The firm has experience representing clients across a wide variety of industries, both technology focused and non-technology focused, regarding the development, protection, acquisition, commercialization and outsourcing of products, services, ideas and inventions. Having worked with developers, manufacturers and vendors of technology, and with the purchasers and licensees of technology, the firm has the unique perspective necessary to resolve complex contracting issues in a manner that meets both sides’ business needs.
HTLF provides the manufacturers, vendors and customers of technology and intellectual property across a wide variety of industries regarding the development, protection, acquisition, commercialization and outsourcing of products, services, ideas and inventions with the following legal services:
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
What We've Achieved
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.