1. Key Intellectual Property Issues in
Today’s Outsourcing Transactions
William A. Tanenbaum
Chair, Technology, Intellectual Property & Outsourcing
Group, and
Chair, GreenTech and Sustainability Group
Kaye Scholer LLP
New York and Palo Alto Offices

2. Different IP Rights Apply Simultaneously
• Different IP rights apply simultaneously to licensed subject
matter
• Patent
• Copyright
• Trade Secret
• Trademark and Service Mark
• National not international in scope
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3. Problem No. 1: Work Made for Hire
• Limitations of the Work Made for Hire Rule
• Why getting an assignment is often best
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4. Problem No. 2: IP Indemnities
• Provider’s right to terminate in event of IP claim can be a
bridge too far
• When provider will ask the customer to provide an indemnity
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5. Problem No. 4: Joint Ownership
• Collaborate improvements
• Unexpected license by one co-owner to competitor of the
other co-owner
• Difference between patent inventorship and copyright
authorship
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6. Problem No. 5: Covenants Not to Sue
• When they are needed
• How to document them
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7. Problem No. 6: Scope of License Grants
• If there are multiple providers, which provider needs a license
from another to provide services to the common customer?
• Avoid territorial limitations to allow use at DR site and/or by
another entity
• Advantages of contractual definition of “Use”
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8. Problem No. 7: Software Escrow
• Do you need software escrow?
• If so, what goes in escrow?
– Programmer’s names and contact info
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9. Questions and Answers
William A. Tanenbaum
Chair, Technology, Intellectual Property & Outsourcing Group
Chair, GreenTech and Sustainability Group
Kaye Scholer LLP, New York and Palo Alto
wtanenbaum@kayescholer.com
212-836-7661
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10. William A. Tanenbaum
wtanenbaum@kayescholer.com
• William A. Tanenbaum is the international chair of Kaye Scholer’s Technology,
Intellectual Property & Outsourcing Group and its GreenTech and Sustainability
Group and works in the firm’s New York and Palo Alto offices. Chambers found
that he “built one of New York City’s most outstanding transactional IT practices,”
that he is a “well-respected attorney, with a well-informed approach [who] provides
litigation, transaction work and strategic counseling on a range of technology
issues,” that he is “efficient, solution-driven and makes excellent judgment calls,”
and that he is an “internationally recognized intellectual property, technology and
outsourcing lawyer”. He is recognized as a “Leading Individual” and was awarded
“Recommended” ratings in both “Technology and IT Outsourcing” and “Business
Process Outsourcing,” and named as a “Notable Practitioner” at the national level
in Outsourcing. He was voted one of the world’s top 250 IP strategists (IAM client
survey) and he was selected as one of the country’s top 25 pre-eminent IT
practitioners in the Best of the Best USA. He regularly advises clients on strategic
intellectual property concerns, privacy, data security, data transfer, information life
cycle management and competitive intelligence matters, in both transactional and
litigation contexts.
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11. William A. Tanenbaum (cont’d)
• Mr. Tanenbaum is the founder and co-chair of PLI’s annual Outsourcing
Conference, the founder and chair of its Green Technology conference,
and a regular lecturer at industry outsourcing conferences. He chairs Kaye
Scholer’s GreenTech breakfast seminar series and presents a webcasts
on IT, IP and GreenTech topics. He has contributed to Bloomberg’s
Energy Sustainability Law Report. He is a past President of the
International Technology Law Association (formerly the Computer Law
Association) and is listed in Who’s Who in America, the International
Who’s Who of Business Lawyers, the Guide to the World’s Leading
Litigation Experts and the Guide to the World’s Leading Patent Law
Experts. He is the privacy and data protection columnist for the New York
Law Journal, co-author of a book on privacy law and has been quoted in
The Economist magazine as an expert on IP law. His articles have been
used at Harvard and other law schools. He graduated from Brown
University (degree with highest honors and Phi Beta Kappa) and Cornell
Law School.
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12. Chicago . Frankfurt . London . Los Angeles . New York . Palo Alto . Shanghai . Washington DC . West Palm Beach
Copyright ©2011 by Kaye Scholer LLP. All Rights Reserved. This publication is intended as a general guide only. It does not
contain a general legal analysis or constitute an opinion of Kaye Scholer LLP or any member of the firm on legal issues described.
It is recommended that readers not rely on this general guide in structuring individual transactions but that professional advice be
sought in connection with individual transactions. References herein to “Kaye Scholer LLP & Affiliates,” “Kaye Scholer,” “Kaye
Scholer LLP,” “the firm” and terms of similar import refer to Kaye Scholer LLP and its affiliates operating in various jurisdictions.