Services We Perform

Most small to medium sized technology companies are faced with multiple challenges:  obtaining funding, getting their technologies developed, taking care of legal formalities, managing employees and consultants, protecting IP with registrations and filing, and getting to market are foremost. Similar problems are encountered by research institutions and governments, and we provide the following services to meet their needs as well.   Our services address these challenges directly:

1. Agreements: Often negotiation of technology related agreements can take longer than expected.  Technology ventures are often engaged in contract negotiations with potential partners, suppliers, employees, and customers.  We help our clients avoid risks that can have long-term consequences, all the while staying positive and proactive to get the deal done. We draft and negotiate a wide range of technology agreements, including:

  • technology license, patent license
  • software license
  • research and development collaboration
  • confidentiality (non-disclosure)
  • employee and consultant
  • OEM (original equipment manufacture)
  • strategic alliance
  • joint venture
  • distribution
  • manufacturing
  • academic technology transfer

Our approach is proactive:  We help our clients prepare for negotiation by defining terms and conditions and assessing relative bargaining power based on IP assets of both parties.  We develop a strategy to get the best deal.  We create a negotiation schedule to help stalled negotiations get on track.

2. Finding partners. We identify and contact partners for development collaborations, especially international partners who seek joint development, patent licenses, and joint ventures in key new energy and environmental technologies.   Joint development funds combined with consulting fees and licensing fees can provide a timely infusion of income for small companies that are in the “valley of death”.   In addition, foreign partners can help companies expand into new markets.  Because of our international experience, we can call upon an extensive international network of lawyers and business contacts.

3. IP Strategy.  We advise on IP and licensing strategy including IP audit, how to build a patent portfolio, using trademarks, service marks and certification marks in branding, how to package software and other copyright works for licensing,  how to protect IP in foreign countries, valuation of IP,  and patent search for competitive analysis.

4. Basic legal start up.  We work with new companies to set up basic legal and IP functions including employee and consultant contracts, non-disclosure agreements, operating agreements, invention disclosure forms, trade secret measures, etc.   Upon request we train employees on how to use these basic forms in negotiation and when to seek legal help.  We assist with corporate entity formation for start ups, or outsource such work to get the most efficient price and best quality.

5. External General Counsel.  For start up companies we will serve as “general counsel” for your company, until you get big enough to hire in-house legal personnel.    Because of our varied experience and backgrounds, we can meet your in house legal needs ourselves or help find other lawyers with the best combination of expertise and efficiency.

6. Avoiding and resolving disputes. We advise on and help resolve employee and contractor disputes related to trade secrets and other IP issues.   In California, we represent your company in arbitration, mediations and litigations relating to contract disputes and IP.