The Preti Flaherty Intellectual Property Group helps clients get the best results from all major transactions involving valuable IP assets. Our team combines legal experience, advanced technical training and in-depth knowledge of how deals are made to help our clients achieve their goals in every transaction. Our team is a critical asset at every stage of development of a new venture.

We understand that there are many moving parts in almost any kind of transaction, and our team focuses its efforts on getting our clients the maximum value from the IP assets involved in any transaction. We have helped clients across sectors with the full range of transactions including mergers, acquisitions, licensing and the development and sale of technology or other intellectual property.

Technology-Based Agreements
Our team has extensive experience in negotiating and preparing well-tailored agreements related to technology and intellectual property of all kinds. In this work, our attorneys draw from their technical experience gained throughout their careers. Nearly all of our IP attorneys worked as technologists or technology managers prior to their legal careers and this practical, commercial outlook is invaluable in identifying and resolving issues as they arise.

Our agreement work regularly includes:

  • Technology License Agreements
  • Software License Agreements
  • OEM and Distribution Agreements
  • Beta Test Agreements
  • Consulting Agreements
  • Joint Venture Agreements
  • Confidentiality Agreements
  • Development Agreements
  • Employment Agreements

IP Due Diligence
Our attorneys regularly conduct and assist clients with IP due diligence investigations on behalf of investors, underwriters and corporate clients in mergers, acquisitions and in all other types of transactions. Some of the projects we help clients with include infringement studies to determine the IP rights of other parties, validity studies to assess the status and scope of IP to be acquired and confirmation of ownership rights being conveyed. Our investigations provide our clients with the critical intelligence they need to make important business decisions.

IP Audits
Preti’s Intellectual Property Group often provides additional value to its clients by reviewing company policies and procedures related to IP and analyzing existing IP ownership and status. We help to develop overarching strategies and suggest revised approaches for our clients and we are also a key partner for start-ups and other new businesses as they establish initial policies and procedures. No matter how long an entity has been managing IP assets, we can always offer a thorough review and new perspectives.

Diverse Transaction Experience
Our attorneys have helped clients with a range of transactions and have particular experience in the key areas that most often impact IP assets. These include:

  • Security Interests – We counsel clients and prepare necessary documents on behalf of lenders to acquire and perfect security interests in patents, trademarks and copyrights. We also help companies granting security interests to assure appropriate reversion of IP rights after the secured debt has been satisfied.
  • Government Contract Provisions – We have dealt with a wide range of patent rights, data rights, copyright and software provisions of U.S. government contracts and in the negotiation of rights retained or passed through by a contractor in conducting work for the U.S. government.
  • University-Industry Relationships – We have an extensive portfolio of work we have done in our representation of leading universities, research institutions and commercial clients in licensing of institute-developed technology. We also regularly help clients navigate the issues that arise in the granting of research support to institutions and in acquiring consulting services of institution personnel. Our team has the background and experience to negotiate agreements between universities and industry while respecting the unique culture and values of academic institutions.