UB Greensfelder’s software and information technology team represents technology companies and purchasers of technology in a wide variety of areas, including financial institutions, health care providers, software developers, patent holders, and technology start-ups. We understand the complex legal, business, and technology issues that clients face when developing, acquiring, and commercializing technology, as well as the information security and privacy concerns that often surround these relationships.
Who We Are
Our software and technology attorneys have years of experience representing a broad cross-section of industries. We also draw on the knowledge and experience of other attorneys in our Intellectual Property Practice Group in the areas of patent, trademark and copyright prosecution, domain name registration and enforcement, and intellectual property litigation. Our attorneys are seasoned negotiators with experience structuring transactions in various industries.
How We Help
We offer a practical, results-oriented approach to software and technology matters, including the following:
Technology transactions. We regularly provide clients with:
- Well-drafted written agreements and straightforward legal advice
- Strategic counseling in the assessment of legal risks, development of business and licensing models, and protection of intellectual property assets
- Effective negotiating, with an understanding of industry practices, common pitfalls, and creative solutions.
Licensing and technology transfers. We represent both licensors and licensees in developing, commercializing, and transferring technology, including the underlying patent, copyright, trademark, and other intellectual property assets. We represent companies at all stages of growth, from established companies in the financial services, and pharmaceutical industries to start-up software vendors, Internet presences, and website developers.
In addition to serving as a day-to-day resource on legal and technology issues, we assist clients in developing business plans, licensing models, and intellectual property portfolio strategies that meet short-term and long-term objectives. Examples of the types of transactions we have experience structuring and negotiating include:
- Software Development and License Agreements
- Patent and Technology License Agreements
- Intellectual Property Acquisitions and Asset Sales
- OEM, Reseller, and Channel Partner Agreements
- Joint Development and Strategic Alliance Agreements
- Web Development and Hosting Agreements
- Content and Database Licenses
In collaboration with attorneys in the firm, we also advise technology companies on a variety of “life cycle” issues, including formation, seed and venture capital, financing, private and public equity, mergers and acquisitions, real property acquisition and lease negotiation, tax planning, litigation, and compensation and employment matters.
Technology Procurement and Outsourcing. In industries as diverse as financial services, healthcare, education, manufacturing, hotel management, our clients rely on software, hardware, telecommunications, and outsourcing relationships to manage core services and operate mission-critical systems. We represent clients in a variety of technology procurement and outsourcing transactions, including:
- Hardware and IT Procurement
- Software Development, Implementation, and Support
- Software as a Service, Platform as a Service, Outsourcing, and Data Processing
- Web Site Development and Hosting
- Consulting and Professional Services
We assist clients in defining business, technology, and legal requirements, performing due diligence on potential vendors, and negotiating agreements that reflect an appropriate level of commitment and risk-sharing. We also assist clients in developing strategic positions on issues such as service level commitments, term and termination rights, pricing and limitations on price increases, information security and privacy, and business continuity and disaster recovery, and technology and source code escrow.
Internet and Electronic Commerce. We provide strategic counseling for Internet start-ups and established Web presences on business strategies, legal risks, and the developing and protecting intellectual property assets. We also advise clients on a variety of federal and state laws and regulations affecting the Internet, including Digital Millennium Copyright Act (DMCA), Online Copyright Infringement Liability Limitation Act (OCILLA), Children’s Online Privacy Protection Act (COPPA), Communication Decency Act (CDA), Electronic Signatures in Global and National Commerce Act (E-Sign), and CAN-SPAM Act.
Special Services for Financial Institutions. We provide several special services for financial institution clients, including banks, broker-dealers, and investment advisors. We combine our technology transactions experience with an understanding of the regulatory framework that governs financial institutions in the areas of:
- Technology Procurement and SaaS and Software Agreements
- Information Security and Privacy
- Vendor Selection and Due Diligence
- Service Provider Oversight
Our financial institution clients are required by law to protect the nonpublic personal information of clients and customers. We advise clients on achieving compliance under the Gramm-Leach-Bliley Act, including the privacy and safeguarding regulations promulgated by the banking agencies, SEC, FTC, and other functional regulators. We also assist clients in meeting their regulatory obligation to oversee service providers. We often help clients with privacy notices for customers; policies and procedures for safeguarding nonpublic personal information; due diligence tools and model agreements for selecting, contracting with, and overseeing service providers; and incident response plans for data security breaches.
As part of an overall information security program, we help clients exercising appropriate due diligence in selecting service providers, entering into written confidentiality agreements with service providers limiting the use and disclosure of personal information, requiring service providers by contract to implement appropriate security controls designed to meet the safeguarding requirements, and monitoring service providers to confirm that they have satisfied their confidentiality and safeguarding obligations.
Representative Matters:
- Drafting channel partner, reseller, and end-user license agreements for a start-up software developer.
- Negotiating a joint development, consulting, and patent license agreement between a financial consulting firm and a large data processing company.
- Structuring joint development and patent license arrangements for a research and development company in the pharmaceutical industry.
- Negotiating telecommunications, hardware, and software license agreements for one of the nation’s largest private converged networks, with data, voice-over-Internet protocol (VoIP) and video capabilities.
- Negotiating a SaaS-based mission-critical software license arrangement between a financial institution client and the software solution and services provider, including structuring service level agreement, escrow, and disaster recovery capabilities.
- Structuring an outsourcing arrangement between a technology client and a software development firm in India.
- Developing and implementing information security, privacy, and service provider oversight policies and procedures for several financial services clients.
- Advising healthcare institution clients on referring physician Web portals and SaaS-based software licensing and hosting arrangements.
- Advising an educational institution client on the electronic storage and third-party hosting of student records.
