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Due diligence, opinions and post-grant

Technology and patent licensing

As intellectual property issues increasingly drive many of today’s transactions, our clients depend on us to handle the many intellectual property matters underlying their business operations. Our lawyers have decades of experience handling a variety of contract, transactional and licensing matters involving issues in a wide range of businesses. Our experience includes licensing, technology transfer, security interests, equipment purchase and maintenance agreements, joint development agreements, assignments, due diligence, mergers and acquisitions, IPOs, employment and consulting contracts, and confidentiality agreements.

In licensing, we strive to seamlessly integrate the legal and intellectual property issues with our clients' business objectives by recognizing the type of intellectual property and technology involved and crafting agreements that best align our client’s goals with the particular characteristics of the subject matter at hand.

Software licensing, e-commerce and open source

Software licensing and maintenance is fundamental to doing business in today’s economy both for the developer of software and for end users. Acquiring and using the proper software tools entails a host of legal issues, which our intellectual property lawyers are well-equipped to handle. Our team reviews, advises and negotiates agreements, such as software development agreements, software licenses (both as licensor and licensee), application service provider agreements, maintenance and support contracts, joint ventures, and US and international distribution agreements. And because nearly all business today is conducted over the internet, we also advise on e-commerce matters such as hosting agreements, development agreements, terms and conditions, privacy policies, and advising on applicable US and foreign legislation. Our lawyers also help our clients develop open source policies, counsel and negotiate on licensing matters, and assess the implications of open-source in a proprietary environment.

Due diligence

We assist clients in evaluating the strength of their intellectual property assets, or the assets of competitors or potential acquisitions, including patents, copyrights, trademarks, and trade secrets. Our lawyers identify potential issues regarding those assets and solutions or workarounds to those issues. These assessments may be formal or informal and can be for internal audit purposes or for potential investments.

Post-grant, IPR and post-issuance proceedings

Given the large number of post-issuance proceedings now being handled by the Patent Trial and Appeal Board (PTAB) of the USPTO, seemingly every day brings the release of decisions and rulings that shed new light on how the PTAB is applying and interpreting both the substantive law and the relevant procedural rules that apply to these proceedings.

Keeping up with these decisions can inevitably be a challenge for both patent owners and those challenging the validity of patents, not to mention the legal practitioners representing those parties. By focusing on post-issuance proceedings at the PTAB, we serve as a resource for all who have an interest in these proceedings.

Norton Rose Fulbright has a deep roster of lawyers with a wealth of experience in patent litigation, patent prosecution, and post-issuance proceedings.

To learn more, visit our blog covering this topic, Patent Challenges.