Intellectual Property Protection, Licensing & Technology Transfers

 Innovation is a key element of the business strategy of many of our clients, and the protection of the intellectual property and trade secret rights that flow from such innovation is a primary concern of our clients.  From our many years of experience we have gained a keen knowledge of how to address these concerns.

We are frequently called on to protect our clients’ intellectual property and trade secrets by negotiating and drafting Confidentiality, Non-Disclosure (NDA) and Assignment of Inventions Agreeement and Co-Development Agreements.  We recommend that our clients get accustom to requiring all of their employees and contractors to execute NDAs and Assignment of Invention Agreements before the commencement of services.

Many of our clients are software developers and copyright protection for their code is their highest priority.  Although the Copyright Act of 1976 will generally protect the employer’s copyright in work performed by its employees within the scope of their employment (the “work-for-hire doctrine”), the work-for-hire doctrine generally will not protect the company’s copyright interest in work performed by non-employees (i.e., independent contractors).

It is for this reason that we strongly recommend to our software clients that engage independent contractors to enter into a contract that clearly assigns to our client any and all right that the independent contractor may claim to any code, design, etc.  This contract could be included as a provision to an Independent Contractor Agreement or entered into under a separate Assignment of Rights Agreement.  Regardless of which form of contract, it is of the utmost importance that it be entered into prior to the independent contractor commencing any work on the project.

Licensing is another significant tool to protect intellectual property. It is also a way to build partnerships with other innovative companies.

We help companies structure, negotiate, and document their license agreements. Our experience includes licensing in the following industries: software, game development, life sciences and material sciences.  We handle both in-bound and out-bound licensing transactions and transactions between enterprises (B2B), distributors, consumers and software-as-a-service (SaaS).

Licensing is also a major component of the technology transfer process. Our location in Eugene, Oregon, a major university town, has given us the opportunity to represent a number of technology transfer companies working with local Universities. We understand the unique challenges these types of companies are likely to encounter, including the initial spin-out of technology to a new company pursuant to a technology transfer license agreement with the institutional owner of the IP. We assist companies with the negotiation of this critical contract and ongoing operational matters as their businesses develop.