Technology & IP Licensing

We help technology companies of all sizes — from large, publicly traded international companies to early-stage companies and startups — create and maintain value and advantage through the development, commercialization, licensing and protection of intellectual property around the world. We represent a wide range of industries and technology verticals including:

• Software, E-commerce, Telecommunications
• Medical Devices, Biotechnology, Pharmaceuticals
• Publishing, New Media, Interactive Gaming
• Clean Tech and Energy
• Universities and Hospitals

Clients often choose us as an alternative to large downtown firms as we provide the experience and quality they seek, coupled with a higher level of responsiveness and senior partner attention on a day-to-day basis.

Licensing of Patents and Other IP

We have extensive experience crafting and negotiating agreements that involve the development, licensing and distribution of technology and intellectual property in ways that enable both sides to manage such concerns as IP ownership, liability allocation and termination rights and procedures.

Copyright and Content Licensing

Whether the subject is protecting a software program, publishing an electronic or paperback book, or counseling on fair use or infringement, our attorneys are well versed in the intricacies of copyright and regularly draft and negotiate license and publishing contracts, review assignment and work-for-hire arrangements, audit websites, and assist in registering copyrights.

Licensing and Transfer of Trademarks and Domain Names

We have substantial experience advising clients on selecting and protecting their brand names and marks, as well as guiding them on proper use, licenses and assignments, use as collateral in financing transactions, and negotiating or bringing suit to recover a stolen mark of infringing domain.

Software Development and License Agreements

With lawyers who worked in-house at software companies, and chaired the Legal Issues Series of the (former) Massachusetts Software Council, we have special expertise in working with software companies, including in preparing B2B licenses, EULAs and other intercompany arrangements.

Representative licensing deals:

• We advised a developer of medical imaging technology in a complex cross-license and co-development agreement with a major European manufacturer.
• We have represented several producers of financial software in license transactions with major banks and insurance companies.
• We advised the developer and publisher of an online motorsport simulation service for real-world racers and racing enthusiasts in a license with NASCAR.
• We developed the license, service and SaaS forms used by a developer of newspaper and periodical back office systems to distribute its products and services.
• We represented a leading, global, specialty biopharmaceutical company with the structuring and negotiation of a license agreement with an international drug developer.
• We advised a developer of micro-encapsulation technology in structuring its license deals for various consumer applications.
• We assisted a developer of voice chat software in negotiating multiple license and co-development contracts for virtual worlds and massively multiplayer online video games.

For more information, or to discuss your particular licensing or intercompany arrangements, please contact Howard Zaharoff.