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Lawyer Walter Wright IP Licensing Practices For Early Stage Companies Traps For The Unwary

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Information about Lawyer Walter Wright IP Licensing Practices For Early Stage Companies...

Published on December 29, 2008

Author: wwright3

Source: slideshare.net

Description

Lawyer Walter Wright presentation on intellectual property licensing issues for emerging technology companies
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Business Practices and Legal Issues: Good IP Practices for Early Stage Companies Traps for the Unwary in License Agreements: a Laundry List ofGotchas for Early Stage Companies Delivered Before the M assachusetts Internet and Software Council on September 17, 2003 Walt Wright, Managing Director Trinity Law Group LLCwww.trinitylg.com 200 Lowder Brook Drive – Westwood, MA 02090781.329.0088

Emerging Companies: The Vital Role of Software Licenses Operations Product Development RevenueWalter Wright, Managing Director, Rich May Law

Emerging Companies As a Licensor As a LicenseeWalter Wright, Attorney -Trinity Law Group LLC www.trinitylg.com

Know your rights, risks, responsibilities and opportunities. Walter Wright, Attorney -Trinity Law Group LLC www.trinitylg.com

Keep Your Goals In Focus Acknowledge Your RisksFocus On The OpportunityMake Practical AssessmentsWalter Wright, Attorney -Trinity Law Group LLC www.trinitylg.com

Software Asset Management SAM is an emerging disciplineManaging the Asset is Managing the Relationships As a User As a Reseller/Bundler As a Developer Walter Wright, Attorney -Trinity Law Group LLC www.trinitylg.com

Licensing AgreementsClick Wrap & Shrink Wrap Negotiated Walter Wright, Attorney -Trinity Law Group LLC www.trinitylg.com

Licensing Agreements MOUsAlliance Agreements & Joint Ventures Co-Marketing Agreements Joint Development Agreements Walter Wright, Attorney -Trinity Law Group LLC www.trinitylg.com

due diligence scope & specifications The payment optionsLaundr warranties & covenants proprietary rights y List service levels and maintenance assignment breach and remedies Walter Wright, Attorney -Trinity Law Group LLC www.trinitylg.com

What Bad Can Happen? Walter Wright, Attorney -Trinity Law Group LLC www.trinitylg.com

What Good Can Happen? Walter Wright, Attorney -Trinity Law Group LLC www.trinitylg.com

Zeal Obscuring Reality Walter Wright, Attorney -Trinity Law Group LLC www.trinitylg.com

Due Diligence For legal & business protection ask and answer the right questions: Does the other party to a licensing agreement have the reputation, financial strength and future potential to make the license worthwhile? Does the other party have the rights it is claiming to transfer?Are all rights being transferred that are needed to fulfill the purpose of the deal ? Walter Wright, Attorney -Trinity Law Group LLC www.trinitylg.com

Scope & Specifications Walter Wright, Attorney -Trinity Law Group LLC www.trinitylg.com

The specification is the precise description of what is covered by the license. It should beinclusive of all necessary elements to achieve thepurpose of the assignment, but should not be too broad. Walter Wright, Attorney -Trinity Law Group LLC www.trinitylg.com

The Scope Of LicenseMost critical element of the license agreement.What the licensee may and may not do with theintellectual property.Limitations include exclusivity, geography, industrysector, market, duration of the license, renewal, and rightsto make improvements or modifications. Walter Wright, Managing Director, Rich May Law

Proprietary RightsWalter Wright, Attorney -Trinity Law Group LLC www.trinitylg.com

Software Escrow AgreementsWalter Wright, Attorney -Trinity Law Group LLC www.trinitylg.com

Payment OptionsWalter Wright, Attorney -Trinity Law Group LLC www.trinitylg.com

Payment can take many forms: cash, installment payments,promissory notes, equity payable as a single issuance or ininstallments, and/or royalties.Are royalty payments going to be based on unit sales,percent of gross revenue, or percent of profit?Will there be minimum royalties paid? Sliding-scale royaltypayments?Royalty licenses could make a product too expensive to becompetitive. Walter Wright, Attorney -Trinity Law Group LLC www.trinitylg.com

Warranties & Covenantsincluding representations, indemnification and disclaimers Walter Wright, Attorney -Trinity Law Group LLC www.trinitylg.com

Disclaimer of Warranties Walter Wright, Attorney -Trinity Law Group LLC www.trinitylg.com

AcceptanceWalter Wright, Attorney -Trinity Law Group LLC www.trinitylg.com

Service Levels And MaintenanceWalter Wright, Attorney -Trinity Law Group LLC www.trinitylg.com

Confidentiality and Trade Secrets Walter Wright, Attorney -Trinity Law Group LLC www.trinitylg.com

Limitation of Damages Walter Wright, Attorney -Trinity Law Group LLC www.trinitylg.com

Money in the Maintenance Money Found. Money Lost. Walter Wright, Attorney -Trinity Law Group LLC www.trinitylg.com

Dispute ResolutionWalter Wright, Attorney -Trinity Law Group LLC www.trinitylg.com

InternationalPiracyLimited copyright protectionNo patent protectionCurrency & TaxesUnited Nations Convention on Contracts for theInternational Sale of GoodsCultureEnforcement Walter Wright, Attorney -Trinity Law Group LLC www.trinitylg.com

Wright’s Postulate:“Opportunity to be generousand the right to be ruthless” Walter Wright, Attorney -Trinity Law Group LLC www.trinitylg.com

Document clearly and use a lawyer. @!#%&$ Express your goals and expectations--and create plans and benchmarks. Protect yourself. Your intellectual propertyand proprietary information and operational autonomy need protection. Walter Wright, Attorney -Trinity Law Group LLC www.trinitylg.com

The Hybrid:Software/Data/Business Model/License/Transfer/Alliance Walter Wright, Attorney -Trinity Law Group LLC www.trinitylg.com

Counsel to CapitalistsA greater Boston law firm serving companies, investors and entrepreneurs throughout theUnited States and the EU. For over 55 years combined, clients have turned to Trinity LawGroup lawyers for sophisticated legal and strategic counsel in a variety of complex transactions,business disputes and other legal matters Its complex and diverse practice embraces emergingand high growth businesses, venture capital, securities, licensing, mergers & acquisitions,contracts, technology, business services, e-commerce, intellectual property, and sustainableenergy.Trinity Law Group’s law and strategic counseling practice intensely focuses on theorganizational, venture financing, operational and transactional requirements of entrepreneurs,emerging technology and information companies as well as representing venture capital fundsand angel groups in investment transactions and executives in transition. Walter Wright, Attorney -Trinity Law Group LLC www.trinitylg.com

About Walter WrightWalter Wright, a Founder of Trinity Law Group, was named by Massachusetts SuperLawyers in Boston magazine as one of the top 100 attorneys in Massachusetts. Ofthe Top 100, he is one of only 3 lawyers selected in the Business/Corporate category.He is named in the Corporate Counsel edition of Super Lawyers as one of the “TopAttorneys in Corporate and Securities Law” across the United States. Walt Wrightserves in significant and vital capacities including lead general counsel, specialcounsel and strategic advisor. He recently celebrated his 25th year of practice. Walter Wright, Attorney -Trinity Law Group LLC www.trinitylg.com

Walter A. Wright, III Trinity Law Group LLC 781.329.0088 Email wwright@trinitylg.com Fax 781.459.2683 skype wwrightiii www.trinitylg.com.com www.trinitylg.com/waw.html200 Lowder Brook Drive Westwood, MA 02110

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