Health & Technology Law Firm

Technology evaluation agreements

Technology acquisition and disposition agreements

Technology design and development agreements

Technology licensing and outsourcing agreements

Joint development, collaboration and teaming agreements

Engineering services, including master and project specific agreements

Vendor arrangements, including value-added reselling agreements

Determination of applicability and transferability of technology licenses as part of corporate acquisitions, including securing consents to transfer key technology licenses

Confidentiality and non-disclosure of proprietary information agreements

Agreements for in-bound and out-bound licensing of trademarks, copyrights and patented and non-patented novel technologies

Intellectual property assignment agreements

Intellectual property escrow agreements

Intellectual property due diligence

Counseling regarding trademark and copyright protection and commercialization

Trademark and copyright infringement cease and desist letters

Counseling regarding data privacy

Formulating trade secret protection strategies and programs, including identification of proprietary information and developing document retention policies

Clearance of internal documents for external presentations and publications

Managed a team of attorneys who served as primary technology and intellectual property counsel for a start-up company providing business-to-business services.  Projects included negotiating and drafting numerous agreements with third party vendors for the acquisition of computer software, content, and dedicated internet services, drafting end-user agreements, confidentiality and non-disclosure agreements, and providing general intellectual property counseling.

Coordinated and supervised, for a major utility company, the intellectual property due diligence related to the acquisition (and then subsequent sale) of power plants and related assets worth over $1.5 billion, including managing a team of junior attorneys analyzing the assignability of numerous third party software licenses and services agreements, securing consents to assign such agreements, and negotiating  and drafting several new software license and services agreements with third party vendors.

Multi-year representation of a major nuclear power technology and solutions provider in the design and construction of a revolutionary nuclear power plant in the United States, including a teaming agreement, joint development agreement, master engineering services agreement, project specific engineering services agreement and consortium agreement. 

Secured and protected for a major global utility company all present and future intellectual property rights project designs, reports and analyses necessary and useful as project owner of a non-nuclear power generation facility developed pursuant to a turnkey EPC contract.

Ten-year representation of a major national educational standards-setting organization in all aspects of intellectual property and commercial law, including providing in-house training sessions on copyright and trademark law, counseling with regard to data privacy, copyright enforcement and licensing, trademark and domain name applications and enforcement, drafting and negotiating numerous services agreements, grant agreements and nondisclosure and confidentiality agreements. 

Advised multiple clients in formulating trade secret protection strategies and programs, including identification of proprietary information, formulating document retention policies, and reviewing, drafting and negotiating appropriate confidentiality, nondisclosure and assignment-of-inventions agreements.

Negotiated and drafted numerous interconnection agreements for the United States subsidiary of a major European telecommunications provider. 

Negotiated and drafted numerous research and development and joint venture agreements for a major European technology company in the field of epitaxial wafers.