Getting IP Right: Maximizing Deal Value in Technology & Outsourcing Transactions

We are pleased to announce the release of our latest book, Getting IP Right: Maximizing Deal Value in Technology & Outsourcing Transactions. This year, we focus on using intellectual property rights to maximize value and mitigate risk while adopting artificial intelligence (AI) and other emerging technologies. We examine technology transactions from a wide range of perspectives, including:

Litigators and tax lawyers, on how deals can go wrong;
Trademark lawyers, on how brand partnerships can promote growth;
Regulatory lawyers, on how the regulatory landscape for AI is evolving; and
Deal lawyers, on special types of deals, including IP acquisitions, cross-border deals, deals for emerging technologies, and collaboration agreements for customer-facing technology.

Together, we hope that the chapters in this book will indeed help you “Get IP Right” in your matters.

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Chapter Articles

IP Transactions: A Litigator’s Perspective

In this chapter, the authors explain how the drafting and structure of intellectual property transactions and license agreements can significantly impact future IP litigation, highlighting key pitfalls and best practices to help lawyers avoid unintended consequences in downstream disputes.

Key Representations and Warranties in Tech and IP Acquisitions

In acquisitions, representations and warranties (R&Ws) serve as the critical foundation for confirming due diligence efforts and allocating risk among the parties. In this chapter, the authors cover how understanding which representations matter most—and why—is essential to protecting value, avoiding disputes, and closing deals successfully.

Integrating the IP of New Technologies: Global Tax and IP Risks

Many companies depend on the acquisition of IP-protected technologies through either internal R&D or M&A transactions. In either case, the company must integrate the relevant IP so that it can use the technologies to sell new products, conduct new research, or enter into new licensing agreements with third parties. In this chapter, the authors discuss the importance of assessing—and mitigating—the tax and IP issues arising from a proposed intercompany licensing structure before acquiring new technologies through R&D or M&A deals.

Artificial Intelligence Provisions in Technology Contracting

With the blistering pace of AI development and deployment, regulation has struggled to keep pace. As legislators and regulators grapple with the risks involved in the use of AI and how best to control those risks (if at all), businesses should proactively address these risks and regulations in their AI-related contracts, whether as a customer procuring AI tools, or as a service provider seeking to use AI to better serve its customers. Both providers and customers should review and update their contracts as necessary to mitigate risks as the law and technology rapidly change.

Cross-Border Tech Deals: Safeguarding Innovation Without Slowing the Business

As companies expand global operations, they are forced to navigate a patchwork of local IP laws, data and artificial intelligence (AI) regulations, and ever-shifting geopolitical tensions.

Without sufficient diligence, planning, and contracting, companies can fall victim to IP leakage, downstream disputes, data protection and export control problems, and impediments to innovation.

This article outlines key IP issues that arise in global outsourcing and cross-border technology transactions and offers practical recommendations for structuring deals that safeguard innovation.

Capturing the Value of Data in Technology Transactions

In this chapter, we summarize data protections available under US law. We then explore practical approaches for companies to successfully understand and negotiate data-related terms in technology transactions.

IP Frameworks in Contracts for Emerging Technologies

The development or implementation of emerging technologies requires different deal structures and negotiation processes than contracts for established technologies. In this chapter, we describe how flexible, transparent, purpose-built frameworks for IP rights, going beyond fixed up-front allocations, can create efficient, effective incentives in a way that aligns with how modern technologies often emerge: collaboratively, iteratively, and against a backdrop of unknown risks and rewards.

Scaling a Business Through Strategic IP Partnerships and Brand Licensing

Brand license agreements can drive business growth and brand recognition. This chapter outlines best practices for crafting effective brand license agreements and explores how well-structured licenses can accelerate business expansion and foster long-term success.