Intellectual Property Transactions & Development

Experience

  • IP Licensing

    Represented numerous buyers and sellers in connection with the transfer or license of intellectual property rights, including a distributor of branded appliance manufacturers in its sale to one of

  • IP Licensing

    Represented a restaurant in the redevelopment and licensing of its iconic restaurant concept. The restaurant relocated to a new location and created an adjacent entertainment venue with a water

[more]

Overview

Transactions related to the development, use, sale and acquisition of technology require a specific understanding of the intellectual property (IP) rights underlying the technology, and our lawyers have an acute understanding of how to navigate patent, trademark, copyright and trade secret law. 

When clients partner with Munsch Hardt, they benefit immensely from the diversity of our experience across sectors and a wide range of technologies, including computer hardware, semiconductor chips, medical devices, biotechnology, cloud computing, green technology, nanotechnology, data storage, banking, pharmaceutical, dietary supplement, mobile technology and e-commerce. 

Some of the country’s most dynamic, middle-market companies and private equity firms turn to us for advice in all aspects of IP, technology, privacy and new media in dozens of transactions, including multimillion-dollar mergers and acquisitions, joint ventures, debt and equity offerings, financings, restructurings and bankruptcies, licenses and other strategic arrangements.

By working closely with our clients, our team is able to help early-stage and growth-orientated technology owners and developers maximize the value of their IP assets through a wide range of transactions that help increase their capital while also protecting their ownership rights, including the following:

  • Licenses and technology transfers
  • Joint ventures and technology alliances
  • Application service provider and software as a service (SaaS) agreements
  • Sales, distribution and reseller agreements
  • Supply chain management and outsourcing agreements
  • Open source software license review
  • Software development and maintenance agreements
  • Data security
  • Information and data transfer

At Munsch Hardt, we are known for our ability to field a team of attorneys who understand the transaction and the relevant technology, as well as the client’s broader business strategy. The attorneys in our IP Transactions group draw upon experience from our other practice groups, such as Corporate & Securities, Tax, Bankruptcy and Litigation to assist on particular issues, as needed. This team based approach provides the flexibility necessary to deploy the right resources for each transaction in an efficient and effective manner. 

Copyrights

Copyright issues have become increasingly complex with the accelerating pace of technological changes in the methods of creating, distributing and exploiting creative works. Our goal is to ensure that those who own copyrighted content protect their ownership interests and that those acquiring copyrighted content obtain the rights they need to achieve their business objectives.

 

As a go-to provider for middle-market technology companies, Munsch Hardt’s IP attorneys represent emerging online, mobile, on-demand service and digital printing technologies, as well as participants in the entertainment, search, social media, software, digital media and e-commerce sectors. Additionally, Munsch Hardt serves as a strategic partner to clients active in the retail, healthcare, life sciences, transportation and higher education industries, as well as other types of organizations seeking to protect and leverage copyrightable works.

 

Our team provides legal advice on many copyright and content ownership issues, including:

 

  • Content licensing and content ownership agreements
  • Copyright registration and filing 
  • Software licensing agreements
  • Printed works for consumer and commercial use
  • Statutory exemptions and licenses, and fair use
  • Strategic copyright portfolio development, implementation and protection
  • Reproduction agreements
  • Derivative works, distribution and public performance rights

The Firm has assisted clients with all forms of media and copyrightable works, including digital content, audiovisual presentations, software, film, literature, images, photography and recorded music and sounds. And, instead of restricting our copyright work to advising a select number of clients on broadly applied laws, our work is constantly evolving as we follow the path of our clients' disruptive technologies and innovations, aiming to help them achieve their business objectives.

Patents

Munsch Hardt is well positioned to offer our clients the full range of services required to negotiate, restructure and expand their businesses, and, in this context, we recognize that many of our clients' business transactions will involve aspects of IP. We are skilled in providing the necessary IP due diligence required in such transactions, and in negotiating, drafting and finalizing the IP contracts and documents required to close the deal.

 

The negotiation and drafting of licenses is one of the key services we offer in this area, and, in this regard, we understand licensing programs must be uniquely and creatively tailored to the needs of our clients' particular transactions. In some instances, the purpose of a license will be to leverage the value of our client's patent as a business asset in order to generate revenue. In other instances, licenses form the basis for joint venture and other collaborative undertakings between companies, and particularly in this context an understanding of ways in which to structure such licenses in a balanced and workable manner will be crucial to the success of the collaboration.

Trademarks

Munsch Hardt’s Transactional Trademark specialists carefully evaluate the scope and coverage of IP in the context of sophisticated middle-market transactions, including licensing, mergers and acquisitions, public offerings and private equity and venture capital investments. Our team assists purchasers, investors and sellers to evaluate discrepancies between the information provided by the seller and obtained through the purchaser’s independent search.  

 

As a result of our work, a steady stream of both new and existing businesses increasingly turn to Munsch Hardts’s Transactional Trademark attorneys for a wide range of branding and trademark services, including:

 

  • Trademark license and assignment agreements
  • Coexistence and concurrent use agreements
  • Due diligence review of IP portfolios  
  • Intercompany licensing arrangements
  • Development of IP holding companies
  • Domestic and multi-national mergers, acquisitions and divestitures
  • Joint ventures
  • Franchise agreements
  • Bankruptcies
  • Manufacturing and distribution agreements
  • Copyright transactions and licensing
  • Supervise and record trademark assignments throughout the U.S.