This document discusses key intellectual property issues that arise in outsourcing transactions. It identifies seven main problems: 1) determining ownership of work created under work made for hire agreements; 2) negotiating appropriate intellectual property indemnities; 3) managing joint ownership of collaboratively improved works; 4) documenting necessary covenants not to sue; 5) defining the proper scope of license grants; 6) determining what information should be placed into software escrow agreements; and 7) answering questions about these intellectual property issues. The document was created by William Tanenbaum, an international chair of Kaye Scholer LLP's Technology, Intellectual Property & Outsourcing Group.
Startup Legal & IP (July2013 Founder Institute)Touraj Parang
Startup Legal Issues Facing Founders. From pre-formation, to incorporation, to IP strategy. What to expect to pay in legal fees and how to save money. Tips on hiring lawyers for your business effectively and efficiently. Technologies mentioned: Markify, http://upcounsel.com,
Injunctive Relief for Standard Essential Patents by Michael ShimokajiSHIMOKAJI IP
In Realtek v. LSI, the district court for the Northern District of California addressed “whether a holder of patents essential to an industry [*2] standard ("standard-essential patents") may commence an action before the U.S. International Trade Commission ("ITC") pursuant to Section 337 of the Tariff Act of 1930 ("Section 337 action") seeking an exclusion order and injunctive relief against a party practicing that standard without violating its obligation to license the standard-essential patents on reasonable and non-discriminatory ("RAND") terms.” For more information, contact info@shimokaji.com
Startup Legal & IP (July2013 Founder Institute)Touraj Parang
Startup Legal Issues Facing Founders. From pre-formation, to incorporation, to IP strategy. What to expect to pay in legal fees and how to save money. Tips on hiring lawyers for your business effectively and efficiently. Technologies mentioned: Markify, http://upcounsel.com,
Injunctive Relief for Standard Essential Patents by Michael ShimokajiSHIMOKAJI IP
In Realtek v. LSI, the district court for the Northern District of California addressed “whether a holder of patents essential to an industry [*2] standard ("standard-essential patents") may commence an action before the U.S. International Trade Commission ("ITC") pursuant to Section 337 of the Tariff Act of 1930 ("Section 337 action") seeking an exclusion order and injunctive relief against a party practicing that standard without violating its obligation to license the standard-essential patents on reasonable and non-discriminatory ("RAND") terms.” For more information, contact info@shimokaji.com
Commercializing legal AI research: lessons learnedAnna Ronkainen
Presentation about research commercialization (general points and some examples), held 2016-05-19 at the CodeX Legal Innovation Workshop in connection with the FutureLaw conference at Stanford University.
From Research to Innovative Legal Tech ProductsAnna Ronkainen
Keynote presentation about legal tech and innovation held 2016-05-26 at the Legal Technology Conference organized by University of Tartu and the Estonian chapter of Legal Hackers.
These are slides from my presentation at the Law Firm Leaders Forum in New York, Nov. 6-7, 2014. Part I covers Substantive Hints of Change: Innovative Technology Popping Up and Part II covers Legal Design: Structured Innovation Process and Focus on Client/User Needs.
Data Loss Prevention (DLP) is often the number one concern for most organizations. With the growth of mobile devices and cloud storage, most network perimeters look more like swiss cheese than brick walls.
See Full Webinar: http://www.gti1.com/webinars/?commid=64955
This presentation by the Charley Moore, Founder and CEO, Rocket Lawyer, was made during a roundtable discussion on Disruptive innovations in legal services held at the 61st meeting of the Working Party No. 2 on Competition and Regulation on 13 June 2014. More papers, presentations and contributions from delegations on the topic can be found out at www.oecd.org/daf/competition/disruptive-innovations-in-legal-services.htm
In the field of LAW like LLB, LLM students get good career option for their future. Law graduates can also work in the field media industry through news broadcasting, reporting,journal or book writing. Great option for the student's future growth.
Commercializing legal AI research: lessons learnedAnna Ronkainen
Presentation about research commercialization (general points and some examples), held 2016-05-19 at the CodeX Legal Innovation Workshop in connection with the FutureLaw conference at Stanford University.
From Research to Innovative Legal Tech ProductsAnna Ronkainen
Keynote presentation about legal tech and innovation held 2016-05-26 at the Legal Technology Conference organized by University of Tartu and the Estonian chapter of Legal Hackers.
These are slides from my presentation at the Law Firm Leaders Forum in New York, Nov. 6-7, 2014. Part I covers Substantive Hints of Change: Innovative Technology Popping Up and Part II covers Legal Design: Structured Innovation Process and Focus on Client/User Needs.
Data Loss Prevention (DLP) is often the number one concern for most organizations. With the growth of mobile devices and cloud storage, most network perimeters look more like swiss cheese than brick walls.
See Full Webinar: http://www.gti1.com/webinars/?commid=64955
This presentation by the Charley Moore, Founder and CEO, Rocket Lawyer, was made during a roundtable discussion on Disruptive innovations in legal services held at the 61st meeting of the Working Party No. 2 on Competition and Regulation on 13 June 2014. More papers, presentations and contributions from delegations on the topic can be found out at www.oecd.org/daf/competition/disruptive-innovations-in-legal-services.htm
In the field of LAW like LLB, LLM students get good career option for their future. Law graduates can also work in the field media industry through news broadcasting, reporting,journal or book writing. Great option for the student's future growth.
Slide about the FLOSS movement and a little reference to the Creative Commons project.
Everything created for the webvalley students 2011 - http://webvalley.fbk.eu
IP and Licensing Strategy for Open Source CompaniesMark Radcliffe
This presentation from the Open Source Business Conference in 2008 discusses the issues for open source companeis in coordinating your intellectual property strategy with your business strategy.
Chief Data Officer Agenda Webinar: How CDOs Should Work with LawyersDATAVERSITY
Legal risks, rights and obligations are among the most important emerging issues in enterprise data management today, and yet are not well understood, especially considering most CDOs come to the role with a business or IT background, rather than legal training. Bill Tanenbaum is one of the leading technology and intellectual property attorneys in the country, and is joining us on this edition of the CDO Agenda to provide a legal perspective on the issues that organizations should be dealing with today, from the standpoint of data management policy. Among the topics he will address are:
Security and Data Breaches
Data Vulnerability in Contracts
The CDO’s Role in ITS Contracts
Privacy is Contextual
Data Ownership vs License rights
Data as Intellectual Property
Data Sharing
Is Data an Asset?
How Long Should you Keep Data?
Learning to Thrive as a Tech-Savvy Lawyer by Nehal MadhaniNehal Madhani
Nehal Madhani, attorney and now CEO of Alt Legal, discusses technologies that lawyers can use to make their practices simpler, more efficient, and more profitable.
The rise of entrepreneurs and internet publishing has also lead to growth in intellectual property (IP) needs. From copyright and trademarks to patents, IP law is a hot area as the economy grows. However, whether you're looking to create a new practice group or just integrate a few new cases, IP is not just an area of law to tackle on your own. IP is its own practice area that requires specialized knowledge. Get a jump on including IP law in your practice by attending this webinar.
Join Clio's Joshua Lenon and Nehal Madhani of the Alt Legal, provider of docketing and assembly tools for IP law firms, as they discuss:
What is involved in running an IP law practice,
What are the ethical obligations of IP law,
Tools required by IP lawyers, and
Talking with clients about their IP needs.
Intellectual Property Considerations in M&A TransactionsRiveles Wahab LLP
M&A transactions often live or die on the basis of well thought out and executed legal due diligence. Indeed, due diligence often shapes core deal terms, transaction structure, and whether the deal itself even moves forward. For traditional businesses with physical assets, due diligence may come with reasonably obvious do’s and don’ts. However, in M&A deals where intellectual property (“IP”) is the key or sole asset, due diligence becomes even more critical yet far less obvious in terms of best practices.
In such deals, often unique and powerful transaction structure and drafting considerations come into play that are unfortunately overlooked as practitioners often make unwarranted assumptions regarding IP ownership and/or curing defects. Moreover, there are often misconceptions about the applicability of ordinary representations, warranties, and other M&A provisions to IP as a “one-size-fits-all” solution to the often unique array of defects and other “wrinkles” attached to the IP. In these cases, valuing and structuring the transaction can be adversely affected, the post transaction operations of the target business can be compromised, and the rights of both purchaser and seller can be significantly undermined.
This course, presented by Kaiser Wahab, partner in the law firm of Riveles Wahab LLP, which is dedicated to M&A transactions in the private equity space for IP driven early-stage/mature companies, is designed to arm the practitioner with the vocabulary, skill set, and overall understanding of best practices in IP driven M&A transactions.
David WITH Goliath: How Big Companies Do Deals with Small Cloud and Social Me...William Tanenbaum
Conventional deal structures do not always work when big companies engage small cloud and social media companies as part of marketing and digital business. To go live you need to go smart. Legal documents need to enable, not delay. Due diligence is important: Are you picking a winner or a loser? Would you invest in this company? Is security backed in or will you be subject to a privacy breach and a reputational hit? Are the investors in it for the long haul or are they taking a flier?
What to know if it is your first rodeo in patent monetization?Dipanjan "DJ" Nag
What to know if it is your first rodeo in patent monetization
The top two monetization deals from universities have received more revenues than the combined revenues of technology transfer for all universities reporting to AUTM. Yet, patent monetization is often seen in a negative light. Corporate licensing relies heavily on patent monetization and a company like IBM produces close to two billion dollars in annual revenues year after year. There are certain nuances of patent monetization that a university should adopt, which can be regarded as ethical licensing. The cornerstone of ethical licensing is to ensure patents utilized in a monetization campaign are of the highest quality and that the university takes every precaution to preserve its reputation. If it is the first time that a university is considering patent monetization, certain best practices from the corporate side before launching a campaign. This panel of highly experienced patent monetization experts will discuss the financials, due diligence, public perceptions, and legal implications of carrying out a highly successful patent monetization program.
Do I Have a Patent I Can Sell? by Michael Shimokaji www.shimokaji.comSHIMOKAJI IP
Whether a large company owning thousands of patents, or an individual owning a single patent, the question inevitably arises – do I have a patent (or patent portfolio) that can be sold?
The factors to consider include:
• Issued patent
• Evidence of use
• High technology
• Potential large company buyers
Social Business =Cloud + Big Data + Social Media + Mobile ComputingWilliam Tanenbaum
Cloud Computing is an inflection point, and is the technology that enable Big Data and predictive analytics. In combination with Big Data, Social Media and Mobile Computing, it constitutes how mainstream business use Cloud
I\'m Not an IT Lawyer: Why Does Open Source Matter to Me?Jennifer O'Neill
The line between intellectual property lawyers and general practitioners was once a clear one. IP lawyers filed patent applications, registered trademarks, and counseled their clients on whether reprinting an article was “fair use” of a copyrighted work. Generalists negotiated contracts, prosecuted and defended litigation, and drafted corporate filings.
In the current economy, a generalist may not be able to consult an IP specialist. And the pervasive quality of technology means that IP issues are present in many transactions, particularly with respect to the use and licensing of software.
You don’t have to be a programmer to help your client address these concerns. But inevitably, you will need to understand the concept of open source.
Matt Blaine, Dennis Garcia, Ann Gorr, & Donald Knight - #InfoGov17 - Navigati...ARMA International
Those folks who are already deeply entrenched in the Information Governance realm recognize the importance that IG plays in defining and supporting the continued success of our organizations. However, the Corporate Legal Department (CLD) / Office of the General Counsel (OGC) is often viewed as an island unto itself within the overarching Corporation/Enterprise. With its unique requirements, the CLD/OGC teams routinely encounter roadblocks when attempting to acquire the IG Tools that they require to support their internal legal operations, interact with the business units which they advise, and collaborate with external parties, and yet, navigate the processes to meet the IG Goals developed by the Enterprise IT Team.
During this session, we will be exploring key strategies that can be adopted/embraced in your quest to bring about an Information Governance roadmap to the Office of the General Counsel / Corporate Legal Department that will place your organization on the road to IG excellence.
Join our seasoned legal technology panelists and subject matter experts including Matt Blaine, Esq. (Davison, Eastman, Muñoz, Lederman & Paone, P.A.), Dennis Garcia, Esq. (Microsoft Corporate, External & Legal Affairs (CELA)), Ann Gorr (Legal Technology Consultant @ Ann Gorr, LLC), and Don Knight (PNC Bank, Legal Department) as they discuss key areas of focus and IG approaches to assist those who design, deploy, and support technology projects within the CLD/OGC environment.
Date Use Rules in Different Business Scenarios:It's All Contextual William Tanenbaum
All privacy is contextual. Like that, the legal rules for collecting, aggregating, sharing and protecting data, including through IP, are specific to the context. One size does not fit all.
Date Use Rules in Different Business Scenarios: It's All Contextual William Tanenbaum
Arent Fox LLP. Rules for data collection, aggregation, sharing, use and protection all depend on the business and legal context. One size does not fit all.
Date Use Rules in Different Business Scenarios: It's All Contextual William Tanenbaum
Arent Fox LLP. Collecting, sharing, aggregating and using data in different business models and scenarios are subject to different rules and depend on the specific context
Green Outsourcing, Energy Efficient Data Centers and Sustainable Supply Chain...
Key Intellectual Property Issues In Todays Outsourcing William A Tanenbaum Sourcing Interests Group Conference
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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Not cover patentsNot necessary cover independent contractorsForeign scope can be is different Do you need to fight over ownership of custom improvements?
When indemnity without representation and warranty is OKDifferent monetary caps for regular breaches and IP infringementExclusions of combinations
Joint ownership Business man’s solution; seems fair, but not workable What happens to your trade secrets? Why single ownership and licenses can be better
Tie to cloudIntegrate with other licensed software