The Power of a Well-crafted Agreement

Properly crafting a license or other agreement relating to technical innovation or other intellectual property requires an in-depth understanding of both the technical details and the impact that a licensing arrangement has on the legal rights involved. A well-crafted IP agreement is also a key component in commercialization efforts, both if the IP has been in-licensed or is being out-licenced. As lawyers that regularly navigate the Canadian and US registration systems for obtaining licensable IP rights, we are well positioned to assist in crafting agreements that allocate risk appropriately and anticipate future issues with validity and enforcement. Our firm has been involved in IP asset sales agreements, licensing deals, settlement agreements, internal corporate licensing and sales (particularly important in the case of Canadian trademark portfolio management), co-ownership agreements, and non-disclosure and confidentiality agreements.

Protecting Software

Our lawyer’s backgrounds in electrical engineering and computer science prove useful when assisting clients in preparing software-related agreements such as application development agreements and terms of use for mobile applications or web sites and services. We believe that, in order to draft agreements that adequately protect software, a lawyer must first understand software. For example, an understanding of the difference between an executable file and source code can be critical when drafting application development agreements to ensure proper ownership in the underlying software and to ensure that deliverables are properly defined. Since each of our lawyers has written computer code in a past life, they have a solid understanding of both software at a technical level and the legal issues that arise in the development and use of software.

Critical Analysis

We are also well-positioned to assist other lawyers, accountants, investors, or business owners in evaluating IP portfolios as part of a due diligence project. We have further been called upon to analyze the validity of a competitor’s IP, particularly patents, and provide suggestions for potential work-arounds, and to assess the likelihood of infringement.