Licensing, Pooling & Other Transactions

A software license is a legal instrument (usually by way of contract law, with or without printed material) governing the use or redistribution of software. Under United States copyright law all software is copyright protected, in source code as also object code form. The only exception is software in the public domain. A typical software license grants the licensee, typically an end-user, permission to use one or more copies of software in ways where such a use would otherwise potentially constitute copyright infringement of the software owner’s exclusive rights under copyright law.

In patent law, a patent pool is a consortium of at least two companies agreeing to cross-license patents relating to a particular technology. The creation of a patent pool can save patentees and licensees time and money, and, in case of blocking patents, it may also be the only reasonable method for making the invention available to the public.[1] Competition law issues are usually important when a large consortium is formed.

Leveraging patents, trade secrets, or portions of an IP portfolio can often generate revenue streams, open new markets, or shut down competitors.  Innovations in computer hardware, software, and biotechnology often build on a number of other innovations owned by a diverse set of owners and as a result “patent thicket” problems – overlapping patent claims that preclude the adoption of new technologies – can be severe.

We have helped clients set up and run licensing programs that have generated significant revenue streams, and we have worked with clients to pool patents and deal with standards issues.  We can analyze the potential for generating royalty income from existing IP rights, then formulate and execute licensing programs to help you realize full revenue potential.

We advise on everything in a transaction program ranging from the initial confidential evaluation agreement through management of the portfolio of executed IP agreements.  As business relationships evolve, we assist in enforcing or amending obligations in those agreements. Our legal and technical experience and our background in the business of exploiting technology and IP assets bring our clients a strategic advantage.