February 4, 2020Published Article

Top Issues in 2020: Licensing and Technology Transactions


The value of company trade secrets and data is continuing to rise in the information economy. Reliance on standard confidentiality templates that are not crafted to a business’s specific needs, or the needs of a specific transaction, can lead to a loss of rights to a company. Companies will need to ensure the confidentiality agreements they use are crafted properly and specifically to their industry and business needs.


Companies from every industry likely have some type of ongoing cloud services or software as a service (SaaS) arrangement with a service provider. While many such agreements are presented from the service provider as “standard contracts” there are many provisions a Company should consider and negotiate when entering into these arrangements. Failure to address critical issues in the drafting and negotiation phase can lead to significant issues down the road as the relationship with a service provider may change. Issues such support services provided during the term and remedies for system problems and failures, actions and remedies in case of a data breach, and rights to transition data off the cloud are all critical conditions to consider. Cloud Agreements should be negotiated and crafted appropriately to meet the business needs of the Company both during the term of the Agreement and after.


Data is being generated at a breakneck speed and is critical to the success of many Companies. Company data types include proprietary information from commercial and industrial processes, customer data, data generated from AI and other analytics, sensitive personal data, and public data. Successful Company tools, products, and business models frequently require data from multiple sources resulting in combined and derived data sets. It is increasingly important for Companies to have appropriate polices and agreements, both with internal employees and external companies and vendors, to protect not only necessary privacy of data, but appropriate controls on the creation, ownership and monetization of complex data. Developing a data management and control policy for a Company and appropriate internal and external contractual provisions will continue to be more and more important.


Increasingly licensing arrangement call for arbitration, mediation or other forms of alternate dispute resolution systems outside of the court system. Unfortunately, in-artful drafting of these provisions in intellectual property licenses have recently lead to unintended consequences, where courts have found that certain actions by a party in front of the USPTO or other national patent and trademark offices were foreclosed by such provisions. Careful consideration of the full consequences of any dispute resolution provision in an intellectual property license should be included in the drafting and negotiating process.

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