Technology Transactions

Why Cooley

Our technology transactions lawyers combine the elements of an intellectual property practice with a commercial transactions practice and are trained in best practices in these disciplines, enabling them to meet the demands of a fast-evolving, increasingly global environment. We help companies maximize the value of their strategic relationships and the return on their intellectual property investments, both domestically and internationally. We work with companies of all sizes, at all stages of development, providing strategic guidance in the creation, acquisition, use and commercial exploitation of technology. As one of the only large international law firms with such a sophisticated team dedicated to the software, semiconductor, digital media, e-commerce, electronics, information technology, telecommunications and alternative energy fields, we understand business models and practices in the relevant industries and use our unparalleled legal expertise and business savvy to help clients grow and succeed. Whether our clients are buying, selling, licensing or developing technology-based products or services, we help them attain successful business relationships while protecting their IP assets.

Areas of Practice

Transactional Services

We routinely assist clients with the structuring and negotiation of technology-related commercial transactions, including: 

  • Joint venture and strategic alliance relationships 
  • Inbound and outbound technology licenses 
  • Asset transfers and spin-out licenses 
  • Development agreements 
  • Distribution agreements 
  • Manufacturing and supply agreements 
  • OEM and value-added reseller agreements 
  • Software/SaaS license agreements
  • Hardware supply agreements
  • End-user licenses and other forms
  • Patent licenses 
  • Internet and multimedia license and content agreements 
  • Internet search and syndication agreements 
  • Semiconductor manufacturing, supply and licensing agreements 
  • Hosting and consulting services agreements 
  • Maintenance and support agreements 
  • Privacy and other usage policies and agreements 
  • University licenses 
  • Confidentiality agreements

Strategic Counseling Services

We help our clients establish principles, plans and operating procedures that maximize their ability to acquire, use, protect and commercially exploit their intellectual property assets, routinely assisting them with:

  • Distribution strategies, both domestic and international 
  • Licensing strategies and models 
  • Trade secret counseling and programs 
  • Trademark counseling and programs 
  • Data rights and privacy counseling 
  • Information security 
  • UCITA, UETA and E-sign policy interpretation and compliance 
  • Intellectual property-related antitrust counseling 
  • Export control assistance 
  • Market acceptability analysis of form contracts
  • Marketing and sweepstakes

Open Source

In helping shape the open source software space, Cooley counsels clients on the myriad issues that surround it, including:

  • Warranties
  • IP assurances, infringement and indemnities
  • Pass-through terms and attribution requirements
  • Source code modification compliance
  • Potential viral effects of open source licenses (“copyleft” issues)
  • Quality control
  • M&A issues
  • Outbound legal and technical compliance
  • Support issues
  • Third-party infringement
  • Enforcement

Focus Industries

  • Adtech
  • Big Data
  • Cleantech/ Alternative Energy
  • Complex On-line Communities
  • Computer Hardware and Peripherals
  • Copyright
  • Digital Media/Entertainment
  • Electronics
  • Edtech
  • E-commerce and Internet
  • Financial Services & Fintech
  • Gaming & Development
  • Hardware/Semiconductor
  • Retail & Consumer Products
  • Semiconductors
  • Social Networking
  • Software
  • Telecommunications

Representative Matters

  • Vubiquity, global provider of premium content services, in purchase of Digital End-To-End Business from Warner Brothers
  • Facebook in its purchase of the AOL Patent portfolio from Microsoft for $550 million
  • Flat World Education in its strategic alliance with Brandman University to create a competency based learning offering
  • HBO in its agreement with Major League Advanced Media to power HBO’s over the top streaming offering HBONow
  • Space Systems/Loral (SSL), a leading provider of commercial satellites, in its contract by Skybox Imaging to build an advanced constellation of Low Earth Orbit (LEO) satellites for Earth imaging.  The contract award helps SSL, which is best known for its high-power geostationary communications satellites, to further expand its capabilities building LEO imaging satellites and solutions.  
  • Tillster in a number of licensing and strategic usage agreements that utilize its technology to streamline and enhance online ordering, digital signage and point of sale strategies for such fast food restaurants as Dunkin Brands, Taco Bell, KFC and Burger King.
  • Pure Storage in the patent acquisition and patent license agreements with IBM, where Pure Storage acquired approximately 100 patents from IBM and entered into a cross license with IBM
  • American Automobile Association of Northern California, Nevada, and Utah (AAA-NCNU) in connection with its formal and operational separation from the AAA-NCNU Insurance Exchange, a project involving multiple complex outsourcing and commercial transactions