science & technology

As a specialist corporate and technology practice, a very large proportion of our work involves the exploitation of technology and scientific innovation. We advise on the legal aspects of a vast range of arrangements in these fields including the following:

 
technology

• technology transfer agreements;
• technical assistance agreements;
• open source software licensing;
• data protection;
• the law of know-how and confidentiality;
• source code escrow arrangements;
• intellectual property law;
• IP licensing, assignment and mortgaging;
• IT security;
• liability in digital content;
• ISP regulation;
• domain name registration and disputes;
• e-commerce;
• IP disputes (eg passing off claims);
• IT and other outsourcing ;
• IT contracts litigation;
• taking security over IP rights; and
• website design agreements.

 science

• the law relating to semi-conductors;
• university spin-outs;
• the law relating to nano materials and nano technologies;
• science and technology co-operation agreements;
• collaborative R&D agreements; and
• know-how and technical assistance arrangements.

This work has led us to develop sub-specialisms within these broad headings and these are briefly discussed below. 

Semiconductor law – IP rights, wafer supply agreements, transitional services arrangements – through our work with clients in the semi-conductor industry, we are able to advise on a variety of corporate and commercial arrangements relating to semiconductor manufacture.  We can negotiate wafer supply agreements and transitional service agreements, IP assignments and IP rights in semiconductors generally.  We also have experience in acquiring semiconductor businesses.

 
Technology Transfer – spin-outs and technology licensing - we advise clients on the appropriate mechanism for the transfer or licensing of IP rights and on the necessary technical assistance arrangements (eg to demonstrate technology and provide training). In doing so, we advise on the law relating to confidentiality and know-how.  In fact, many technology transfer agreements contain both a licence of IP and know-how together with provisions as to technical assistance.  We are particularly known for our work on university spin-outs and regularly act for investors (and syndicates) on the corporate, commercial and technology aspects of these transactions.

 
Open Source Software Licensing - open source software is licensed on the basis that the licensee has a degree of freedom to use the software and, although the degree of these freedoms varies, they are generally considered to fall under four heads, namely the freedom to:

• run the software for any purpose;
• study how the software works and to adapt it;
• redistribute copies of the software; and
• improve the software, and release those improvements under similar terms.

Although there is no strict definition of open source software, it is possible to generalise with a degree of accuracy.  In general therefore, OSS is licensed on standard terms for all, is available for redistribution without payment and is provided with the source code.  There are numerous other facets to OSS but this is a useful starting point.  Our technology lawyers are able to guide clients through the complexities of OSS licensing and its interface with applications and systems.

 
Liability for digital content and data protection in the context of the internet and new technologies – we have particular experience of advising clients on liability and data protection issues in the context of the worldwide web.  We act for established web 2.0 (and beyond) businesses through to start-ups, all of whom require expert advice on their potential liability (whether for defamation, IP infringement or secondary liability in relation to obscene images) for their digital content.  We are also regularly interviewed by the media on such issues.

 
As a specialist corporate and technology practice, much of our work involves IP law.  Whilst we do not prosecute IP registrations (we believe this work is best handled by trade mark agents and patent attorneys) we advise on all other aspects of IP law.  We advise on both registered rights (ie right's registered by an official IP body such as the UK Intellectual Property Office) and unregistered rights (those which arise automatically).  We also provide expert assistance with contentious IP disputes, such as claims for “passing-off”. 

By way of background, unregistered rights offer protection to the owner against infringement and use, with examples including copyright, unregistered design rights, unregistered trade-marks and confidential information (and know-how). Registered rights confer a monopoly allowing the owner to prevent others from using the right (except with permission). Examples in the UK include patents, trade-marks and registered designs.

As regards IP law, we can advise on:

 
Trade-marks and the law of passing off - a trade-mark is a sign or device used in the course of a trade to distinguish the trader’s products or services from those of others. Trademarks may take the form of shapes, colours or sounds. To be registrable, they must:

• be capable of being represented graphically;
• be distinctive;
• be capable of distinguishing goods or services; and
• not be excluded by statute.

Unregistered trade-marks offer protection through an action for “passing off”. This is an action which relies upon demonstrating that a misrepresentation has been made which could mislead the public.  We can advise on the merits of such claims and handle both the bringing of such a claim and defending such claims.

Design rights – these are rights which protect the appearance of a product (or part of it) and the right may be registered or unregistered. To be registrable, a design right must:

• be novel;
• be of individual character; and
• not be excluded by statute.

Copyright – the law of copyright in the UK protects the expression of original artistic, musical, dramatic and literary works from reproduction.  This protection is particularly relevant to media and technology businesses as it extends to computer programs, broadcasts, sound recordings, films etc. and lasts for 70 years after the death of the author (except for sound recordings and broadcasts, which are protected for 50 years from publication).

Patents – these are monopoly rights which protect many types of new invention provided they involve an “inventive step” and are capable of industrial application.  The protection, once granted, lasts for 20 years (in the UK and most other countries) and requires an application to be made and proven (the inventor is not entitled to a patent as of right) which results in the invention being made public in return for the limited grant of the monopoly right over its exploitation.