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Intellectual Property Law

Licensing

The firm's attorneys are experienced with joint technology development and technology license agreements. We have negotiated, documented and litigated such key license provisions as those relating to royalty calculations; field of use restrictions; technology escrows; patent and antitrust limitations; preservation of trade secrets; development and cross-licensing of derivative works; and warranties, infringement indemnification, and development milestones.

The firm's attorneys have significant experience with trademark licensing.

Attorneys in the firm also have experience working with clients on conforming with mandatory licensing requirements of standards setting bodies. The firm's experience includes:

  • Representing a multinational semiconductor manufacturing client in obtaining rights to use proprietary information of potential customer.

  • Representing semiconductor companies in joint development agreements with third parties for new products

  • Representing retail clients entering into e-commerce contracts that include provisions for trademark licensing and sharing of confidential customer information.

  • Representing software companies in developing distribution and end-user licenses.

  • Representing a multinational software company in developing a foreign language localization license.

  • Advising a client regarding mandatory licensing requirements in the event its proprietary technology is adopted by the IEEE standards setting committee as an industry standard.

 

 

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