Experience and Capabilities

_________________________________________

 

 

Practice Areas

 

Experience

 

Publications

 

Newsletters

 

Biography

 

Contact

 

Mailing List

 

Home

 

 

Learn more about how our strategic thinking can help your business.

 

 

 

Click on a link for a description of projects we have completed. 

Intellectual Property Strategy

Intellectual Property Strategy for Businesses

Technology Transactions

Software and Technology Development

Software and Technology Licensing

Patent Licensing

Standards Licensing

Sale and Acquisition of Technology Assets or Companies

Hosting and Support Agreements

Joint Venture Agreements

Government Funded Research Agreements

Non Disclosure Agreements


Organization and Funding of Start-Ups

Digital Media Transactions

 

On-Line Content Distribution Agreements

 

Intellectual Property Litigation

 

Patent Litigation


Software License Litigation

Trademark Opposition

Opinions Regarding Patent Infringement or Validity

 

Patent, Trademark and Copyright Prosecution

 

Patent Prosecution

 

Trademark Prosecution

 

Copyright Registration

 

Legislative and Regulatory Affairs

 

 

 


Intellectual Property Strategy
 

 

Intellectual Property Strategy for Businesses


For a major media company, formulated and executed a strategy to avoid possible patent suit by one of two rival digital media distribution vendors where both vendors were being used by different divisions internationally.

 

For an emerging nanotechnology company, formulated and executed a strategy to establish  certain rights over technologies developed under Government grants, subawards and awards to company’s subcontractors.  This involved negotiating multi-way agreements between a prime government contractor, the company and an academic institution.

 

 

For an image processing technology company, formulated criteria to determine the appropriate international jurisdictions to seek patent protection in order to achieve the most cost-effective strategy. This involved careful analysis of the technology, its vulnerabilities, and the expected modes of infringement.

 

For a growing internet messaging software company, formulated patent application strategy and directed patent application process for the underlying inventions embedded in the software.

 

For a major audio-equipment manufacturer, analyzed a seminal invention regarding color image processing. Identified three rapidly growing product applications in the consumer electronics space, directed the development of prototype implementations for each, approached several vendors to present the technology and conducted negotiations with one of them in order to grant rights to the technology.

 

For an image processing software development company, development of derivative inventions that improved on their seminal patent application, including inferior patentable approximations of the invention, in order to develop an intellectual property position for a software product.

 

On behalf of a rapidly growing medical information software company, the planning of an intellectual property strategy involving the strategic planning of the patent application process, dealing with HIPAA-related requirements and their impact on licensing terms and liability issues, and the negotiation of several customer contracts.



To Top



Technology Transactions


Software and Technology Development


Analyzed technology development process required in order to comply with requirements of a license-in of technology, to be part of a license-out to customers of major European satellite television software technology company. Planned, drafted and negotiated a licensing program for the product line. This activity involved close interaction with the company's engineering and business management in order to provide customers with the capability to customize certain parts of the code without losing control of the intellectual property.

 

Representation of a major European satellite television technology company: Drafted and negotiated development outsourcing and license transaction involving internet browsing software technology from a start-up computer software manufacturer, for the field of interactive television.



To Top



Software and Technology Licensing


Representation of an early stage company in renegotiating distribution of its license: Analyzed existing license entered into by predecessor CEO, determined points of negotiating leverage, instituted pass-through royalty structure to better extract revenue from benefit conferred by the license.

 

Representation of a private equity investor in a first-stage technology company: Analyzed status of ICANN contract with the U.S. government and its impact on a potential license between a portfolio company and a government contractor with control over the DNS (Domain Name System). Drafted and negotiated a domain name technology license to a company with governance level control of internet domain names.



To Top



Patent Licensing


Representation of a major media company in negotiating a special license with a company holding a patent portfolio claiming a specific audio CODEC.

 

Representation of a major media company in negotiating a patent portfolio subject to a standard setting.



To Top



Standards Licensing


Analyzed impact of proposed licensing terms of streaming and digital rights management technology company on strategic control of secure music distribution service on behalf of a major international media company. Negotiated the terms under which a new consortium it was participating in could outsource its digital rights management process to a major internet content streaming technology company.

 

Analyzed technical impact of Secure Digital Music Initiative on behalf of a music publishing trade organization, representation at the Secure Digital Music Initiative in order to monitor the development of a proposed copyright protection technology standard.



To Top



Sale and Acquisition of Technology Assets or Companies


Representation of a major media company acquiring the intellectual assets of a music distribution website, including rights to make copies of and distribute encoded music.

 

Representation of a global semiconductor manufacturer acquiring a smaller network communication chip developer: Drafted and negotiated acquisition agreement which included specific sections regarding appropriate and technically accurate milestones for target management and other representations regarding the technology and intellectual property, "development outs," examination of patent portfolio and examination of other intellectual property documentation.

 

Representation of a rapidly growing communications software company: Directed the acquisition of the intellectual assets of one of its foreign contractors, where the contractor principals became employees of the company. This involved selecting appropriate local counsel in a Latin American country, coordinating due diligence in the foreign country, and structuring the acquisition in order to minimize risks with regard to legal issues in the foreign jurisdiction.



To Top



Hosting and Support Agreements


For a major media company, negotiated a hosting and support agreement for a marketing database product long relied upon but subject to a sunset by the new acquirer of the technology.


To Top



Joint Venture Agreements


Representation of a major European satellite television technology company: Drafted and negotiated joint venture agreement with a licensee of their interactive television software for the development of specific product attributes for licensee's consumer electronic product line.



To Top



Government Funded Research Agreements


For a nanotechnology device company, negotiated several government funding agreements with the prime contractor and for the subawardee, including agreements on the disposition of developed intellectual property.



To Top



Non Disclosure Agreements


Negotiated for a nanotechnology company a “materials transfer agreement” permitting material samples to be provided with limiting covenants regarding information derived from them while protecting the customer's interest in its device.

 

Negotiated multi-party non-disclosure agreements between prime contractor, subcontractor and several academic institutions.



To Top



Organization and Funding of Start-Ups


Representation of private equity investors: Drafted, negotiated and conducted due diligence for several private equity investments in the software technology space. Responsibilities included advising the investor on aspects of the target company's dealings that raised strategic issues, and, in several cases, assisting the investor, as a member of the board, to renegotiate the deals on behalf of the company.

 

Representation of an emerging software technology company in its first and second round of private financing: Responsibilities included preparation of corporate documentation and structuring disclosures in order to mitigate the risks of trade secret impairment through due diligence.



To Top

 

Digital Media Transactions


On-Line Content Distribution Agreements


Analyzed requirements and determined licensing terms necessary to allocate risks associated with providing proper protection of digitally distributed content. Negotiated a series of copyright licenses between a major record label granting rights to distribute their sound recordings over the internet, where the consideration included equity participation in the licensee. These licenses required careful consideration of the copy control technologies, provisions dealing with possible failures of the technology and appropriate risk allocation and mitigation mechanisms.

 

Analyzed technology risks and appropriate licensing terms to mitigate risks on behalf a major music publishing consortium. Drafted and negotiated a series of music publishing agreements granting rights in fixation and distribution of works through the internet, including the license portion of a settlement agreement in connection with a landmark litigation regarding unauthorized music distribution on the internet.

 

Representation of a world-wide cable music television network. Drafted and negotiated several internet audio-visual work distribution cross licenses with a well-known live music venue that also involved equity participation.



To Top


Intellectual Property Litigation



Patent Litigation


Representation of an owner of a patent in the content downloading field.

 

Representation of a defendant in a patent litigation in the on-line music distribution field.



To Top



Software License Litigation


Enforced an exclusive software license in the data encryption and computer security field, resulting in a successful renegotiation of sunset terms to non-exclusivity and reversion of the licensed intellectual property rights on a date certain.



To Top



Trademark Oppositions


Advising U.S. fashion label on strategy regarding opposition by European user of the mark in Europe.



To Top



Opinions Regarding Patent Infringement or Validity


Advising a major media company regarding threats over use of mobile phone related interactivity patent.

 

Advising a computer graphics software company regarding a threat over use of a data structure subject to patent claims.



To Top

 

 

Patent, Trademark and Copyright Prosecution


 

Patent Prosecution


Procuring a patent in the digital data security as part of an international strategy.

 

Procuring a patent regarding detection of small illicit nuclear devices.

 

Procuring patents in the nanotechnology field.

 

For an audio equipment manufacturer, advising on the claim drafting in a patent application for a digital signal processing technique in order to provide the greatest possible protection of the invention.



To Top

 

 

 

Trademark Prosecution



Registration of trademarks in the U.S. and overseas.



To Top

 

 

 

Copyright Registrations


Registration of software, songs, sound recordings and logo graphics.



To Top

 

 

Legislative and Regulatory Affairs



On behalf of a music publishing trade organization, prepared test and analysis of streaming technology in order to demonstrate how fixed copies of sound recordings are created during streaming. Drafted comments submitted to the Copyright Office regarding technical ramifications of a proposed amendment to the Copyright Act intended to address digital distribution of music.

 

Analyzed impact of Federal Communications Commission proposed regulation of copyright protection technology for digital television on interests of a music publishing trade organization. This effort involved participation in the drafting of comments in response to the FCC Notice of Proposed Rulemaking.



To Top

 

© Sabety+associates 2009