International Technology Transactions

Specialized skills are needed to negotiate a transaction involving the development, purchase, sale, or licensing of technology. Expertise in both intellectual property and commercial law is required, as well as business acumen and knowledge of industry best practices. Because international technology transactions involve additional risks, companies should work closely with experiences international technology transactions lawyers to protect their interests.

Our international technology transactions practice helps clients commercially preserve, exploit, and defend their intellectual property assets both domestically and internationally. We assist clients in developing intellectual property and commercial strategies that protect intellectual property assets, build strong relationships, and meet their business and technology objectives.

Types of Technology Transactions

There are three basic types of International technology transactions: International technology development, International technology license and International technology transfer.

International technology development is a common way for companies to speed up development while minimizing costs. International technology development can be used to engage a foreign developer to create or co-create a web site, software program, prototype, or some other form of technology. Important components of International technology development agreements include the scope of work, determining milestones and deliverables, non-infringement representations and clarifying the ownership of all elements of the final product.

An international technology license involves the owner of a patent, trade secret, trademark or copyright (i.e., “intellectual property” or “IP”) granting another person or entity permission to use their IP. A license to use IP related to technology can include hardware, software and data, and other forms of technology. All technology licenses must be carefully crafted to protect the IP owner’s interests, but International technology licenses involve special considerations due to the impact of foreign country IP laws, among other considerations.

Unlike an International technology license, International technology transfer involves more than merely granting permission to use IP; International technology transfer refers to the sale of IP assets from the IP owner to another party. Key elements of an International technology transfer agreement include pricing and payment, the scope of the technology transfer, the ownership of all aspects of the technology involved in the transfer, the impact of the technology transfer on any existing licenses, as well as other important considerations.

International Technology Agreement

Regardless of the type of technology transaction involved, an international technology agreement is a critical to protect the rights of the contracting parties and clearly establish each party’s rights and obligations. Although every international technology agreement is unique, our attorneys have been involved in hundreds of international technology agreements and can leverage our experience to help ensure our clients don’t experience any unpleasant surprises.

Our International Technology Transactions Expeience

We offer an efficient, practical, and results-oriented approach to technology transactions, including:

  • Clear and concise written agreements

  • Useful and comprehensive legal advice

  • Strategic counseling in risk assessment, development of business and licensing models, and protection of intellectual property and technology assets

  • Effective and cogent negotiating, with an understanding of industry practices, common pitfalls, and creative solutions

Select Representative Matters

  • Represented investor in mobile app development company

  • Assisted buyer of intellectual property and stock in oilfield equipment company

  • Represented seller of assets of internet-based affinity/rewards program company

  • Represented Texas tech services company in its multi-million dollar acquisition of Ohio corporation.

  • Drafted and negotiated employment and agency agreements for foreign agents of U.S. energy company.

  • Drafted manufacturing agreement for patented furniture products

  • Negotiated and drafted joint development agreements for software company

Additional Insights Regarding International Technology Transactions

For more information on international technology transactions legal issues, see our Legal Insights and Industry Solutions pages.