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Intellectual Property/Technology

We provide comprehensive service in a specialty area that is set apart by the speed of change.

Our Intellectual Property/Technology Group has a diverse practice focused on helping our clients gain the most from their intellectual property and technology assets. These types of assets are unique, and the applicable law is complex and not always well settled, often requiring analysis of the interplay of the laws of various jurisdictions and/or the applicability of existing laws to new forms of technology and IP.

We represent clients in all stages of development from start-ups to large public companies. These companies operate across diverse sectors, including computer software/hardware, bio-pharmaceuticals, fashion, toys, games, other consumer products, hospitality, energy, financial services, semiconductors, and medical devices. We address cutting-edge issues in areas such as mobile, interactive, and cloud-based applications and platforms. We also advise on digital rights management issues that are important to both leadership and investors in emerging growth and traditional enterprises alike.

We manage international IP portfolios for our clients and protect copyrights and trademarks through comprehensive, worldwide enforcement programs that rely on intelligent, cost-efficient decision-making tailored to each client’s strengths and priorities. Our intellectual property experience extends deep into the hospitality and fashion industries as well as to the negotiation and acquisition of film, television, music, and publishing rights. We have also represented clients at the Trademark Trial and Appeal Board and in ICANN proceedings, and counsel regularly on all aspects of fair use.

We handle all forms of stand-alone transactions involving intellectual property and technology assets, such as content creation agreements, technology transfer agreements, development agreements, R&D agreements, licenses, strategic alliances and other forms of collaborations, co-promotion and marketing agreements, internet/e-commerce arrangements, IP acquisition agreements, and outsourcing agreements, among others. We also collaborate with our colleagues in other practice groups to provide value-added legal teams in corporate mergers (where Intangible assets such as technology and IP can be one of the most valuable and important parts of a transaction), financings, and restructurings involving technology and intellectual property assets.

Case Study

International Business Practice

Foreign Issuer NASDAQ IPO

Foreign Issuer NASDAQ IPO

The Situation

A United Kingdom-based biotechnology company wanted to raise capital in the United States through an Initial Public Offering (IPO) and list on a US national exchange (Nasdaq) for the offering. Among the issues that needed to be resolved:

  • Deciding whether to remain a UK corporation or reorganize into an offshore jurisdiction, such as the Cayman Islands;
  • Finding a solution to the UK stamp tax imposed on share transfers of UK issuers which the US securities market electronic transfer system cannot accept responsibility for; and
  • Addressing a number of accounting statement timing and presentation issues to satisfy the UK issuer and SEC regulations (Form F-1)

The Solution

The GEABP team, working with UK counsel, helped the UK issuer explore different alternatives to satisfy the various issues and stakeholder constituencies:

  • After evaluating many jurisdictional and reorganization issues, including potential tax considerations of the pre-public shareholders of the UK issuer, it was determined that the UK issuer would remain as a UK corporation for operational, research grant and tax considerations. However, that decision raised the second consideration of being able to issue securities in the US and the transfer of shares in the US markets without having the UK stamp tax burden.
  • In order to avoid the UK stamp act on US market transfer, the GEABP team introduced the UK issuer to the American Depositary Share (ADS) concept and made an introduction to Bank of New York Mellon as an ADS issuer.
  • Throughout the IPO process, as the offering shaped up, the GEABP team advised the UK issuer on its SEC disclosure about the business operations, securities offered, management, and financial statement requirements. The GEABP team negotiated and advised on the offering documentation, all of which was under New York law.

The Result

The UK issuer successfully completed its IPO in February 2022, listing on Nasdaq. The securities offered were shares in the form of ADSs and warrants for ordinary shares that would be converted to ADSs upon the warrant exercised for deposit into the DTC system.