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Category Archives: Technology Transactions

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Is it HIPAA or HIPPA? Either way, it still applies.

Posted in Healthcare, IP Q&A, Technology Transactions

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

Patent 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 Transactions

U.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

NEGOTIATING YOUR “SERIES A” FINANCING

Posted in Technology Transactions, Venture Capital, Private Equity and Other Financings

One 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 Transactions

Take 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 Transactions

Often 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 Transactions

Technology 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 Transactions

When 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 Transactions

Information 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 Transactions

Forwarded 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 Financings

On 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 Transactions

Under 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 Transactions

 Fee-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 Financings

In 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, Uncategorized

There 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 Financings

The 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 Financings

In 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 Transactions

The 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 Financings

If 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 Financings

 The 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 Financings

        On 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 Financings

Lawsuits 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 Transactions

Hospitals 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