Protecting Your Intellectual Property in a Technology Transaction Agreement

It's more important now than ever

By Canaan Suitt, J.D. | Last updated on August 17, 2023 Featuring practical insights from contributing attorney Michael D. Oliver

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As the World Intellectual Property Organization (WIPO) explains, data and intangible assets are the bedrock of our digital world. Technology transactions involving data, software services, and cloud computing have become commonplace for companies and institutions across a wide range of industries.

What businesses may not realize is that tech transactions often involve their intellectual property—things such as inventions, proprietary source code, software, formulas, creative works, technical guides, or trademarks.

It’s become more important than ever for companies to ensure that their intangible assets are protected through intellectual property rights—failing to do so may mean unwittingly giving away some of their most valuable and competitive assets.

To meet this growing legal need, technology transactions attorneys bring a unique background in law and technology to help clients protect their IP assets in business transactions. This article introduces how tech transaction attorneys can help your company or startup protect its IP.

What is Intellectual Property?

Unlike buildings, desks, or computers, a company’s intellectual property assets are intangible. They encompass everything from patents for cutting-edge inventions to practical skills and know-how that a company builds up over many years in their industry.

IP is essentially an idea that has been put into some medium or practice, such as a written work, artistic production, formula, or logo.

The four main types of intellectual property rights—patents, copyright protection, trade secrets, and trademarks—give companies legal protection for their inventions, innovations, and creative works.

IP ownership rights enable companies to maintain a competitive edge by preventing other companies from using, replicating, or profiting from their unique ideas.

Many companies are wanting to train their artificial intelligence on various pieces of information, such as authored works or images, which are typically protected by intellectual property rights, and they don’t know what to do about it.

Michael D. Oliver

What are Technology Transactions?

A technology transaction is any business transaction involving technology that is owned by one or more parties to the transaction.

Examples of technology transactions include:

  • Technology transfers;
  • Software license agreements;
  • Software development agreements;
  • Providing software as a service (SaaS);
  • Cloud computing or outsourcing of information technology services;
  • A merger or acquisition of technology companies or specific assets.

What is the Connection Between IP and Tech Transactions?

Each type of transaction mentioned above frequently involves intellectual property. An IP asset such as software or data is what the parties are selling, licensing, outsourcing, or developing.

As a result, when drafting a contract for a technology transaction, it’s critical for the parties to engage in legal due diligence, reviewing their IP assets to ensure they will be protected in the terms of the contract or license agreement.

Intellectual property implications also arise when businesses leverage new technologies to remain competitive and innovative.

“For example, many companies are wanting to train their artificial intelligence on various pieces of information, such as authored works or images, which are typically protected by intellectual property rights, and they don’t know what to do about it,” says Michael Oliver, a technology transactions attorney with Oliver & Grimsley in Towson, Maryland.

How a Tech Transactions Attorney Helps Clients Protect IP

A technology transactions attorney helps clients with a wide range of legal issues and types of agreements, including:

  • Due diligence in a merger & acquisition deal;
  • Drafting or reviewing contracts for the purchase or sale of technology goods or services;
  • Drafting or reviewing license agreements, in which one party (licensor) agrees to let the other party (licensee) use their technology or IP in exchange for payment;
  • Drafting nondisclosure agreements (NDA) or confidentiality agreements, in which the parties agree to keep confidential information that is shared with them, such as intellectual property, secret.

In drafting technology agreements, it’s important that the parties not simply fill in templates. Instead, contracts should be drafted specific to the parties involved and their goals.

This is where legal expertise is essential: an attorney can anticipate legal pitfalls, review documents for precision and accuracy, and ensure all legal concerns are addressed from the start.

While attorneys in the intellectual property and technology transactions space may represent clients in litigation—for example, if the other party to an agreement is in breach of contract—they aim to help clients on the front end to avoid disputes in the future.

Getting contracts or license agreements legally airtight at the start can save a great deal of time and expense further down the road.

Keeping Clients Informed

To help their clients succeed, technology transaction attorneys have to keep up with the constant developments in law and technology. They also share relevant legal developments with their clients.

“In my practice as a tech transactions lawyer, one area that is exceptionally relevant is all Supreme Court cases dealing with fair use, copyright, and First Amendment issues,” says Oliver. “Lower court decisions across a range of jurisdictions are also relevant.”

Along with data privacy, data breach, and cybersecurity issues, “fair use and copyright are big things in the tech transactions area for me currently,” he adds.

Find an Experienced Attorney

If your company is planning to engage in a business transaction involving the sale or licensing of technology, consider consulting an attorney with experience in technology transactions to ensure that your intellectual property is safeguarded in the transaction.

To start your search for a qualified attorney in technology transactions, visit the Super Lawyer’s directory. To learn more about these areas of law, visit our overviews of technology transactions and intellectual property law.

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