Alcíone Law brings many years of experience in negotiating and drafting technology transactions. My career background and experience includes technology transactions for satellite distribution companies, production companies, content providers, streaming services, mobile videogame companies, biotechnology companies, health and wellness companies, and others.
I have negotiated, drafted and/or advised clients on software license agreements, software as a service (SAAS) agreements, development agreements, maintenance and support agreements, technology escrow agreements, hardware purchase-supply agreements, OEM/reseller/distribution agreements, joint development or collaboration agreements, technology confidentiality/non-disclosure agreements (NDA's), and end user license agreement (EULA's).
- Intellectual Property (IP) Rights and Ownership. This includes careful delineation of ownership, assignment, and licensing of patents, copyrights, trade secrets, trademarks (IP). Precision definitions for background (pre-existing) and foreground (developed) IP are crucial. Ensuring proper chain of title and rights to use, modify, and sublicense technology is equally important.
- Scope of Use and Restrictions. These considerations include the proper specifications as to permitted uses, users, and environments (e.g., on-premises, cloud, embedded). Restrictions on reverse engineering, decompilation, and transfer are generally addressed as well.. Field-of-use and territorial limitations in many cases are additional key deal points.
- Development, Customization, and Delivery. Technology development transactions may provide for deliverables in the form of software, hardware, firmware, and/or applications. Milestones, deliverables, acceptance criteria, and timelines for development are fundamental to such agreements. Change management procedures and specifications for modifications or enhancements are necessary complementary provisions. Source code escrow and release triggers (for critical software) are useful or advisable in many cases.
- Warranties, Support, and Maintenance. Performance warranties (conformance to specifications, non-infringement) are essential and universal to technology development and service contracts. Service level agreements (SLAs) define the specific performance standards, service quality metrics, and support obligations that a service provider must meet when delivering services to a customer, and are commonly used in technology, cloud computing, IT outsourcing, telecommunications, and managed services contracts.
- Confidentiality and Data Security. Protection of proprietary information, trade secrets, and customer data are all fundamental to IP contracts. Compliance with data privacy laws (e.g., GDPR, CCPA) and cybersecurity standards. are more recent imperatives. Contractual provisions regarding Incident response and breach notification procedures are necessary for many technology contracts.
- Payment, Royalties, and Audit Rights. All technology in the commercial sector, and nearly all in the non-commercial sectors, will address one or more of these items. Fee structures can take many forms for both consumer payments and for service provider/developer payments, including one-time, subscription, royalty-based, milestone payments, etc. .Ancillary compensation matters generally include reporting and audit rights to verify usage and payments, taxes, currency, and payment terms.
- Risk Allocation and Remedies. Indemnification for IP infringement, data breaches, and third-party claims are key points in many technology transactions. Clauses stating limitation of liability and exclusion of incidental and consequential damages are often advisable. Termination rights, cure periods, and post-termination obligations (e.g., data return/destruction) are essential for most technology contracts.
- Compliance and Export Controls. Adherence to applicable laws, export/import restrictions, and industry standards must be observed. Anti-bribery, anti-corruption, and open-source software compliance are further considerations for technology companies and developers.
Effective negotiation and drafting of technology transactions require careful attention to IP allocation, regulatory compliance, risk management, and the technical realities of the products or services involved. Alcíone Law ensures that each contract is tailored to the specific technology, business model, and parties’ objectives.