IP & Tech Transactions
Scroll down to view and listen to content related to IP and tech transactions practices. We are adding content to our site on an ongoing basis – be sure to subscribe to our newsletter below to stay updated!
The practice area of intellectual property (IP) is broad and can take many forms. Â
– IP prosecution lawyers work with clients on strategy for protecting their technology, brands, and “soft IP” (such as trade secrets), and work on drafting patent, trademark, and other applications to be filed with the USPTO and its international equivalents.  Within this area, there are several sub-specialties, such as pharmaceutical IP, semiconductors, or hi-tech products.  Many patent attorneys have a technical science or engineering background. Â
IP prosecution can be an attractive option for attorneys interested in understanding and analyzing the company’s technology and/or valuable brands on a deep level and a more consistent pace (compared to the faster pace and “ups and downs” of traditional corporate practices). Â
– Transactional IP (or “tech transactions”) lawyers, work on IP-related deals, such as technology/software licenses, trademark/brand licenses, media-related deals, joint IP development agreements, and other commercial contracts (this is often referred to in law firms as “standalone licensing” work). Transactional IP lawyers also participate in the IP- and technology-related aspects of mergers and acquisitions as “specialists” on the deal team, performing due diligence of IP assets and contracts and negotiating IP-related provisions (often referred to as “M&A support”). Tech- and startup-focused firms are more likely to do more standalone licensing work, while traditional “white-shoe” firms are more likely to do more M&A support.  Tech transactions can be an attractive option for attorneys interested in the technology that helps the business run, working on several transactions at a given time, and analyzing, drafting and negotiating contracts related to technology and other IP.Â
(Note: This page does not include content related to IP litigation; please visit our “Litigation” page for content related to litigation more generally.)
Featuring Crowell, Sterne Kessler, Fish & Richardson, and Fenwick
Watch our interesting and fun panel discussion about the different types of intellectual property work at top firms, including patent prosecution, patent litigation, and IP licensing/technology transaction, and how to position yourself for a career in IP law.
Featuring:
-Mark Supko, Crowell
-Joseph Schenck, Fenwick
-Marsha Gillentine, Sterne Kessler
-Rae Crisler, Fish & Richardson
WATCH
Summer Associate Hub’s video series, where we interview BigLaw attorneys about their practice in under 6 minutes (also known as 0.1 billable hours).
Morgan Brown
Tech Transactions Associate
Check out these short and helpful videos from Hotshot, a video-based learning platform used by top law firms and law schools.
These videos are a great way to get an overview of IP/Tech Transactions practice, to determine if this practice area is right for you, and to prepare for networking calls and interviews.
These links will direct you to Hotshot’s website, where you can sign up for a free trial and access to 3 free courses. To watch more, use promo code “SAHub” to get 30% off Hotshot’s student rate (which brings the cost down to just $6 per month). Use your .edu email address to sign up, and if your school already subscribes to Hotshot you’ll automatically be added to its account!
Hotshot
Due Diligence for M&A Deals
A primer on the due diligence process in M&A deals, including what due diligence is, its impact on a deal and tips for conducting a diligence review.
Hotshot
M&A Practice
What is M&A practice? What do deal lawyers do? This course will help you understand this practice area, whether you want to be an M&A lawyer or not.
Note: Although this video covers M&A generally, this topic is an important part of technology transactions practice, which includes participating in the IP-related aspects of M&A deals.
Hotshot
Deal Structures
Understanding deal structures is critical for anyone involved with M&A deals. This course explains the three main deal types: asset acquisitions, stock acquisitions and mergers.
LISTEN
"What the Heck Do You Do?"
Career Podcast
Albert Tawil, IP/Tech Transactions Lawyer
This is a podcast interview with Albert Tawil, Founder & CEO of Lateral Hub & Summer Associate Hub and former IP/tech transactions associate, about the day-to-day work of a tech transactions attorney. At the time of this interview, Albert was an associate in the Tech Transactions group in Fenwick's NY office.
Check out these episodes from the How I Lawyer Podcast, a series by Georgetown Law professor Jonah Perlin. Â
Jonah talks to attorneys throughout the professions about what they do, why they do it, and how they do it well.
This podcast series is a great way to learn directly from attorneys about what the day-to-day work is like in different practice areas.Â
Pia Owens, In-House Tech Lawyer
In this episode, Jonah Perlin speaks with Pia Owens. Pia has worked as a technology lawyer at a big law firm, in state government, and now for a technology company based in Massachusetts where she is responsible for commercial agreements, software licensing, cybersecurity, and data privacy. This conversation covers how Pia handles new and complex cybersecurity regulatory regimes, how she drafts contracts, the differences between practicing as a technology layer in an in-house setting as outside counsel and as a government attorney.
PRACTICE
Check out these interactive exercises brought to you by Praktio, a modern training platform for reviewing and drafting legal documents. Use these exercises to practice these tasks, make mistakes, and learn from them!
Praktio has teamed up with Summer Associate Hub to make these exercises available to law students for free – these links will direct you to Praktio’s platform, where you may be required to create a free account.Â
These courses are a great way for law students to get a glimpse of tech transactions practice. We selected these exercises as only some of the key tasks on which tech transactions associates work (and, of course, this practice involves many other types of exercises).
Praktio:
Doing Due Diligence
Learn how to review target contracts and chart key data points for practical use.
Due diligence is important for tech transactions attorneys, who are usually tasked with reviewing the company's IP-related contracts and other commercial agreements. Due diligence goes hand in hand with drafting disclosure schedules, which are the subject of the exercise below.
Praktio:
Disclosure Schedules
This course teaches how disclosure schedules work with the larger agreement and the diligence process to allocate risk between the parties.
Disclosure schedules are a central part of tech transactions practice, as the team is often tasked with managing the lists of contracts and IP in the disclosure schedules, as well as exceptions to statements made in the agreement regarding the target company's IP, based on the team's due diligence.
Praktio:
Confidentiality Agreements
Learn the key components, best practices, and pitfalls of confidentiality agreements.
Particularly in "standalone licensing" work within tech transactions, drafting and negotiating confidentiality agreements (aka, "NDAs") can be a common task for attorneys.
