Technology Licensing
Rich has extensive knowledge and experience in the field of technology licensing. His practice spans the
deal-making process, from planning and structuring deals to negotiating and drafting durable agreements.
He has successfully negotiated and drafted hundreds of contracts on behalf of IT clients in the healthcare,
financial, manufacturing, industrial and education marketplaces. Rich has also developed
and implemented many profitable and low-risk strategic relationships with suppliers and vendors.
Software Licensing and Platforms
- End User
- Data Center Hosting
- Software Development
- Business Associate Agreements/Subcontractor BAAs
- SaaS, Web-based, On Premises, Remote/Hosted/ASP
Business Agreements
- Data Center Hosting
- Reseller, VAR and OEM, Strategic Alliance
- Joint Ventures, Joint Development, Technology Sharing
- Marketing, Referral/Commission, Distributorship
- Teaming Agreements
Service Agreements
- IT Outsourcing, Business Office Outsourcing
- Installation/Implementation, Maintenance and Support
- Consulting Services, Independent Contractors
- Non-Disclosure/Confidentiality
- Statements of Work (SOWs)
Representative Transactions
-
Representing a software reseller, structured reseller agreement to trigger super rights upon the occurrence of specified actions by manufacturer.
OutcomeClient’s reseller rights converted to perpetual licensing with no royalties, full development rights with no reversion, and five years of continuing rights to all new development from the manufacturer. -
Engineered the $22m sale of a declining business unit, and the $2.3m sale of a different declining business unit for the same client.
OutcomeTwo profitable divestitures that reduced ongoing expenses, eliminated liability risk, and protected end users’ investments in the divested product lines. -
Representing a software manufacturer, drafted VAR agreement with reseller that preserved my client’s right to develop competing
technology. Client later developed a competing product; reseller responded by ceasing to perform and ceasing royalty payments; VAR agreement terms prevailed.
OutcomeNegotiated settlement resulted in payment of outstanding royalties and mutual commitment to a new reseller relationship that preserved my client's right to sell competing product. -
Renegotiated software company’s upstream supplier contracts to reduce consulting fees.
OutcomeClient reduced consulting spend by $2.1m with no project delays and no quality loss. -
Developed a profitable, low-risk global distribution model for legacy products. Managed the international legal implications, negotiated the deals, and wrote the contracts.
OutcomeNew source of license and service fees with minimal expense and limited legal exposure. -
Revised client’s contract templates to allow mid-term fee increases if client’s suppliers increase fees.
OutcomeUpstream suppliers increased fees, and client was able to protect its profit margins in multi-year contracts. -
Engaged to assess legal risk and contract practices of a growing IT consulting firm positioning itself for acquisition.
OutcomeA written series of recommendations designed to:
- Improve speed-to-contract without creating additional risk
- Reduce expenses and legal risk by modifying sales force accountability
- Reduce billing ambiguities, errors, and write-offs
- Create online database to manage contract observance and legal compliance
- Streamline contract templates to be more “sellable” without losing protection
- Improve relationships among sales, legal, accounting, and operations teams
