I have negotiated hundreds of SaaS agreements for dozens of software companies and I always hated when the company on the other side was a healthcare provider. Invariably, they would bring up Protected Health Information (PHI) and the Health Insurance Portability and Accountability Act (HIPAA) and want us to sign a Business Associate Agreement (BAA). I am… Continue Reading
Category Archives: Technology Transactions
Subscribe to Technology Transactions RSS FeedPatent Law: Making On-Sale Bar Jurisprudence Coherent
Posted in Development & Commercialization of Technology, Intellectual Property Litigation, Patent Counseling & Strategies, Patent Prosecution, Technology Transactions, Uncategorized“Rather than rest our decision on formalities, our focus is on what makes our on-sale bar jurisprudence coherent: preventing inventors from filing for patents a year or more after the invention has been commercially marketed, whether marketed by the inventor himself or a third party.” The Medicines Company v. Hospira, Inc., No. 2014-1469, slip op…. Continue Reading
Two Hundred and Twenty Fifth Anniversary of U.S. Patent X000001
Posted in Development & Commercialization of Technology, IP Counseling and Strategies, Technology TransactionsU.S. Patent X000001 was granted on July 31, 1790 to Samuel Hopkins. The original document went missing for many years, only resurfacing in 1956. The inventor named is Samuel Hopkins, but which Samuel Hopkins was much in dispute until fairly recently. For many years a small town in Vermont celebrated their local resident as the… Continue Reading
Selling Your Company: The Letter of Intent
Posted in Technology TransactionsOne of the first steps in the sale of your company will be entering into a Letter of Intent. In order to avoid drafting lengthy documents and spending time and money on attorneys unnecessarily, you should be certain that the primary terms of the sale are documented in a letter of intent. It is during… Continue Reading
NEGOTIATING YOUR “SERIES A” FINANCING
Posted in Technology Transactions, Venture Capital, Private Equity and Other FinancingsOne of your first tasks in financing your technology company is likely to be completing your initial equity financing with outside investors. Typically, these financings are done with a venture capital firm (“VC”), angel investors or “friends and family” and the company will sell Series A Preferred Stock. Some of the primary negotiating points in… Continue Reading
Non-Competition Agreements
Posted in Technology TransactionsTake care when entering into non-competition agreements. This post deals with non-competition agreements in Texas. These rules vary from state to state so if you are not in Texas, you should consult with an attorney in your state. For many years, non-competition agreements have been notoriously difficult to enforce in Texas but Texas courts in… Continue Reading
Advisory Board Members
Posted in Technology TransactionsOften a young technology company will seek assistance from more experienced individuals, giving them the position of “Advisory Board Member” and giving equity to a person who agrees to serve in that capacity. This designation should not be taken lightly. There is no question that a young company can get tremendous benefit from having an… Continue Reading
Hiring Consultants
Posted in Technology TransactionsTechnology companies receive services from a variety of individuals and often use consultants, either for marketing advice, for software development or for other discreet tasks. It’s important to be sure the consultants are properly classified as such (in which case, they are “independent contractors”) and that they should not be classified as employees. If you… Continue Reading
Structuring an Agreement Among Owners
Posted in Technology TransactionsWhen forming a new technology company, there are very few documents as important (and unfortunately, as overlooked) as a Shareholders’ Agreement. The discussion in this post is couched as an agreement among shareholders of a corporation but the same principles apply to members of a limited liability company and partners of a partnership. The founders… Continue Reading
Beware of IP Scams-Invention Development
Posted in Development & Commercialization of Technology, IP Counseling and Strategies, Technology News & Events, Technology TransactionsInformation about patent and trademark applications, processes and maintenance requirements is much more accessible to the public than it used to be. In particular, the United States Patent and Trademark Office (USPTO) has very good information available (www.uspto.gov). Surprisingly, patent attorneys continue to find the same faulty understandings and confusion about the patent and trademark… Continue Reading
USPTO to Host America Invents Act Roadshow in Seven Cities Nationwide
Posted in Biotechnology, Development & Commercialization of Technology, IP Counseling and Strategies, Technology News & Events, Technology TransactionsForwarded by Robert Shaddox from the article of the same title. U.S. Patent & Trademark Office (08/26/14) The U.S. Patent and Trademark Office announced that it will host seven roadshow events across the country to increase public understanding of the First Inventor to File (FITF) provisions of the America Invents Act. The roadshow events, which… Continue Reading
Reviewing Potential Investments With Your Clients
Posted in Technology News & Events, Technology Transactions, Venture Capital, Private Equity and Other FinancingsOn August 4, 2014, the SEC issued an Investor Alert citing 10 Red Flags that should give investors an indication that an unregistered offering may be a scam. If you are considering an investment in an unregistered offering or you are advising a client who is considering such an offering, you should consider the following… Continue Reading
Is Your Purchaser Accredited? Clarifications from the SEC
Posted in Technology News & Events, Technology TransactionsUnder Rule 506(c), companies can now engage in a general solicitation in conducting private placements but if they do so, they must verify that each purchaser is accredited. The SEC has provided some safe harbors for verification and will also allow “principles based verification” if the verification is adequate. On July 3, 2014, the SEC… Continue Reading
Victims of Patent Trolls Get Re-Sharpened Weapon in their Defense
Posted in Intellectual Property Litigation, IP Counseling and Strategies, Technology News & Events, Technology TransactionsFee-shifting in patent infringement suits has been authorized by statute since 1952, for application in “exceptional cases.” [1] For the past nine years, that statute has not often been applied as a result of the Federal Circuits’ decision in Brooks Furniture, which requires the prevailing party in a patent infringement action seeking attorney’s fees establish… Continue Reading
Financing with IP Collateral
Posted in Biotechnology, Development & Commercialization of Technology, Nanotechnology, Patent Counseling & Strategies, Technology News & Events, Technology Transactions, Venture Capital, Private Equity and Other FinancingsIn a recent guest post on the Patently-O blog by Dennis Crouch, http://patentlyo.com/, William Mann, an assistant professor of finance at the Anderson School of Management, UCLA, notes the explosion in USPTO filings that record a creditor’s security interest in a patent. Secured debt can be a significant source of financing for many technology companies,… Continue Reading
API Protection Under Copyright Is Upheld by Federal Circuit
Posted in Development & Commercialization of Technology, E-Commerce (Internet Agreements and Issues), Intellectual Property, Technology News & Events, Technology Transactions, UncategorizedThere has been a lingering, divisive question in the software industry as to whether application programming interfaces (APIs) are entitled to copyright subject matter protection. Critics argue that this type of source code is functional in nature and, as such, should not be protected by copyright. However, in Oracle America, Inc. v. Google, Inc., CAFA… Continue Reading
Crowdfunding in Texas – When?
Posted in Technology News & Events, Technology Transactions, Venture Capital, Private Equity and Other FinancingsThe Texas intrastate crowdfunding rules were adopted in April and the Texas Securities Board will consider comments to the rules through the end of June (even though the official deadline for comments is June 8th). The matter will be considered at the next Board meeting which is expected to occur in August. If there are… Continue Reading
Crowdfunding: It’s Coming to Texas
Posted in Development & Commercialization of Technology, Technology News & Events, Technology Transactions, Venture Capital, Private Equity and Other FinancingsIn late April, the Texas Securities Board issued proposed regulations that would allow crowdfunding in intrastate transactions in Texas. The word on the street is that the proposed regulations will become final in August 2014. If they do, Texas will become the 8th and the largest state to enact intrastate crowdfunding. Under the proposed regulations,… Continue Reading
The Adam Carolla Show v. Patent Trolls
Posted in E-Commerce (Internet Agreements and Issues), Intellectual Property Litigation, Technology News & Events, Technology TransactionsThe Adam Carolla Show was sued last year in the Eastern District of Texas by a company claiming that Carolla’s podcasts violate their patent. Rather than bend over and settle out of court with the claimant, Adam Carolla has taken a stance against the so-called patent troll. Earlier this year, Julie Samuels made an appearance… Continue Reading
Trade Secrets: What an investor or acquirer will want to know.
Posted in Technology Transactions, Venture Capital, Private Equity and Other FinancingsIf you are thinking about raising capital or selling your company, one of the most important questions that the investor or acquirer will want to know is whether you own your IP. One critical part of this is protecting your trade secrets. If you haven’t properly protected your trade secrets, it could kill your deal…. Continue Reading
Intellectual Capital Development for Technology Companies, Cost Effective Adjunct to IP
Posted in Biotechnology, Development & Commercialization of Technology, Employment & Personnel Issues, Intellectual Property Litigation, Nanotechnology, Patent Counseling & Strategies, Technology News & Events, Technology Transactions, Venture Capital, Private Equity and Other FinancingsThe term Intellectual Capital means different things to different people even in the technology space. For business planning purposes, intellectual capital should be recognized as more than patents, copyrights, and other forms of intellectual property, extending broadly to employee skills, knowledge, and problem solving abilities. This is sometimes referred to as a company’s or its… Continue Reading
SEC to Vote on Crowdfunding Proposal to Ease Investor Verification Requirements
Posted in Technology News & Events, Technology Transactions, Venture Capital, Private Equity and Other FinancingsOn October 23, 2013, the United States Securities and Exchange Commission (the “SEC”) is expected to vote on a SEC proposal that would ease investor verification requirements under the crowdfunding rule. The crowdfunding rule, authorized as part of the 2012 Jumpstart Our Business Startups Act, is intended to benefit small businesses and startups too… Continue Reading
It’s Critical to Protect Your Proprietary Information
Posted in Development & Commercialization of Technology, Employment & Personnel Issues, Technology Transactions, Venture Capital, Private Equity and Other FinancingsLawsuits against employees and contractors, including consultants, for unauthorized use of a company’s confidential and proprietary information are common. For instance, on July 29, Abunassar Impact Basketball LLC filed suit against a former employee and a company he founded alleging that he “gathered Abunassar’s confidential and proprietary information in order to help start a new… Continue Reading
Cloud Computing: Healthcare Issues in a Digital Age – (Part Two)
Posted in E-Commerce (Internet Agreements and Issues), Healthcare, Technology TransactionsHospitals and health care providers must often look to third party vendors offering cloud computing solutions, but are these companies well-prepared to meet the HIPPA / HITECH Act privacy and security requirements as well as other Federal rules, regulations and ordinances applicable to the commerce in the cloud? Key concerns are privacy and security, as… Continue Reading