Overview
Maximizing Company IP Value and Minimizing Risks
In today’s business economy, your technology, data, brand, and other IP assets are among the most valuable facets of your company. The rise of artificial intelligence compounds both opportunities and threats. Michael Best’s multidisciplinary IP Business Solutions team provides a comprehensive suite of transactional services to help you protect and maximize the value of your company’s intangible assets while minimizing risk.
We advise on the full spectrum of IP-related agreements, including licensing, joint ventures, development agreements, technology transfers, data ownership and use, and more. Whether you're commercializing a new invention, entering a strategic partnership, or negotiating a crucial vendor agreement, our team ensures your IP rights are clearly defined, protected, and aligned with your business goals. Our attorneys also counsel clients on IT and technology agreements, data privacy compliance, and cybersecurity, assuring your digital operations are secure and legally sound. Website and social media security and compliance is another critical area we support, including terms of use, privacy policies, and e-commerce regulations. We also provide robust brand protection services, from registration and enforcement to portfolio management and dispute resolution. For mergers, acquisitions, and significant deals, we conduct thorough IP due diligence to uncover risks and opportunities. Whether you're launching a new product, expanding your digital footprint, or entering a strategic partnership, our team delivers clear, business-focused solutions that align with your goals, maximize the value of your IP, and safeguard your competitive edge.
Our attorneys are active in professional organizations such as the Licensing Executives Society, Intellectual Property Owners Association, Association of University Technology Managers, International Trademark Association, and International Association of Privacy Professionals, and regularly speak and comment on issues related to IP transactions, brand protection, marketing, artificial intelligence, data privacy and cybersecurity, and other topics.
Focus Areas
IP Transactional Services That Secure and Grow Your Company’s Technology and Data Rights
From top manufacturers to leading research universities, we counsel clients on strategies designed to maximize the value of their technologies through licensing. We also assist emerging company licensees in finding professional management and obtaining third-party financing. Our services include: inbound and outbound patent and technology agreements; technology joint venture and partnering agreements; technology development agreements; manufacturing and supply agreements; university and federal lab collaborations; non-disclosure and material transfer agreements; and IP asset acquisition and disposition.
We can help you draft and negotiate licenses, contracts, and terms and conditions for software, software as a service (SaaS), data and AI agreements, and other cloud services, mobile apps, and websites. Our attorneys understand information technology (IT) and artificial intelligence technology and markets, and we have extensive experience representing both buyers and vendors in a variety of software and IT service transactions. We work with clients to understand their specific IT needs and implement focused and practical strategies to meet these needs.
Generative AI is quickly transforming work and reinventing business. Whether you’re considering using AI technology in your operations or developing AI products or services, navigating this landscape presents significant opportunities along with new legal, ethical, and business risks. We partner with you on your AI journey to help you accelerate innovation, optimize operations, and gain a competitive edge. Our team takes a holistic approach to helping you develop an AI plan that aligns with your business goals and your risk profile.
Beyond essential legal compliance, we provide tailored solutions that address organizational challenges and objectives. We combine legal and technological expertise with practical, business-oriented solutions. We provide guidance on responsible use of AI, help establish policies and procedures, offer legislative tracking and policy insights, assist with responsibly designing, developing, and deploying AI tools, and more. We balance innovation with a thorough understanding of the ethical and legal implications, and necessary risk mitigation strategies.
We assist our clients with establishing, maintaining, protecting, and enforcing their trademark, copyright, and other brand rights in over 200 jurisdictions worldwide. We advise on strategic planning, negotiation, due diligence, and hands-on program management. We also represent clients in connection with evaluating and negotiating licenses and assist them with complying with license terms and addressing claims of noncompliance. We provide advice and defense related to advertising claims, and help you develop successful and compliant marketing and promotional campaigns, including contests and sweepstakes.
- From websites and social media accounts to e-commerce platforms, our team can help you ensure your online practices align with laws like GDPR, CCPA, and FTC guidelines. We review and advise on privacy policies, cookie notices, chatbot data disclosures, terms of use, and accessibility to achieve transparency and legal compliance. For social media and marketing, we help assure proper handling of user data. For companies with e-commerce operations, we draft and negotiate contracts with vendors and payment processors, ensuring data protection and cybersecurity protections. We help you safeguard brand integrity, build consumer trust, and reduce exposure to regulatory penalties across your digital footprint.
- We also help you police your trademark and other brand rights online to protect against infringement and other unauthorized use. In addition, we represent clients in connection with DMCA issues, including enforcement matters, and we handle proceedings under the UDRP
We help businesses proactively navigate the complex landscape of data privacy and cybersecurity compliance, ensuring adherence to evolving regulations such as GDPR, CCPA, and other global and industry-specific standards. We help you establish clear policies and protocols and develop incident response plans. In the case of a breach, we partner with trusted resources to manage and investigate the breach, engage third party resources, respond to investigations or claims, and manage crisis communications, while preserving the attorney-client privilege. In transactions, we review and draft data protection clauses, vendor agreements, and cross-border data transfer provisions to safeguard sensitive information. Our focus is on helping you mitigate liability, build customer trust, and maintain operational resilience in the face of cyber threats.
Our proprietary Best LuminEdge service offering goes beyond basic IP due diligence, combining patented data analytics tools with the experience of our top-ranked professional team to identify risks, assess asset value, and support informed decision-making. We analyze a company’s IP assets to reveal the true value within – and provide essential intelligence about the competitive landscape and broader market. Whether you’re evaluating a potential investment target, considering a divesture, or looking to better manage your IP portfolio, we can help you see the big picture and provide action-oriented advice on next steps.
Contract review, management, and negotiation can require significant time, resources, and effort from your team. We offer efficient, scalable solutions for companies with both frequent and occasional contract needs. For clients with a high volume of contracts, we begin by meeting with you to understand your preferences, risk tolerance, and pain points. From there, we can develop tailored contract templates, assess and revise counterparty agreements, and help you implement a streamlined management process that meets your needs and delivers cost predictability. For clients with occasional contract review needs, we offer flexible options including a “Best Look” high-level assessment of a contract that identifies high-risk provisions, compliance gaps, and deal-breaker clauses, along with a summary of major issues and recommended next steps. Or, if you prefer, we can provide a complete redline and/or customization of an agreement to ensure alignment with your objectives and risk profile.
Experience
The Deals and Decisions That Matter
Conducted due diligence for a client which uncovered a patent in the company’s portfolio having substantial market value. The client then leveraged the patent to accrue millions of dollars in licensing revenue.
Represented a large corporation in assessing and responding to a data breach and managed multi-state breach notifications, including notification to regulators and post-breach credit monitoring.
- Resolved a contentious counterfeiting and distributor dispute for a licensor client in connection with the licensee’s failure to maintain control of product.
- Represented an investor in portfolio company in a $300M license (plus royalties) to a strategic partner. Payments included up-front license and milestone payments.
- For a client evaluating a potential acquisition, we conducted due diligence that uncovered potential litigation brewing between the target company and a competitor, based on the convergence of patent filings in a common technology area.
- Prepared and negotiated a $120M (plus royalties) license between our client and a global pharmaceutical company. Payments included up-front license and milestone payments.
- Negotiated data aggregation agreement between a client and a major financial institution to permit sharing of the financial institution’s customer data with third parties.
- Prepared exclusive licensing, manufacturing, and service agreements for a medical device company in a merger and spin-off deal.
- Represented a manufacturer in a multimillion-dollar software licensing audit.
- For a client considering a significant investment, we conducted due diligence on the investment target and identified a notable, unexpected future loss of licensing revenue based on expiration of foreign patents during the license term.
