Technology & IP Transactions

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Overview

Kirkland has a very strong tech practice, which is driven by its stellar reputation. - Chambers USA, 2019

Our Technology & IP Transactions Practice Group focuses on business transactions driven by intangible assets, technological assets and attendant intellectual property rights. The practice has been a continuous part of Kirkland & Ellis for nearly 40 years and includes a global team of more than 70 lawyers fully dedicated to negotiating, structuring and closing complex transactions relating to technology and IP.

  • In addition to being an integral part of Kirkland’s market-leading M&A practice by complementing our M&A deal teams, we lead negotiations and structure transactions driven by innovation or technological opportunities. These include joint ventures, strategic alliances, licenses, outsourcing, collaborations and other strategic commercial agreements.
  • We collaborate with other core practice groups at the Firm – including the Corporate/M&A, Restructuring, and Tax practices – on all technology and IP aspects of public and private corporate transactions, including mergers and acquisitions, spin-offs, divestitures, joint ventures, financings, and restructurings.
  • Approximately half of our lawyers have degrees or professional backgrounds in technical areas.
  • In addition to understanding law and technology, we are experienced, practical deal lawyers who understand how to structure, negotiate and close complex transactions.

Our practice is unique in the diversity of our clients and the range of the work undertaken. Because we represent clients ranging from Fortune 100 companies to middle-market companies to growth-stage businesses, we see business arrangements from all perspectives and understand the diverse needs of all parties to a particular transaction.

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Experience

We are experienced with helping clients achieve their objectives through a broad range of collaborative arrangements among businesses. These arrangements include stand-alone joint ventures involving the creation of new entities, cross-equity and minority equity investments, as well as complex contractual alliances. The success of these joint ventures and alliances depends largely upon the ongoing ability of the parties to work together, and our attorneys are skilled at fostering a cooperative relationship among parties during the negotiation process and know how to structure joint ventures and alliances to include incentives and safeguards to promote their success. Our practice not only includes IP, transactional and tax experience, but also antitrust and other disciplines that are necessary to properly structure these arrangements.
We have one of the largest, most experienced sourcing and complex information technology transactions practices of any firm worldwide. Our attorneys have represented both customers and service providers in matters involving manufacturing, financial services, utilities, consumer products, pharmaceuticals, oil and gas, mining, technology and other industries as these companies undertake strategic sourcing initiatives. Our experience covers the full range of information technology outsourcing (ITO) and business process outsourcing (BPO), including strategies around digital transformations and transitions to as-a-service models. Our lawyers are dedicated to providing outstanding client service through close and careful coordination with all parties involved in each of our matters. We also have strong working relationships with various outsourcing advisors and consultants. Our lawyers work diligently to structure and negotiate terms and conditions, service levels, and pricing structures for our clients.
Our attorneys represent clients in software-driven deals for solutions and platforms used in broader digital ecosystems. This experience includes software development agreements, IT platform agreements, implementation and integration agreements, and managed services. We have a broad range of experience working with software delivery models and cloud computing, including on Software as a Service, Infrastructure as a Service, and Platform as a Service bases.
Our attorneys have extensive experience advising clients on collaboration agreements to develop or commercialize new technologies, products and services. Building on our experience with joint ventures and strategic alliances, our attorneys have advised clients on collaboration contracts that require anticipating and addressing many different future business and legal scenarios. Our experience includes development and commercialization of a wide variety of products, including software, pharmaceuticals and medical devices. In addition, our group advises on ancillary agreements stemming from these arrangements, including supply, distribution, reseller and commercialization agreements.
We have substantial experience in the full range of transactions in the pharmaceutical, biotechnology, life science and seed industries. Our representations in this field range from some of the world’s largest pharmaceutical companies to biotechnology companies still in the development stage, as well as private equity and venture capital investors. Our work includes a number of different transaction types, such as university collaborations, technology transfers, joint ventures, collaboration and development agreements, acquisitions and sales of product lines, NDAs and ANDAs, and related distribution, manufacturing, and supply agreements.
Our attorneys have extensive experience representing both licensors and licensees of intangible assets. Our matters include license arrangements involving patents, technology, copyrights, trademarks, content, data, databases and software. Our experience includes ordinary course licenses but also licenses with complicated aspects, such as for mission-critical technology or intangible assets with significant commercialization potential. We recognize the driving business and legal interests of both the owners/licensors as well as the licensees, which are frequently aligned but can occasionally diverge depending on the nature of the licensed asset, its potential use and commercialization cases, and the relative economic and time horizon positions of the parties. Our attorneys are also skilled at identifying and planning with respect to the impact of related areas of law on licenses, including tax, antitrust and bankruptcy laws.
We have unique experience in transactions driven by brand assets. Our attorneys have been involved in the establishment of joint ventures and complex corporate transactions where the core asset of the relationship is a brand licensing arrangement. We also represent clients in straight brand license transactions. Our attorneys understand the key business considerations for licensors, which can include brand integrity and minimum commercialization goals, and the considerations for licensees building a business line on a licensed brand asset. We also have experience in bankruptcy law issues that affect brand licenses, including the structuring of bankruptcy remote vehicles to protect the licensee.
Our attorneys represent clients in structuring and negotiating agreements relating to data, databases, data analytics, and data services as well as related infrastructure and processing arrangements. These agreements include transfers, licenses/feeds, and service agreements relating to corporate data or natural person data, as well as M&A, joint venture and strategic alliance activity driven by data-driven products and services.

These transactions present unique issues given the nature of data as an asset, the contours of IP protection for data and databases, and the expanding universe of laws governing the collection, security, use, sharing, distribution and disposal of certain types of data, in some situations with criminal penalties attached. As part of structuring data-driven relationships and allocating attendant risk, we counsel clients on the policy frameworks, laws and regulations of key jurisdictions. This work covers certain U.S. federal agencies and U.S. states actively limiting data collection and usage, as well as Europe, which continues to be at the forefront of legislative activity governing the collection and distribution of information about natural persons.
Our attorneys have long-represented participants in “monetization” transactions driven by intangible assets. Such monetization transactions are usually bespoke matters involving innovative structures at the intersection of finance, corporate law and IP law. Kirkland brings the necessary corporate, tax, IP, secured lending, and restructuring experience needed for these complex transactions. Our past deals have included royalty buy-outs, revenue interest buy-outs, IP holding companies, patent pools/trusts, IP-focused investment funds, and secured financings with patents or brands as collateral. In addition, we work with our securitization practice in whole company and IP-based securitizations.
Our Technology & IP Transactions Practice Group works closely with Kirkland’s leading Transactional Practice Group as advisers to public and private companies on all types of M&A transactions, including negotiated and unsolicited acquisitions, public company mergers, going-private transactions, spin off transactions, acquisitions of minority interests, carve-outs, divestitures, tender and exchange offers, and joint ventures.

The Technology & IP Transaction Practice Group focuses on identifying and structuring the unique technology and IP aspects of these corporate transactions, particularly in situations where the technology and IP aspects are a leading driver of the opportunities or risks relating to a deal. This includes IP-intensive transactions, transactions in certain segments like software or pharma, and corporate carve-outs. Attendant experience includes conducting due diligence and negotiating terms around all IP aspects, including patent, copyright, trademark, rights of publicity, data, databases, and software.
We also work closely with Kirkland’s leading Restructuring Practice Group, and are skilled in dealing with the difficult planning issues that can arise with respect to intangible assets before or during a restructuring. Restructuring laws around the world can accord different treatment to intangible assets – particularly with respect to on-going agreements relating to intangible assets – and can drive complicated planning and structuring mechanisms relating to special purpose vehicles and security interests.

Law Firm of the Year: Technology Law

“Best Law Firms,” U.S. News and World Report and Best Lawyers, 2019

Highly Recommended Transactions Firm

IAM Patent 1000, 2015–2020

Top Tier for Technology: Transactions

The Legal 500, 2018–2020

Practices