Practice Areas & Industries: Holme Roberts & Owen LLP

Practice/Industry Group Overview

HRO’s Technology and Intellectual Property (TIP) Transactions Practice is devoted not just to technology and intellectual property in general, but specifically to transactions involving intellectual property and technology. HRO has experience structuring and negotiating hundreds of different transactions involving the development, acquisition, use, commercialization, and sourcing of technology and intellectual property assets and services for clients of all sizes and stages of development, from entrepreneurial seed-stage ventures to established (and often well-known) multinational companies and organizations. In each transaction, and with every client, we strive to combine exceptional legal expertise with strong substantive technical knowledge and an understanding of our client’s broader business strategy to provide practical advice and guidance tailored to generate value for our clients and their shareholders.

Services Available

Our experience includes representing both vendors and acquirers of rights in technology and intellectual property in transactions including:

• Technology and intellectual property-focused mergers, acquisitions, public offerings, debt financings and other corporate transactions;
• IP and technology due diligence reviews;
• Licenses and technology transfers;
• Application service provider (ASP) and Software as a Service (SaaS) Agreements;
• Online and electronic contracting;
• Reseller, distribution, OEM, and other channel agreements;
• Hosting, co-location, and other telecommunications and data center agreements;
• Joint ventures and technology-focused alliances;
• Open source software license review, drafting, and compliance;
• IT, manufacturing, and business process outsourcings;
• RFP and bidding processes;
• Co-development arrangements;
• Service and maintenance arrangements;
• Manufacturing and supply agreements;
• Information and data transfer and privacy;  
• University technology transfers and technology developments; and
• Representation before standards bodies and industry organizations.

HRO’s expertise spans all forms of intellectual property, including patents, trademarks, copyrights, and technical know-how and trade secrets, as well as emerging rights analogous to the these traditional forms of intellectual property, such as the sui generis protections of data and databases in the EU and elsewhere outside of the US.

HRO works to understand and track each of our client’s industry and technology issues and HRO is continuously expanding the breadth and depth of our knowledge to include new technologies and industries. HRO’s specific experience in industries and technologies includes:

• Proprietary software;
• Open source software;
• Hardware and information technology;
• Storage (including disk and tape) ;
• Semiconductors and MEMS devices;
• Internet and e-commerce;
• Networking;
• Telecommunications and cable television;
• Entertainment and media technology;
• Optics; 
• Financial services technologies;
• Health information technology;
• Medical devices; and
• Energy and natural resources.

HRO’s experience spans the globe and includes work on transactions involving parties in multiple countries and on different continents. Our lawyers in the US have close relationships with those in our European offices. Likewise, HRO relies on several networks of international legal experts at preeminent local firms throughout the world. Combined, our internal and external resources provide us with access to legal resources in markets throughout the world, including, for example, key markets for IT and business process outsourcing services such as India, Eastern Europe, and more recently China.

The technology and intellectual property transactions we handle are often complex and demand close collaboration among the other practice groups within our firm. For each new transaction, we collaborate with our client to assess their strategy, expectations, and requirements. We then field a team of attorneys who can understand the transaction and the relevant technology, as well as the client’s broader business and strategy. Throughout our relationship, the attorneys in our TIP Transactions Practice work closely with the attorneys in our broader Intellectual Property Group. We also draw on experience from our other practice groups in areas such as corporate law and securities, tax, antitrust, bankruptcy and litigation to assist on particular issues. Our team-based approach provides the flexibility necessary to deploy the right resources for each transaction, in and efficient and effective manner, with minimum ramp-up time.