The Technology, Intellectual Property & Outsourcing Group at Kaye Scholer is a specialty practice group dedicated to technology and intellectual property litigation, intellectual property protection, technology transactions, outsourcing, and privacy and data protection. The Group has been selected as Outside Intellectual Property Counsel and Outside Technology Counsel by leading international and Fortune 500 corporations in a range of industries. It is regularly retained by Chief Financial Officers, Chief Sourcing Officers, Chief Security Officers and Chief Privacy Officers as well as the General Counsels' office of technology and mainstream companies.
Kaye Scholer's outsourcing practice and attorneys are highly rated by Chambers and the firm has handled critical technology transactions and domestic and offshore information technology, business process, business transformation and knowledge processing outsourcing transactions for Fortune 500 clients. These have included one of the largest supply chain and procurement outsourcing arrangements entered into to date as well as combined domestic and offshore outsourcing transactions involving service providers in the U.S., Europe, India, Latin America and the Philippines. The firm brings business intelligence to its engagements. For example, it created an open source software policy for a Fortune 500 company, and it designed common service levels and statements of works to be used by clients across all of their business divisions and with all of its vendors in order to allow our clients to perform a comparative evaluation of outsourcing service providers and to use outsourcing contracts as an "early warning system" to identify and rectify problems at an early stage. Kaye Scholer's substantive intellectual property law experience and the membership of attorneys with engineering and scientific degrees, as well as real-world experience in the IT industry, distinguishes it from other outsourcing practices. The Group has a depth of experience with the legal and business aspects of technology. The Group has built and carefully maintains a reputation for developing innovative solutions in business technology law. It prides itself on being responsive and cost-effective and being part of its clients' budgeting process.
A description of Kaye Scholer's Technology, Intellectual Property & Outsourcing practice, the professional recognition it has received, and recent representative outsourcing and technology transactions are provided below.
Practice Description and Honors Awarded to Kaye Scholer
Professional Recognition Given Kaye Scholer's Outsourcing Group and Practice Chairman
- Recent surveys have consistently recognized Kaye Scholer as having one of the country's leading IP, IT and outsourcing practices. In the 2005, 2004 and 2003 surveys of clients and outsourcing lawyers conducted by Chambers USA and Chambers Global, Kaye Scholer received a high ranking in the category for law firms, and our outsourcing practice chair, William A. Tanenbaum, was highly ranked, designated a "Leading Individual" and received "Recommended" ratings in Technology & IT Outsourcing and in Business Process Outsourcing, where he was named a "Notable Practitioner" at the national level. Chambers concluded that Kaye Scholer has a "highly talented [IT and outsourcing] team" that has "secured a number of important deals of late" and that the firm is "a player in technology transactions."
- Chambers identified Mr. Tanenbaum as "an internationally recognized intellectual property, technology and outsourcing lawyer" who has "long-standing experience in complex computer and technology agreements" and whom market commentators specifically admire for "the breadth of his knowledge, encompassing IP law, software licensing and outsourcing agreements." Mr. Tanenbaum's expertise and leadership in outsourcing was recently recognized when he was selected as the neutral arbitrator to resolve a $30 million outsourcing dispute. In addition, Westlaw and Celesq® AttorneysEd Center sponsor "Tanenbaum on Technology Law," a monthly series of speeches by Mr. Tanenbaum.
Kaye Scholer's Intellectual Property Expertise in Technology Transactions and Outsourcing
- Because of Kaye Scholer's expertise in patent, copyright and trademark law, the firm provides intellectual property services in outsourcing transactions and in addition is often retained as special intellectual property counsel in technology and outsourcing transactions. The firm is also retained to build outsource providers' patent portfolios and to use the proper combination of intellectual property rights to protect customers' innovations in business transformation and other outsourcing.
Distinguishing Features of Kaye Scholer's Outsourcing Practice
- Kaye Scholer's Technology, Intellectual Property & Outsourcing Group has extensive experience handling the offshore and domestic IT, business process and business transformation outsourcing projects for a variety of clients in a wide range of industries. Kaye Scholer's outsourcing practice is distinguished by the depth of its expertise in negotiating IT contracts; the membership of true intellectual property lawyers in the Group, many of whom have engineering as well as legal degrees and substantive knowledge of advanced technology; the firm's overseas offices; the Group's experience with regulations and exchange rules applicable to outsourcing in the financial services industry; and the Group's work on leading-edge and over-the-horizon issues. Kaye Scholer has recent experience managing the risks of open-source software and creating corporate policies for cross-border data transfers. The firm also has a relationship with an Indian law firm specializing in outsourcing in order to secure local legal services quickly and on a time- and cost-effective basis.
- One of the partners in the Technology, Intellectual Property & Outsourcing Group is a Certified Information System Security Professional (CISSP) and other Group members have MBAs. The outsourcing practice is headquartered in New York and operates with teams of lawyers from our Los Angeles, Washington, London, Chicago, Frankfurt and Shanghai offices. Kaye Scholer co-sponsors a series of monthly IT and outsourcing seminars with the Association of Corporate Counsel.
Primary Practice Areas
- Technology and Intellectual Property Litigation and Arbitration. The lawyers in the Technology, Intellectual Property & Outsourcing Group work with attorneys in Kaye Scholer's Patent and Commercial Litigation Groups and are assisted by the firm's permanent staff of science advisors, all of whom have Ph.D. degrees. The Technology, Intellectual Property & Outsourcing Group has a reputation for settling litigations on favorable terms for its clients.
- Securing Patents, Copyrights, Trademarks, Domain Names and other Forms of Intellectual Property. The Group provides strategic patent and intellectual property counseling and protects our clients' IP portfolios.
- Outsourcing. The Group handles IT, BPO, BTO and knowledge process outsourcing. It has an in-depth knowledge of intellectual property law and the role of technology in business transformation that is not often found in outsourcing practices at other law firms.
- Technology Transactions. The Group is retained to handle a full range of technology transactions, with a particular emphasis on information technology agreements for both mainstream and technology companies.
- Online Business and Services. The Group handles contracts and provides counseling for infrastructure, business-to-business and retail E-Commerce and Internet services, including data management and data exchange among our clients and their customers, suppliers, business partners and multiple outsource providers.
- Doing Business in China for the 2008 Olympics and 2010 World Expo. The Group's lawyers work with attorneys in our firm's Shanghai office to assist clients in establishing and expanding business in the People's Republic of China, with an emphasis on assisting mainstream companies in establishing IT infrastructures in the PRC and assisting technology companies in establishing and expanding their business in the country.
- Privacy Compliance Programs, Data Protection and Cross-Border Data Flow. The Group approaches the various aspects of data privacy and security matters to be handled on an integrated basis as part of a "data management" paradigm. The Group implements privacy compliance programs for clients and works with lawyers in our London office to provide international advice for global companies exchanging data between Europe and the U.S, and between the U.S. and offshore outsourcing companies.
- Implementation of Electronic Signature and Digital Authorization Programs. The Group advises clients of all sizes on the design and adoption of electronic signature programs and computer security programs, including those using digital authorization technology.
Signature Features of Our Practice
The signature features of the Technology, Intellectual Property and Outsourcing Group are as follows:
First, many of the Group's members have both law and engineering or scientific degrees and are admitted to practice before the Patent and Trademark Office. They have a demonstrated ability, and a manifest interest, in following ongoing technology developments and advising clients accordingly. These lawyers draft patents, and therefore understand technology at the same level as the client's technical staff. The Group can readily communicate with the client's legal, technical and business staffs on detailed technology issues in litigations and transactions.
Second, our litigators have the technology and litigation experience to handle complex disputes. They are also skilled in arbitration and in negotiating technology settlements.
Third, accomplished technology and intellectual property lawyers draft the technology agreements handled by the Group. Because the technology itself and the technology business requirements drive the transactions, the Group believes that lawyers must understand the technology and business practices in order to structure and negotiate contracts for critical business functions. One of our lawyers is a Certified Information System Security Professional, which is a technical IT certification.
Fourth, the core members of the Group work full-time on advanced technology matters. They have the depth and range of experience to handle complex transactions and provide innovative approaches to contracting for new uses of technology. They also have extensive experience in representing clients in negotiations with large, established vendors and service providers as well as emerging technology companies with leading-edge products. One of our lawyers previously worked in the legal staff in the outsourcing division of IBM. Another worked in-house representing a large customer of IT products and services.
Fifth, unlike boutique intellectual property law firms, the patent prosecution teams at Kaye Scholer include lawyers from our corporate, finance and securities groups as well as PTO-admitted patent lawyers. Thus, the patent teams consist of lawyers with expertise in two areas: patent lawyers who understand patent prosecution, and corporate lawyers who understand advanced financial and business transactions.
Sixth, our office in Shanghai is staffed with attorneys with degrees from top law schools in both the United States and Asia. They are uniquely positioned to understand the needs of U.S. corporations and to counsel on the nuances of the law and doing business in the People's Republic of China.
Multidisciplinary Approach
The core members of the Technology, Intellectual Property and Outsourcing Group work exclusively on technology transactions and intellectual property matters. Most of them practice in our New York office, while others practice in our Washington, DC, Los Angeles and London offices. Lawyers from other practice groups at Kaye Scholer are part-time members of the Group, and when beneficial to the client, the Group forms multidisciplinary teams. For example, the Group frequently works with lawyers in the real estate group for technology hosting and off-site agreements; with the tax, corporate, and securities group for complex transactions; with labor lawyers for employment issues; with our Washington trade regulation group for export control and encryption; with our Los Angeles entertainment lawyers for content deals; with our London office for trans-Atlantic U.S. and European privacy and data exchange issues; with our London and Frankfurt offices for European aspects of deals; with our Latin American group for business transactions in Latin America; with our Shanghai office for Asian deals; and with our bankruptcy group for reorganization issues. One of Kaye Scholer's strengths is that lawyers in all of the firm's practice groups are experienced and active in high-technology matters. As noted, the Group is assisted by a staff of scientific advisors (all with Ph.D.'s) who are full-time employees of the firm.
Information Technology Seminar Series
The Technology, Intellectual Property and Outsourcing Group runs an Information Technology Seminar Series co-sponsored with the American Corporate Counsel Association ("ACCA") which provides New York Continuing Legal Education credit for in-house counsel. The programs are held once a month (usually on the first Wednesday) and cover a wide range of topics of interest to in-house counsel. The Group also sponsors half-day legal conferences with the ACCA where emerging issues, such as privacy, outsourcing, litigation, IT transactions, IP protection, IT employment issues, service level agreements and Open Source software, are discussed in-depth. Mr. Tanenbaum also provides monthly speeches in a conference series called "Tanenbaum on Technology Law" sponsored by West LegalEd and Celesq® AttorneysEd Center.
Practice Description
Information Technology Transactions for Large Institutional Users
- Representation of large companies in structuring, negotiating and drafting complex high-end software, hardware, Internet and other information technology transactions, particularly with respect to the licensing, acquisition and development of computer-related products and services and IT and Internet agreements in the aftermath of September 11.
- Outsourcing, ASP, external service provider agreements, Web-based services and online subscriber agreements, including overseas outsourcing arrangements and business process outsourcing ("BPO") (see discussion below).
- Development of service level agreements, scope-of-work descriptions, and performance and payment metrics for high-end IT projects.
- Preparation of Requests for Proposals ("RFPs") and evaluation and selection of technology vendors.
- Structuring and managing negotiations and contract administration with large vendors, including in combination with consultants hired by clients.
- Implementation, systems integration, custom software and application development projects.
- Off-site hosting, disaster recovery, business continuation and backup agreements.
- Computer and data security, including encryption and export controls.
- Technology transfer and development agreements.
- Technology and intellectual property aspects of strategic alliances, joint ventures, mergers and acquisitions and other business partnerships.
- Open source code licensing programs.
- Negotiating and drafting "Business Associate Agreements," "Chain of Trust Agreements" and other agreements required under the HIPAA regulations between health care institutions and companies that provide services to them (vendors, outsource providers or other service providers).
- IT and IP agreements for health care institutions.
Intellectual Property Protection
- Strategic intellectual property counseling for mainstream as well as technology companies, including setting up client patent committees to identify and prioritize intellectual property. Our strategic patent counseling is designed to create a long-term intellectual property strategy and provide day-to-day protection of our clients' creative work product. In addition, commercially effective licensing of our clients' intellectual property to third parties, and licensing of technology from third parties, are guided by the results of this strategic intellectual property counseling.
- Intellectual property protection, including obtaining patents, trademarks, copyright registrations and domain name protection and coordinating international intellectual property programs.
- Patent protection for software and Internet technology, business methods and financial products and services.
- Offensive Patent Protection: The offensive reasons for obtaining patents include: protection of the client's technology in order to stop its competitors from using that technology; protection of the client's right to use its own technology (in the face of the patent portfolios of competitors, for example), even if the client does not intend to bring suit against third parties; and protection of a client's contributions to strategic alliances, joint ventures, customer partnerships and other forms of collaborative business endeavors. The Group drafts U.S. patent applications and conducts proceedings in the United States Patent and Trademark Office. The Group implements and coordinates international patent protection programs with the assistance of the firm's foreign offices and its network of foreign patent agents and lawyers.
- Defensive Patent Protection: The Group assists our clients in evaluating the legitimate patent rights of third parties. The Group's defensive patent work includes analysis of the present and future positions of our clients in their markets in comparison with that of their competitors, and application of the patent portfolios of these competitors to clients' businesses in order to assess the strength of infringement claims and the potential for mutually beneficial licensing opportunities.
- Copyright protection and licensing of digital works.
- International patent, trademark, copyright and domain name registration programs.
- Intellectual property aspects of technology transactions.
- Use of intellectual property rights to protect client interests in strategic alliances, joint ventures and other business partnerships.
- Intellectual property audits and IP due diligence, including for acquirers of or investors in technology ventures. The Group conducts intellectual property due diligence and audits of our clients' existing products, services and patents and their new products and services, and ongoing research and development efforts. Part of the audit involves verifying a client's ownership of intellectual property rights in work product developed by employees or independent contractors or acquired by contract.
- Content and New Media agreements.
- See "Patent Prosecution Practice" for further information about patents in the "Signature Features of Our Practice" section.
- Business Method and Financial Industry Patents: Kaye Scholer is retained by major bracket financial services firms, insurance companies, and other companies involved in the financial services industry. Specific areas in which the Group has drafted patents for clients include financial products and services, financial market trading platforms, electronic online processing of credit and cash transactions, financial data mining, electronic financial document parsing and both commercial and consumer online product pricing and purchasing.
Representative Recent Technology and Outsourcing Engagements
Set forth below are some representative projects that the Group has worked on. While not listed below, the Group has also handled litigation over outsourcing and technology service agreements.
- International Procurement Outsourcing. Kaye Scholer handled one of the largest international procurement outsourcing transactions with one of the world's largest providers for a client's operations in Europe, Asia and the U.S. The transaction covered procurement of goods and services, including advertising and marketing.
- Multi-million Dollar Series of Software and Customer Relationship Agreements with Multiple Vendors in Different Offshore Countries. Over the last several years the firm has been asked to handle a succession of domestic and offshore outsourcing agreements for different business units of one of our Fortune 150 clients with providers having both U.S. and offshore business units. The firm developed contract documents to allow the client to monitor and compare the performance of different vendors on a unified basis and to have an "early warning system" of potential performance problems. Kaye Scholer developed Statements of Work to provide services to different business units of the client and at the same time provide each unit with the benefits obtained by other business units.
- $100 Million Combined Domestic and Offshore IT Outsourcing Deal. The firm was retained by a Fortune 500 company in the document and communications automation business to handle a $100 million combined domestic and international IT outsourcing transaction (including software development). As in many transactions, the firm reviewed the work of the outside consultant hired by the client, modified the detailed RFP documents, prepared the Master Services Agreement, worked on the business continuity and disaster recovery plans, and advised the executives managing the project. This illustrates the combined business/legal modifications the firm contributes to an outsourcing project to improve upon common industry practice and better protect its client.
- Offshore Outsourcing for a Car Rental Company. Kaye Scholer negotiated and drafted an agreement for IT, call center and customer relationship management services for a car rental company as part of a series of transactions handled for this client. Several different IT platforms have been involved.
- Multi-Phase Offshore IT Outsourcing for a Major Logistics and Supply Management Company. Kaye Scholer was recently retained by this company to assist in its large strategic multi-phase, multi-country project for offshore outsourcing of software development and IT management functions.
- Combined IT, Hosting and Real Estate Agreement for a Leading Financial Services Company. Kaye Scholer negotiated and drafted an agreement for computer equipment to be used in performing critical functions in the trading operations of a major financial services company at an off-site facility, and for related services. The firm's real estate practice group was involved in providing the client with advice in obtaining important real estate rights which are not commonly provided in hosting transactions. These gave the client direct rights with the landlord of the hosting facility that could be potentially valuable if the hosting company were to suffer financial reverses.
- Multi-Phase U.S. and Indian Offshore Services Agreement with Option for Captive Indian Unit. For a major insurance company with computer systems and businesses in the U.S. and other countries, the firm negotiated and drafted a multi-phase agreement for the outsourcing to India of software and database development, as well as maintenance and related computer services. The different phases were for the successive expansion of the scope of services to be provided by the outsource provider, which had both U.S. and Indian operations. The agreement included an option for the client to establish a captive offshore development entity in India.
- IT and Software Development Outsourcing for a "Big Box" Retailer. Kaye Scholer was retained by a nationally known "big box" retailer for a large IT outsourcing project. The scope of the agreement covered software development as well as legacy software support. Key issues included structuring the documentation and practices to protect and retain the client's intellectual property and IP rights during and after outsourcing, coordinating work with the client's other software suppliers and licensors, and handling complicated open source issues.
- Representation of Vendor in Outsourcing Business with International Data Privacy Compliance Requirements. The firm represented a vendor providing outsourcing services in the medical device, imaging and software business. The firm's services have involved cross-border data flow and privacy law compliance, and IT aspects of other regulatory compliance in the U.S. and other countries.
- $50 Million Outsourcing and Technical Services Agreement for a Large Pharmaceutical Company. Kaye Scholer negotiated and drafted agreement documents for hardware and technology services for one of the world's largest pharmaceutical companies in a $50 million international transaction involving multiple major vendors. Speed was of the essence in this deal, and the firm worked closely with lawyers in the client's General Counsel's office in drafting a comprehensive set of agreements.
- Handled Emergency Outsourcing Problem and Follow-Up Insourcing. Kaye Scholer was retained to assist a large financial institution on an emergency basis in connection with an outsourcing project that encountered problems and had potential litigation and regulatory components. A complex series of agreements were drafted, litigation was avoided, and the firm worked closely with the General Counsel's office on reversing the outsourcing and ultimately insourcing the work. Complicated negotiations with the multiple parties and legal teams were involved in resolving this situation on a favorable basis for the client.
- $10 Million+ Outsourcing for a Major Real Estate Brokerage Company. The firm handled the revision and negotiation of an agreement for the provision of software application and related services to a major real estate brokerage company. Online services were an important part of this transaction.
- Large Indian Offshore Development and Maintenance Agreement. Kaye Scholer handled the outsourcing to India of software and database development services, and software maintenance and related services. This transaction involved a major reservations system.
- Two-Phase Indian Offshore Agreement. The firm negotiated and drafted a two-phase Indian offshore agreement, including software development and maintenance, for a major insurance/financial services firm.
- Domestic IT and Data Management Outsourcing for a Professional Sports Association. The firm redrafted and negotiated a series of agreements for software licensing, hosting services, project management, requirements analysis, and other professional services related to software implementation, including training, consulting and technical support services, as well as ongoing software maintenance and support, for one of the largest sports organizations. Special statutory data privacy issues were involved.
- $10 Million+ Electronic Distribution Services Agreement for a Financial Services Institution. Kaye Scholer negotiated and drafted a complex master agreement and numerous amendments, Project Plans and Statements of Work for interactive services, software development and Web site development for one of the world's largest financial services institutions.
- Database Management Services. On behalf of a media company, the firm negotiated and drafted an agreement for planning, implementing and providing IT support services for the installation and use of a large database vendor's products and services.
- IT and Related Services Agreement for a Real Estate Services Company. The firm negotiated and drafted a series of agreements for systems integration, software development and consulting services for a client which provides services to commercial real estate tenants (including telecommunications and disaster recovery services).
- Advised Retail Rental Company on IT and Satellite Services. Kaye Scholer advised and shared work with the General Counsel's office of a major retail company, whose business is the rental of certain consumer products, on aspects of the revision and renegotiation of an outsourcing agreement for IT services, including the delivery of certain IT services using a satellite network.
- $10 Million Master Services Agreement for a Travel Services Company. The firm negotiated and drafted an agreement for call center and customer relationship management services, and IT support, for a major travel-related services company. A wide range of Statements of Services was involved, as well as close work with the client's computer security department.
- $1 Million Indian Offshore Agreement for a Corporate Services Company. The firm negotiated and drafted an Indian outsourcing agreement for outsourcing auditing and other business services, and IT support for the same, for a major corporate services company. Turnaround time and similar performance levels were important aspects of these negotiations.
- $100,000+ Outsource Agreement for a Major Insurance Company. Kaye Scholer negotiated and drafted an agreement for the outsourcing of development, operation and hosting services for a major insurance company.
- IT Support and Help Desk Agreement for a Major Insurance Company. The firm negotiated and drafted an agreement for the provision of support services, including customer support, help desk support, and support in the operation and use of computer systems and software applications, for a major insurance company.
- Agreement with European Provider of Software Systems for a Leading Financial Services Company. The firm negotiated and drafted an agreement with a European provider of customized electronic trading software systems, including software development, maintenance and support services, for our client, a leading U.S. financial services company.
- Master IT Services Agreement for a Major Financial Services Company. Kaye Scholer negotiated and drafted an agreement for software development, management and support services for a major financial services company.
Additional Information
