Our Services

Further Information

We adopt a collaborative approach with our clients to provide practical and commercial legal, advice.  Our clients tell us that we are their trusted advisors and a valued addition to any project team. We understand that commercial agreements regulate the relationships which are responsible for ensuring the continued success of our clients’ businesses.

Through our extensive ‘in-house’ experience, we recognise that legal agreements must accurately reflect the commercial deal. We invest time in our client relationships with the aim of gaining as full an understanding of our clients’ businesses as possible so we can better appreciate their commercial objectives from the outset. By adopting a collaborative approach with our clients, we gather essential contextual background which renders our advice both practical and commercial.

In our general commercial practise, we also advise on public procurement (watch a video of Victoria Wright discussing public procurement disputes), data protection electronic communications and privacy and building brand equity.

We make extensive use of high-tech tools to enable on-line collaboration, file sharing and the ready exchange of knowledge and best practice with our clients. We have also developed a proprietary methodology for the review, revision and reporting of commercial agreements to our clients.

With a large number of clients in the science and technology sector, our lawyers have significant experience of assisting on the negotiation of commercial agreements relating to the creation, protection and exploitation of technology (including technology licensing) and associated intellectual property rights as well as on data protection, electronic communications and privacy issues.

To learn more about particular areas of our Commercial & Technology practise, simply select a topic:

• Data Protection, Electronic Communications & Privacy
• Technology Licensing
• Science & Technology
• Building Brand Equity
• Agency & Distributor Arrangements
• Franchising
• Public Procurement & Contracting
• Software Development
• Supply Chain Management

Data Protection, Electronic Communications & Privacy

We are often asked to advise on the Data Protection Act and on liability issues relating to e-commerce and electronic communications. Our general e-commerce practice includes work on:

• Privacy policies;
• Terms and conditions of use for websites, vouchers and online competitions;
• Data protection policies and electronic communications policies;
• Database rights and the applicability of the Data Protection Act to proprietary software;
• Software licensing; and
• The collection of personal data from subscribers to online services and the sharing of such data with commercial partners.

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Technology Licensing

As a technology law practice, we routinely come into contact with IPR and technology licensing on a day to day basis. We advise both suppliers and customers in relation to all the usual licensing solutions ranging from standard EULAs (including click-wrap and shrink-wrap forms of delivery of such licences) to the licensing of bespoke software solutions developed for a particular customer or application and through to patent and know how licensing between universities and private sector corporations and institutions.

Our work is sometimes focussed on major projects where technology will be licensed as part of a much wider business initiative.  A good example would be the implementation and integration of a complete SAP system into a client’s business which can take many months to co-ordinate and usually involves a number of parties (eg the reseller, the customer, the project manager, the hosting solutions provider and the software development consultants). We have recently worked on a number of such projects.

Licensing is not without its complications.  We understand the importance of ensuring that the legal documentation regarding the provision of ancillary services provided alongside an IP licence (such as implementation, support and maintenance and consultancy services) is drafted in a way that ensures our clients obtain full value from the licensed technology solutions. In addition, licensing by its very nature means the licensee is reliant on an ongoing commercial (and legal) relationship with the rights owner.  This requires careful consideration to ensure the geographic scope, uses and duration of the licence are correctly drawn.  These considerations apply in most forms of technology licensing arrangements, including patent collaboration and development arrangements.

We advise on the legal aspects of a vast range of arrangements in technology licensing including the following:

• patent, R&D and know-how sharing and collaboration agreements;
• software and other IPR licensing (including open source licences);
• source code escrow arrangements;
• systems integration agreements and SAP projects generally;
• software development and maintenance agreements;
• application service provision, hosting and other ICT related agreements.

Recent examples of our work in this field include advising a large enterprise retailer on its SAP implementation, advising a University on its collaboration (in certain patented techniques) with an overseas based corporation and advising a team within a hospital on the licensing and exploitation of certain medical technologies.Back to top

Science & Technology

As a specialist corporate and technology firm based in the heart of the UK’s knowledge economy, we are regularly asked to advise clients in the fields of science and technology on the appropriate mechanism for the transfer or licensing of their IP rights and on the necessary technical assistance arrangements.

We represent both academic institutions and commercial collaborators in the development, protection and exploitation of their proprietary technology, particularly in the field of nanotechnology. In doing so, we are regularly asked to advise on many different types of commercial agreements in this sector and also to advise on the law relating to confidentiality and protection of know-how surrounding our clients’ proprietary IP.Back to top

Building Brand Equity

We appreciate that the goodwill attached to a company’s brand is perhaps the most important intangible asset it can have and that brand equity represents the value of that brand in the marketplace.

We help companies to develop, protect and exploit their brand equity through our work in the following areas:

• the licensing of IP and franchising;
• brand protection in commercial agreements;
• advising on digital content and potential liability in this area;
• sponsorship and merchandising arrangements;
• domain name registration and the resolution of domain name disputes;
• the effective vesting of intellectual property rights;
• IPR related disputes – notably trade mark infringement and passing off claims;
• company registration, corporate governance (notably CSR) and compliance.

Examples of our recent work in this area include advising one of the UK’s leading internet based companies on its liability for user generated content on its website; the negotiation of sponsorship agreements with one of the Premier League’s leading football clubs and the effective resolution of a series of trade mark infringements claims brought against one of the UK’s leading suppliers of sanitary goods.Back to top

Agency & Distributor Arrangements

It’s surprising how often we are asked to advise clients on the rights of agents and distributors after their appointment has been made and, usually, when the relationship between the parties is under strain.  The fundamental legal differences between the two are of critical importance and companies often regret the lack of consideration given to the arrangement at the time it was first put in place.  We have gained extensive experience of negotiating exit arrangements in these situations and have done so in a number of cross-border situations.

As part of our commercial practice, we are also called upon to advise on the implications of appointing an agent or distributor (alongside other supply models ranging from sales brokers to franchise arrangements) and to document the terms of appointment (including advising on the appropriate nature of the relationship to be entered into and any territorial restrictions placed on such appointment) and negotiate any transitional provisions required on the termination of the relationship.

Obviously many businesses choose to appoint agents or distributors to ensure their goods or services reach as wide an audience as possible. In law, the distinction between an agency and a distributor relationship is an important one as an agency often gives the agent a right to compensation under the Commercial Agents (Council Directive) Regulations 1993.  By contrast distributors will not have such a right unless agreed between the parties but the arrangements under which a distributor is appointed may have significant competition law implications. We advise clients through this legal and regulatory maze.  

Recent examples of our work in this area include advising a client on the termination of its existing supply arrangements across Continental Europe and advising another client in the medical sector on the distribution arrangements for a new device across Europe and the United Kingdom.Back to top

Franchising

Franchising has become increasingly common with the globalisation of business as companies seek to build their brand equity across new markets. We advise both franchisees and franchisors on the franchising and business expansion, including:

• franchise agreements;
• confidentiality agreements;
• acquisitions and disposals of new and established franchise operations;
• international franchising, including master franchise and joint venture agreements;
• protection of intellectual property and branding;
• software licensing; and
• resolution of disputes between franchisors and franchisees.Back to top

Public Procurement & Contracting

White & Black has developed significant expertise advising clients through the tender process for the procurement of services by public bodies, notably in the health and medical sectors.

There are many obligations placed on public authorities in the procurement of services. By instructing a lawyer who has a working knowledge of the regulations governing procurement (including the minimum time limits used for the various award procedures available, the application of the selection criteria put in place by the public body and the obligations placed on the public body during the post-award stage) our clients ensure their tender will have the greatest chance of success and that any discrepancies in the selection process can be identified and dealt with in the appropriate manner.

We can advise on available exemptions and on compliance with the principles and rules for co-operation and competition issued by various contracting authorities, such as the NHS.

Recent examples of our work in this field include a contested contract award by a primary care trust, advising on the implications of an “in-house” bid and advising a client on its communications with a commissioning body in relation to a proposed re-tendering exercise.Back to top

Software Development

Advising on software development is at the heart of our work.   A very large proportion of our clients are involved in the development of software – some in-house, some using outsourced expertise and others through a combination of the two. This has brought our team into contact with a vast range of situations where our legal and sector expertise have added value to the commercial process.

We’ve advised clients on the development of software components to integrate into existing systems working alongside licensed software through to advising on bespoke software development projects for start-up businesses.  Our knowledge and expertise in this field is not sector-bound; in fact we’ve worked with clients from almost every walk of business life including clothing retailers, beverage distributors and property developers.  Whatever the business, the need for informed technology law advice is the same.

We also make sure that our lawyers acquire technical skills beyond their legal skills. As a result, our lawyers have sufficient technical expertise to assist clients in the drafting of acceptance testing provisions, change control processes and service level schedules.  This ensures that our clients’ arrangements have sufficient contractual certainty whilst allowing the flexibility (even where non agile processes are used) to ensure the software development project can evolve to overcome any practical obstacles encountered during the process.  It also enables our clients to test the performance of the developed software to ensure that it operates in accordance with any agreed specifications prior to full implementation.   

Recent examples of our work in this area include the negotiation of software development agreements for a well known fashion house and an outsourced project (to India and South Africa) for website design and software development in the health and fitness sector.Back to top

Supply Chain Management

In the course of business, many companies sub-contract some or all of their obligations to third parties.  Before deciding to do so, a certain amount of due diligence will need to be conducted in a confidential manner.  We assist clients through this process, starting with a simple non-disclosure agreement and working through to a full sub-contracting agreement.  We have drafted complex “back to back” arrangements in a number of sectors including a recent project which involved the a multi-party contractual arrangement between a manufacturer based in Eastern Europe, a UK based contractor and a series of other UK based sub-contractors and a finance house.  

Obviously, an effective sub-contracting arrangement requires that key obligations are tracked through to the sub-contracting agreement. In particular service levels and key performance indicators need to be calibrated against the performance of a sub-contractor. We use our experience in negotiating master service agreements at each level in the supply chain to advise our clients on these and other risk and liability issues.
We advise clients on the agreements that arise in the management of their supply chain.  Sometimes we act for the supplier (for example we recently advised one of the world’s leading suppliers of wine on its logistics, warehousing and distribution arrangements) and sometimes sitting within the supply chain.  

We have also advised clients on the disputes which inevitably arise in commercial life as elements of the supply chain fragment either as a result of a company’s insolvency or because of service issues.  A recent example of our work in this field involved a dispute arising as a result of the insolvency of a sales broker which sat between our client (an overseas based supplier of beverages), one of the leading supermarkets and a bank.  The claim involved unravelling the complexities of the supply chain to identify the proper entitlement of the parties to both goods and the proceeds of sale of goods.  

As a result of the enactment of the Bribery Act 2010, any contract with a large organisation will also contain an obligation to comply with certain statutory provisions aimed at reducing or eliminating corruption in business practice. Many customers will also choose to require suppliers to ensure that sub-contractors also agree to comply with these statutory provisions.  This is an area where we expect to see considerable activity over the coming months.

Recent examples of our work in this area include advising on a sub-contracting agreement arising as a result of a public procurement contract awarded by certain police constabularies and the drafting of supply chain management solutions for a UK based software business.Back to top