Representative Corporate Experience
In addition to Litigation, we also have extensive experience counseling clients on protecting, assessing, and monetizing their intellectual assets, including hard and soft IP, as well as proprietary information, in various contexts, such as investments, M&A transactions, technology transfers, franchising, service arrangements. We draft and negotiate numerous agreements and licenses to protect our clients’ interests; preform IP due diligence; assess and manage IP portfolios; and obtain patent, trademark and copyright protections. A list of select representative matters follows: (bold typeface identifies our clients; full list of matters is available upon request).
- Counseling an investment firm in assessing various agreements with potential portfolio companies, including NDA/Confidentiality, non-compete, and non-solicitation.
- Drafting and negotiating various agreements for a successful video streaming company, including NDA/Confidentiality; Professional Services and Consulting; SaaS; Data Privacy and GDPR; IP licenses, and other agreements and policies aimed at protecting the company in its ongoing business operations, as well as in the context of joint ventures, and investment arrangements;
- Counseling high technology startups in the fin-tech industry with respect to protecting their intellectual property.
- Counseling several cosmetics firms in protecting their intellectual assets; drafting and negotiation various agreements; obtaining trademark protections for their products and services.
- Counseled Toys ‘R’ Us Ireland Limited with respect to the IP License associated with creating the first Irish national franchise of Toys ‘R’ Us;
- Various Investment Institutions (various matters) — assessed the patent portfolios of potential investment targets and performed due diligence. Patents related to semiconductor technology, electronic devices for the automotive industry, and others;
- Major U.S. Bank (with prior firm) — Assessed the patent portfolio related to online banking and money management of a potential acquisition target;
- Counseled a Major International Financial Institution accused of infringing the copyrights of an electronic daily newsletter; (with prior firm)
- Counseled Trimble Navigation in various patent matters related to Radio Frequency Identification (RFID), GPS, and land surveying technologies; (with prior firm)
- Reviewed and analyzed substantially all of the licensing and confidentiality agreements of a Major International Electronics Manufacturer interested in acquiring a competitor; (with prior firm).
- Counseled, and assisted in handling the trademark portfolio for, a beverage company, owner of one of the world’s most valuable and recognizable brands; (with prior firm).