Intellectual property and information technology
Much of our work is concerned with intellectual property (IP) or information technology (IT) and we would consider ourselves to be specialists in these fields. We have experience of advising clients in relation to all of the main types of intellectual property, including patents, copyright, database rights, designs, trade marks and confidential information.
The majority of our work in these areas relates to commercial transactions, although we also have experience of IP and IT disputes. We do not get involved in patent filings, as we consider this to be a separate area of specialisation. We can assist clients to find patent agents if required.
At the heart of IP transactions are licences and assignments, as well as larger transactions that include elements of IP licensing and assignment (e.g. evaluation and option agreements, pipeline agreements, corporate transactions, research and development agreements, etc). We have experience across a wide range of IP-related agreement types and across a wide range of technology and IP areas, including life sciences, software, telecommunications and engineering.
In the area of IT transactions, we have advised clients on licences, supply agreements, tender documentation, teaming agreements, reseller agreements, support and maintenance agreements, service level agreements and many other types of contract.
In the non-technology arena, we have experience of trade mark licensing, franchising, character merchandising and sponsorship agreements, as well as publishing and arts-related copyright licensing.
Examples of IP and IT transactions
- Advising biotech clients on development and licence agreements (e.g. with major pharmaceutical companies);
- Advising software clients on software licensing and supply agreements;
- Advising a consumer services company on the acquisition of a major new computer system that would perform 'back-office' functions as well as customer transactions;
- Advising on the sale of a royalty stream (under licence agreements) to a financial institution for a lump sum payment;
- Advising a university client on major research funding agreements with a well-known charitable foundation, including negotiation of IP access policies and terms;
- Advising on publishing agreements.
Examples of IP and IT disputes
- Advising on infringement of our client's designs by a manufacturer and supplier of clothing;
- Advising on a passing-off dispute involving a private college that used a very similar name to our well-known university client;
- Assisting a company (successfully) in a cybersquatting complaint before the WIPO Arbitration and Mediation Center;
- Advising on a disputed termination of a patent licence agreement (see Commercial Disputes);
- Advising on a dispute over the use, by our client's competitor, of a sponsored link and metatag that used our client's name.