early development work to implement that which is designed.
We know from our experience working with technology startups that sometimes, founding entrepreneurs do not know or ignore that which absolutely needs to be documented by written contracts with company service providers if the startup (not the service provider) is to end up the lawful owner of the design, software, methods or hardware to which a given service provided contributed. Such unawareness can result in the entrepreneur self-organizing his or her company online to defer the relatively modest cost of forming a relationship with experienced startup company counsel.
This circumstance tends to arise more often with a first time (as opposed to serial) entrepreneur, and with certain entrepreneurs who are inbound to Silicon Valley from offshore. There can be a related lack of understanding as to what needs to be documented and practiced in order to protect core information as proprietary trade secrets so that persons working with the company cannot lawfully take such information with them when they leave – particularly in California which generally does not permit employee non-compete agreements.
Because the interim goal of most startups is to attract sophisticated investment capital, including seed capital, from third party professional investors and venture capitalists, a decision to defer engaging startup counsel can result in material and, on occasion, insurmountable issues when the startup must to prove in due diligence that it actually owns, or holds all appropriate license rights to, its claimed IP. Generally, if the founder(s) remain on good terms with all service providers who contributed to the IP (including former co-founders, if any), any apparent defects to IP ownership and rights can be corrected through assignments – if, perhaps, at a price. But where a relationship with a key contributor has soured and severed, or, worse, that former contributor is using the IP at issue as his or her own, the failure to adopt and consistently apply company agreements securing the company's IP rights can terminate a given U.S. based funding or acquisition transaction.
Contact us to learn more about our firm, our contracts and intellectual property services, and how we might be able to help you. You can reach Andrew (Drew) Piunti or Delphine Guerre by phone at 888-915-5520 or via e-mail.
