IT and IP Transactions

Winston & Strawn’s corporate and IP attorneys routinely handle the intellectual property aspects of transactions. Our attorneys negotiate and draft intellectual property licenses and transfers; provide strategic guidance on optimal structures for IP transactions; and evaluate trademark and patent portfolios and related due diligence activities in connection with IPOs, mergers and acquisitions, private equity investments, and other corporate transactions. 

Our attorneys have created several of the most innovative and complex brand ownership licensing schemes in existence today.  For instance, Winston & Strawn’s was asked to negotiate a product development agreement and trademark license involving two of the country’s leading brands, which lead to the development and marketing of a popular new beverage.  In another matter, our IP attorneys balanced trademark, corporate, and bankruptcy law considerations in creating an innovative brand ownership and licensing structure that ensured the continued viability of one of the world’s most recognizable consumer electronic brands.  In a due diligence matter, we saved a client millions of dollars by clarifying the lower-than-expected value of the patent rights subject to an acquisition.  We regularly counsel companies concerning maximization of the value of their brands in the context of the sale of assets.

The firm's work in this area includes preparing opinions concerning intellectual property assets in connection with the sale, license, or other transfer of those assets, and in connection with portfolio evaluations.  We create agreements for IP asset transfers, including acquisition and sales documents, assignments, licenses, confidentiality agreements, and joint venture/cooperative research project agreements.

Winston also has extensive experience assisting clients with a broad range of IT issues, including:

• complex, IT-driven joint ventures and strategic alliances
• technology licensing agreements
• IT and telecommunications outsourcing transactions
• Application Service Provider (ASP) agreements
• Web site development, hosting, and maintenance agreements
• Web site terms and conditions, privacy policies, and linking terms
• hardware procurement and maintenance agreements
• software development and implementation agreements
• source code escrow arrangements
• network equipment co-location agreements
• the state of the law on encryption and electronic signatures
• due diligence in IPOs, mergers and acquisitions, private equity investments, and other corporate transactions involving IT-related assets