Software

Our attorneys have decades of experience representing software companies, from startups to national and international software and service providers. We represent both licensors and licensees in the drafting and negotiating of software license and subscription agreements. We also assist our software clients in securing intellectual property rights and protecting those rights through litigation. We have also worked with numerous institutions on their acquisition of key elements of their information technology systems, including critical enterprise and human resources software.

With regard to patent prosecution, we have experience in a variety of software-based applications including encrypted vehicle-to-vehicle communications, anti-virus software that monitors computer systems by continuously generating cognitive fingerprints, back-end software systems for collaborative, real-time, simultaneous software development and big data analysis, and image processing and image recognition software systems. We have continued to successfully issue numerous software patents despite multiple patent-eligibility rejections under 35 U.S.C. 101.

We assist our software clients not only with patent prosecution and licensing, but also with:

• Establishing ownership of work product created by employees and independent contractors
• Copyright registration
• Compliance with data privacy regulations
• Website Terms of Use and related policies and notices
• Patent and trademark portfolio building, including strategy, counseling and prosecution
• Litigation and post-grant proceedings at the USPTO
• Counseling on licensing and other IP-based transactions

Examples of our work include:

• Representing the developer of a comprehensive Retail Management and Point of Sale software-as-a-service offering in protection and licensing of its software, as well as branding and trademark protection.
• Representing two state judicial systems in licensing enterprise software to manage their operations.
• Represented a company that provides software for intelligent video monitoring products that sued larger competitor.
• Drafting a form of Software License agreement for the developer of Student Housing software and assisting with the transition from an on-premises license to a cloud-based service.
• Serial representation of multiple private colleges and universities in at least five states in negotiating licenses of enterprise finance and human resources software and associated implementation services.
• Represented large provider of IT management solutions in lawsuits in U.S. District Courts for the Eastern District of New York and the Northern District of California.
• Resolving an ownership dispute for the developer of institutional laundry management software, helping the developer grow and sell its business, buy it back, then finally sell it again.
• Defended a software company in a patent case brought by a competitor in U.S. District Court for the Eastern District of Texas.
• Representing the developer of a cloud-based supplier information management system in preparing and negotiating its software-as-a-service agreement with multiple entities, including private and state-run educational institutions.
• Represented many software companies over the years in patent litigations brought by numerous non-practicing entities.
• Represented the developer of an encrypted vehicle-to-vehicle communications software system in selling its business to a multinational semiconductor and telecommunications equipment and software provider.