Robinson Cole LLP
High Contrast Mode
Marquee

Intellectual Property + Technology

Robinson+Cole's Intellectual Property + Technology Law Practice Group represents a broad range of clients in legal matters reflective of all stages of the life cycle of a company, from concept to market, from sale of companies to facilitating strategic acquisitions, to enforcing and defending intellectual property against and from third parties. Starting with an understanding of the value of your technology and intangible assets, our analyses bring a combination of our depth of experience handling intellectual property together with antitrust, tax, products liability, employment, export/import and trade regulation disciplines to your matters. With our experience assisting clients across a range of industries, such as healthcare, manufacturing, technology, consumer products, and food and beverage, we offer imaginative solutions to help you fully capitalize on the possibilities and practicalities of developing and protecting your intellectual property.

Our Services

Our practice provides:

  • Intellectual property counseling and protection, including assistance with trademarks, patents, copyrights, and trade secrets and related rights such as rights of publicity
  • Guidance in negotiating and documenting intellectual property transactions, such as licensing, service and development arrangements, and acquisitions
  • Litigation and dispute resolution related to intellectual property including patents, trademarks, trade secrets, copyrights, and more 

Our Team

Through our interdisciplinary practice and network of international contacts, Robinson+Cole’s experienced IP+T attorneys provide global representation to our clients. Our goal is to add value to our clients' business operations through strategic legal counsel that is timely, efficient, and practical, helping them achieve their goals through a comprehensive approach to the management of their intellectual property assets. In listening to our clients’ objectives, we develop a deep understanding of our clients' industries and technologies to help them anticipate and mitigate their exposure to business risk. The lawyers on our team have decades of experience successfully helping companies protect their intellectual property, domestically and worldwide. Our team includes individuals who teach intellectual property law at the university level, and who have been recognized as being among The Best Lawyers in America for their work in trademark, copyright, and information technology law. Our attorneys are sought after guest speakers, who have given presentations nationwide on a variety of intellectual property subjects.

Trademarks

The scope of our brand protection practice includes a wide variety of companies, ranging from the food and beverage industry, manufacturers, retailers and service providers, to software companies and health care providers. Our large network of international contacts and law firms allows us to assist our clients with protection of their brands, not only in the United States but internationally as well. We work to protect and defend our clients’ most valuable assets their brands - at all stages, from conception and manufacturing to marketing and sales. Our lawyers help build brand value through appropriate protection and use of trademarks. We build licensing and distribution strategies and agreements to optimize the value of a client’s brand. We offer consultation services to assist in determining where a brand needs to be protected, including state, federal, and international protections. Once a client is ready to take a brand to market, we ensure that they are compliant with packaging and advertising rules and regulations. We provide watch services to assist in policing and enforcing our clients’ rights in a brand, and when necessary, we assist with litigation.

Copyrights

In the digital age, copyright law involves more than just protecting creative works of art by authors, photographers, and artists. Computer software, advertising materials, website design, and online security measures are all issues many businesses face in the digital media landscape, and all are impacted by copyright. For those businesses, obtaining and enforcing copyrights is an essential component of their intellectual property strategy and competitive advantage. Companies faced with claims of copyright infringement need to be prepared to act quickly to avoid serious liability. With a wealth of experience and legal skills, Robinson+Cole’s Intellectual Property + Technology lawyers are prepared to assist clients with managing complex issues under federal copyright law and the Digital Millennium Copyright Act. Examples of our services include:

  • Advice on your rights and how to protect your works based on copyright law
  • Filing and registering works and expedited applications with the Copyright Office
  • Preparing and recording copyright changes in ownership and security interests
  • Providing opinions on ability to register and protect copyrights, fair use, infringement, and ownership
  • Creating copyright policies to help protect and transfer rights in works from employee and independent contractors to R+C clients
  • Copyright enforcement and licensing, to ensure control of production, distribution, and sale of work
  • Active monitoring of unauthorized use
  • Assisting with strategies to monetize copyrighted material through license transactions
  • Copyright litigation, both prosecution and defense 

Trade Secrets

Our Intellectual Property + Technology lawyers understand that for businesses to secure or maintain a competitive business advantage, their trade secrets must remain confidential. Trade secrets can involve key financial, technical, client, or business information, whether it is a new confidential manufacturing process, a secret formula, a restaurant chain’s recipe for a signature dessert, or computer technology. Like patents, trade secrets are property, and can be licensed or transferred. Proprietary information can be exposed by former employees, third parties given access, corporate espionage, or following the dissolution of a venture. Thieves also can target companies’ critical information through computer hacking. We advise on the establishment of trade secret programs and non-disclosure agreements, and counsel clients on how to best protect their trade secrets. For victims of trade secret theft, we pursue restraining orders, injunctions, and when needed, litigation to protect information and enforce their rights in court, securing relief or damages. We also defend employees who have been accused of misappropriating trade secrets. Our lawyers have extensive knowledge of all relevant civil and criminal laws, including the Uniform Trade Secrets Act, Economic Espionage Act, and the Computer Fraud and Abuse Act.

Patents

Our Intellectual Property + Technology lawyers have worked interactively with clients to prepare and successfully prosecute patent applications across a wide-variety of technologies and in many jurisdictions world-wide. We advise our clients on strategic management and growth of patent portfolios, working directly with researchers, scientists, and in-house counsel to evaluate emerging technologies, identify patentable subject matter, and pursue creative strategies to secure broad and enforceable patent protection. We have extensive experience practicing and litigating before the Patent Trial and Appeal Board at the U.S. Patent & Trademark Office, both in prosecuting successful appeals of patent application rejections and in adversary proceedings. Our experience in patent litigation and licensing helps us assist our clients in growing a patent portfolio that will best serve their strategic and competitive business interests.

IP&T Transactions

Our goal is to help our clients manage and grow their valuable intellectual property and technology assets to maximum benefit. To that end, we assist with the analysis, transfer, and licensing of intellectual property and technology assets for purposes of mergers, acquisitions, joint ventures, financing agreements, and licensing and joint ownership agreements. Our lawyers also regularly advise on maintenance of confidentiality, intellectual property ownership rights, research and development constructs involving intellectual property and distribution and supply arrangements.

Licensing + Agreements

We advise clients on all aspects of:

  • Co-branding and brand licensing, including intellectual property controls, usage limitations, guaranteed revenue and royalty streams, and product liability risk allocation
  • Business strategy and contingency planning
  • Distribution and manufacturing agreements, which help to safeguard who is manufacturing and distributing your products
  • Licensing agreements, which allow clients to permit others to use their intellectual property, but also maintain ownership and control
  • Co-packer agreements, which govern how a third party will manufacture and package products
  • Supply-chain agreements, which allow control of the movement and storage of products through commerce
  • Licensing of products and brands in television programs, video games, and feature films

Research + Development

Research is a critical component of the strategic vision and goals of companies in the health care industry. Robinson+Cole's lawyers work collaboratively with sponsors, clinical research organizations, sites, and investigators to protect our clients without harm to either the speed to trial commencement or the overall relationship.

We can assist with navigating ethical and regulatory complexities associated with research activities as well as with the heightened concerns raised by certain subject groups, such as children. Our lawyers have strong experience assisting with agreements related to clinical trials, and we provide advice on all legal issues that arise in the clinical trial setting, including:

  • Nondisclosure agreements
  • Material transfer agreements
  • Clinical trial agreements and related informed consent and HIPAA authorization forms
  • Multiparty collaborative research agreements
  • Intellectual property management arrangements and policies that go hand-in-hand with a strong research program
  • Establishing and operating institutional review boards
  • Compliance with government regulations
  • Funding of clinical research
  • Guidance relating to sponsor interactions with providers

Many of our clients also turn to us for assistance with the exploitation of results stemming from their research efforts. We implement commercialization arrangements, including licenses and invention administration agreements. We also assist with the implementation of consulting arrangements in which a consultant is engaged to assist with aspects of the research or exploitation of developments.

Intellectual Property Litigation

For many businesses, intellectual property is their most significant asset - and their greatest vulnerability. The expense associated with complex intellectual property litigation has the potential to cripple businesses and can dissuade companies from protecting their investments. At Robinson+Cole, the Intellectual Property Litigation Team works closely with the Intellectual Property + Technology Team to understand the science and technology behind our clients' business operations, enabling us to develop a litigation strategy rooted in our clients' business goals.

Our clients’ business goals and protection of assets are our top priorities. We analyze the pros and cons of each case, seeking the most cost-effective and efficient strategies to come to a fair and satisfactory outcome. Our experience helps us to reduce uncertainty by objectively evaluating cases early in the process. That experience includes representing major corporations in intellectual property litigation hotbeds, including the Eastern District of Texas, the District of Delaware, and the Northern District of California, as well as in local matters in the state and federal courts. We represent clients in diverse industries in disputes concerning the following:

  • Patent infringement
  • Trademark infringement
  • Copyright infringement
  • Trade secret misappropriation
  • E-commerce and privacy
  • Computer fraud and abuse
  • Licensing, royalty, and development
  • Unfair trade practice cases 

We pride ourselves on helping clients navigate disputes, from pre-filing negotiations to trial if necessary. We have a record of securing positive outcomes, such as obtaining summary judgment for a client in a $6 billion patent infringement action relating to jet engine fan blade technology. Our litigation lawyers closely monitor national trends in intellectual property litigation and are frequent authors on the subject. Regardless of the scope of our representation, our goal is to provide effective and efficient services to achieve our clients’ desired outcome.

Technology

Our lawyers begin with understanding the technology with which we are dealing. In this way we can offer creative and unique solutions to help our clients fully capitalize on the possibilities, potential, and practicalities of exploiting their technology. We work with our clients to devise solutions to meet their unique business needs and objectives while helping them navigate the complex regulatory environment they face. We pride ourselves on understanding our clients’ business needs and delivering cost-effective services, allowing them to focus on their businesses while minimizing their risks.

We have extensive experience with respect to system and business process outsourcing, systems and software acquisitions and equipment leasing arrangements, software development agreements, technology support and maintenance agreements, strategic alliances, and licensing agreements. Our Intellectual Property + Technology group lawyers work closely with the firm's e-commerce lawyers on the related issues of Internet website development and the legal issues associated with electronic commerce. We assist clients with a range of technology-related disputes and compliance matters.

Our lawyers help clients establish their Internet business operations. We assist with the documentation of all aspects of operating a store online, including terms governing site use, click-wrap and browse-wrap agreements, access agreements to secure areas of the site, end user license agreements, placement and conspicuousness of disclosures, co-branding, linking and framing agreements, keyword advertising, search optimization, and domain name disputes.

Clients also seek our advice on privacy and data security compliance policies, procedures, and training. We also represent service providers that offer analytical and other data collection and analysis products that ultimately allow companies to better predict market demand for products and to target and reach prospective customers.

We represent clients across various industries, from manufacturing to healthcare. In the healthcare information technology arena, we are experienced with electronic medical record systems implementations, health information exchange platforms, claim processing and clinical information systems, and other systems unique to the needs of our health care clients.

Experience


Complex Trademark Infringement

Represented a publisher in significant litigation involving complex trademark infringement, copyright ownership, and contract claims adverse to a major university.*

*Attorney Shefa was counsel in this representative litigation prior to joining Robinson+Cole.

Read More

Generative AI Litigation

Represented a visual media company in litigation against a generative AI company involving claims of copyright and trademark infringement.*

*Attorney Shefa was counsel in this representative litigation prior to joining Robinson+Cole.

Read More

Mechanical Licensing Litigation

Represented a music streaming company in litigation pertaining to mechanical licensing.*

*Attorney Shefa was counsel in this representative litigation prior to joining Robinson+Cole.

Read More


Publications


November 11, 2025

Negotiating with Big Tech: Top 3 Issues To Watch Out For

Industry Today

Focus on negotiating key issues rather than attempting to revise the entire agreement. Companies of all shapes and sizes, from start-ups to major corporations and across all industries, deal with major tech companies in some capacity. Your company is engaging with big tech to license the rights to use a variety of key solutions, which are critical to the smooth operation of your business. Often the pricing and nature of the solutions give the tech company more control over the agreement terms. As a result, your company will typically have to focus on key issues rather than attempting to significantly revise the entire agreement. This article identifies three key issues to be on the lookout for in these agreements and provides tips on the terms worth fighting for. The Right to Terminate A number one priority in negotiating any agreement should be the ability to get out of the relationship if it takes a turn for the worse. Despite what the rest of the contract terms state, you never know what could happen – the vendor could experience a major data breach, go bankrupt, or just stop providing the same caliber of services to you for whatever reason. Your company may want to stop the relationship (or at least have the leverage provided by the option to stop the relationship) and avoid having litigation as the only path forward to either correct or end the relationship. Most big tech companies will not agree to a right for you terminate for convenience at any time, however, there are other ways you may better position yourself to be able to end the agreement, if necessary. Especially for subscription-model license agreements with tech companies, it is common for the term of the subscription to automatically renew. This means that if you subscribe for a one-year term, the subscription will automatically renew at the end of that year (sometimes at the vendor’s then-current rates, which would likely be higher than what you originally agreed to), unless you provide notice within a certain amount of time before the expiration of the initial term. It is not unreasonable to push back on this and request for the agreement to renew only if you elect for renewal prior to the expiration of the initial term. There are also other termination rights you can try to work in that are not as aggressive as a right to terminate for convenience. For instance, you can negotiate for the inclusion of a termination right in the following circumstances: If the vendor upgrades or otherwise changes their software in a way that materially degrades its usefulness for your company; If the vendor is unable to provide the services for a period of time because of some unforeseeable circumstance out of its control (often referred to in contracts as a “force majeure event”); or If the service is in a downgraded state or completely unavailable to you for certain periods of time. At a bare minimum, you can request are the right to terminate if the vendor breaches the agreement or goes bankrupt, which are market standard terms. Rights and Restrictions Regarding Your Data Given the nature of the products and services they are providing, many tech companies will have access to significant amounts of your data and sometimes very sensitive data. As data continues to become more valuable (especially with advancements in artificial intelligence), we are seeing tech companies increasingly try to broaden their rights to use your data in these agreements. There is a delicate balance between ensuring the vendor has the appropriate rights they need to use your data in order to provide the contracted-for product or services, and ensuring that the vendor does not use your data for additional or unnecessary purposes. It is common to see language in a tech vendor’s agreement stating that they have the right to collect, anonymize, and aggregate your data (which can include both the data you input into their software or usage data they gather based on how you interact with their software) and use such data in a broad context, e.g., in order to improve their products and services, to train artificial intelligence, or for other commercial purposes. You can push back on this and may want to consider doing so especially if the language goes as far to say that the vendor owns that data. Push back can be “right sized” to reflect the circumstances and the amount of leverage you have and, therefore, might include rights to use only some of your data or limitations in the types of permitted uses. Many vendors will claim that their software automatically collects, gathers or tracks such information and that there is no way to “turn off” that feature for just one client. If that is the case, then you may need to assess the sensitivity of the information the vendor would have access to and the risks associated with their access and use. If the risk is too great, you may need to walk away from that vendor. Recourse for Breach Lastly, it is important that you have appropriate safeguards in place and a right to recourse for a possible breach so that you can either force vendor’s performance or collect damages for non-performance. Here are some key clauses in a tech agreement where such recourse can be incorporated: Representations and Warranties – Standard representations from a tech vendor that may be appropriate to include are: (1) that the software will function in accordance with any agreed upon specifications; (2) that it will be provided in compliance with laws; (3) that it will not contain viruses; and (4) and that your use of it will not infringe upon any third party’s intellectual property rights. Indemnification – Depending on how much of your data the tech vendor is processing or otherwise has access to, and how sensitive that data is, you may want to try to include data breaches among the claims covered by indemnification. Intellectual property infringement is also important to have covered by indemnification, and this is generally market standard so you can reasonably push for it. You can also consider other “fixes” to infringement, such as requiring the vendor to modify the software so that it is no longer infringing, obtain a license so you can still use it, or provide you with a refund. Limitations on Liability – Pick your battles carefully when it comes to carve-outs on the limitations to liability because vendors will likely push back aggressively on any proposed changes to these terms. Negotiation of the limitations on liability will be related to what you are able to negotiate for the representations and warranties, as well as indemnification. Ideally, you want breaches of representations and indemnification claims to be carved out of limitations on liability; at a minimum, it is market standard for the carve-outs to limitations on liability to include the vendor’s gross negligence or willful misconduct. The above summaries only scratch the surface on each topic. There are, of course, other elements of tech agreements that are important to closely consider. When you have limited leverage negotiating with bigger companies and you have to pick your battles, the three issues discussed here are important to keep in mind.

November 7, 2025

A Checklist for Avoiding Disputes in Your IT Projects

Corporate Counsel

Information technology projects frequently fail to deliver on expectations. They routinely fall short of the expected deliverables and take longer and cost more than planned. To the extent there is “blame” to be placed for these failures, it is often shared by both the customer and the vendor. The good news is that a major source of these problems is miscommunication and that is an area where spending time to implement a detailed agreement can save you future heartache. The following are eight of the most critical clauses where I recommend spending your attention: Clear milestones and timelines—It is hard to overstate the importance of establishing clear milestones and then setting hard timelines for achieving those milestones. Each milestone should include expected deliverables in as much detail as possible. Of course, there are times when an element of the project may include evaluation and analysis to set goals and parameters for the project. When that is the case, the parties can still establish details for the analysis stage, accompanied by overall timelines for project completion. Additionally, the parties can include clear language regarding change order processes to allow for natural project evolution. Consider also whether the arrangement would benefit from provisions outlining project managers and a meeting schedule, and requiring documentation of understandings reached in such meetings. Intellectual Property Rights—Although it is counter-intuitive, the party paying is not the automatic owner of deliverables absent an agreement outlining specific assignment of intellectual property rights. Close attention should be paid to what exactly is being developed and/or delivered to the customer. From the customer's perspective, any deliverables that are uniquely developed for the customer should be owned by the customer. Conversely, if a deliverable is not unique, the customer should have clear license rights to use the deliverable in a manner that is consistent with the operation of its business. This should include the right, where appropriate, to create derivative works and to sublicense and/or transfer the license. Consideration should also be placed on when the assignment or license occurs. The vendor will want that to be upon payment in full. The customer will want the transfer or license to be automatic so that it will have the product done to date in the event the agreement is terminated prior to completion of the agreement (especially if it needs to transition the project to another vendor). Transition Services—Speaking of transition, consider whether transition services are needed in the event that the agreement is terminated. Include details on the length of time and acceptable price to be charged for those services. In the event key personnel are critical to the project, the transition services clause can specify the continued assistance of those personnel. To the extent that the project supports significant data or content that the customer needs, the transition services provisions should provide for a timely transfer of those materials in a manner that is reasonably agreed upon by the parties. In some circumstances, a data dump is not an effective transfer and, for those situations, the customer should consider whether it needs to insist upon continued access to an archived instance of the vendor’s software or platform so that it can properly read and use its data post-termination. Use of Third-Party Materials—It is increasingly common for IT solutions to be composed of a hybrid of vendor-owned proprietary materials and third-party materials/resources. Vendors will often seek to remove any warranties or liability for such third-party materials but the vendor is typically the only party in the transaction that has privity of contract with the third party. At a minimum, vendors should be required to pass through the representations they obtained from the third party. Ideally, they are pushed to provide ordinary course representations as if it is their product and to hold liability for failures of those representations. Access to Source Code—In some cases, the technology being licensed or otherwise provided as a service is either unique in the marketplace (such that replacements are not easily found) or is mission-critical for the customer. In those instances, customers should consider whether they want to insist that the source code underlying the technology be escrowed and released to the customer on the occurrence of certain events, such as the vendor going bankrupt or deciding to no longer support the technology.In considering whether to insist on such an escrow, consideration should be given to the fact that the escrow is only as good as the vendor’s efforts to keep the assets up to date, that the release triggers will need to be very precise, and that there is a cost associated with setting up and maintaining the escrow. Additionally, if the customer does not have the right expertise to immediately start using the released materials then the escrow may not be the best solution for the customer. Security of and Right to Use Data—Most technology solutions result in considerable exposure of one party to the other party’s data. Provisions should be included to address information security requirements, including expected standards of security to be met, timely notifications of breaches, business continuity and disaster recovery protections, and appropriate limitations on the use of data. Additionally, it is typical for vendors to desire to use data collected from customers in an aggregated and de-identified manner. Close consideration should be given to whether this is acceptable to the customer. In particular, consider whether, in light of the increasing use of artificial intelligence (AI) tools, language should be added to either prohibit or restrict use of data with or to train AI tools.  Process Improvement—Technology moves very quickly. Ideally, your agreement moves with it. Pay close attention to the treatment of upgrades, releases, modifications and new versions of products and services and include language addressing exactly what will be provided to you and whether there will be extra cost for it. Especially in those circumstances where the deliverables are services, consider adding a provision requiring the vendor to use efforts to continuously improve its processes and services and to pass through those improvements to the customer. Such pass-throughs can be via updated products, services or functionality, or can be through decreases in price caused by gains in efficiency. Service levels—Most technology agreements include service levels where a technology solution is being provided via a service model. Close attention should be paid to the details of these provisions. Common items to watch for include ensuring that the exceptions to what is being measured are not excessive, ensuring that the provisions include time lines for fixing problems rather than just responding to them, addressing situations where failures are constantly repeated (even if timely fixed), ensuring any credits are of a significant amount that they create incentives for the vendor to perform, and providing for escalation so that credits are not the only recourse for the customer in the event of ongoing problems. Thorough articles could be written on any one of the eight areas I have highlighted in this article. Hopefully, this article can serve as a checklist for your next technology project and a reminder that spending time up front on the agreement between the parties can pay dividends later in the relationship for both customer and vendor. Jacqueline Pennino Scheib, a partner in Robinson+Cole's intellectual property and technology group, has more than two decades of experience helping national and international companies preserve their intellectual property and achieve their business goals. She works with clients in the areas of intellectual property counseling, prosecution, and enforcement as well as on transactions related to intellectual property, technology, and corporate law. She has a particular depth of experience with clients in the technology, manufacturing, health care, consumer product, and food and beverage industries. Reprinted with permission from the November 7, 2025 edition of Corporate Counsel© 2025 ALM Global Properties, LLC. All rights reserved. Further duplication without permission is prohibited, contact 877-256-2472 or asset-and-logo-licensing@alm.com

July 7, 2025

Can AI Be Patented? Navigating Patent Subject Matter Eligibility

Mealey’s Litigation Report: Intellectual Property
Mealey’s Litigation Report: Patents
Mealey’s Litigation Report: Artificial Intelligence
November 11, 2025

Negotiating with Big Tech: Top 3 Issues To Watch Out For

Industry Today

Focus on negotiating key issues rather than attempting to revise the entire agreement. Companies of all shapes and sizes, from start-ups to major corporations and across all industries, deal with major tech companies in some capacity. Your company is engaging with big tech to license the rights to use a variety of key solutions, which are critical to the smooth operation of your business. Often the pricing and nature of the solutions give the tech company more control over the agreement terms. As a result, your company will typically have to focus on key issues rather than attempting to significantly revise the entire agreement. This article identifies three key issues to be on the lookout for in these agreements and provides tips on the terms worth fighting for. The Right to Terminate A number one priority in negotiating any agreement should be the ability to get out of the relationship if it takes a turn for the worse. Despite what the rest of the contract terms state, you never know what could happen – the vendor could experience a major data breach, go bankrupt, or just stop providing the same caliber of services to you for whatever reason. Your company may want to stop the relationship (or at least have the leverage provided by the option to stop the relationship) and avoid having litigation as the only path forward to either correct or end the relationship. Most big tech companies will not agree to a right for you terminate for convenience at any time, however, there are other ways you may better position yourself to be able to end the agreement, if necessary. Especially for subscription-model license agreements with tech companies, it is common for the term of the subscription to automatically renew. This means that if you subscribe for a one-year term, the subscription will automatically renew at the end of that year (sometimes at the vendor’s then-current rates, which would likely be higher than what you originally agreed to), unless you provide notice within a certain amount of time before the expiration of the initial term. It is not unreasonable to push back on this and request for the agreement to renew only if you elect for renewal prior to the expiration of the initial term. There are also other termination rights you can try to work in that are not as aggressive as a right to terminate for convenience. For instance, you can negotiate for the inclusion of a termination right in the following circumstances: If the vendor upgrades or otherwise changes their software in a way that materially degrades its usefulness for your company; If the vendor is unable to provide the services for a period of time because of some unforeseeable circumstance out of its control (often referred to in contracts as a “force majeure event”); or If the service is in a downgraded state or completely unavailable to you for certain periods of time. At a bare minimum, you can request are the right to terminate if the vendor breaches the agreement or goes bankrupt, which are market standard terms. Rights and Restrictions Regarding Your Data Given the nature of the products and services they are providing, many tech companies will have access to significant amounts of your data and sometimes very sensitive data. As data continues to become more valuable (especially with advancements in artificial intelligence), we are seeing tech companies increasingly try to broaden their rights to use your data in these agreements. There is a delicate balance between ensuring the vendor has the appropriate rights they need to use your data in order to provide the contracted-for product or services, and ensuring that the vendor does not use your data for additional or unnecessary purposes. It is common to see language in a tech vendor’s agreement stating that they have the right to collect, anonymize, and aggregate your data (which can include both the data you input into their software or usage data they gather based on how you interact with their software) and use such data in a broad context, e.g., in order to improve their products and services, to train artificial intelligence, or for other commercial purposes. You can push back on this and may want to consider doing so especially if the language goes as far to say that the vendor owns that data. Push back can be “right sized” to reflect the circumstances and the amount of leverage you have and, therefore, might include rights to use only some of your data or limitations in the types of permitted uses. Many vendors will claim that their software automatically collects, gathers or tracks such information and that there is no way to “turn off” that feature for just one client. If that is the case, then you may need to assess the sensitivity of the information the vendor would have access to and the risks associated with their access and use. If the risk is too great, you may need to walk away from that vendor. Recourse for Breach Lastly, it is important that you have appropriate safeguards in place and a right to recourse for a possible breach so that you can either force vendor’s performance or collect damages for non-performance. Here are some key clauses in a tech agreement where such recourse can be incorporated: Representations and Warranties – Standard representations from a tech vendor that may be appropriate to include are: (1) that the software will function in accordance with any agreed upon specifications; (2) that it will be provided in compliance with laws; (3) that it will not contain viruses; and (4) and that your use of it will not infringe upon any third party’s intellectual property rights. Indemnification – Depending on how much of your data the tech vendor is processing or otherwise has access to, and how sensitive that data is, you may want to try to include data breaches among the claims covered by indemnification. Intellectual property infringement is also important to have covered by indemnification, and this is generally market standard so you can reasonably push for it. You can also consider other “fixes” to infringement, such as requiring the vendor to modify the software so that it is no longer infringing, obtain a license so you can still use it, or provide you with a refund. Limitations on Liability – Pick your battles carefully when it comes to carve-outs on the limitations to liability because vendors will likely push back aggressively on any proposed changes to these terms. Negotiation of the limitations on liability will be related to what you are able to negotiate for the representations and warranties, as well as indemnification. Ideally, you want breaches of representations and indemnification claims to be carved out of limitations on liability; at a minimum, it is market standard for the carve-outs to limitations on liability to include the vendor’s gross negligence or willful misconduct. The above summaries only scratch the surface on each topic. There are, of course, other elements of tech agreements that are important to closely consider. When you have limited leverage negotiating with bigger companies and you have to pick your battles, the three issues discussed here are important to keep in mind.

November 7, 2025

A Checklist for Avoiding Disputes in Your IT Projects

Corporate Counsel

Information technology projects frequently fail to deliver on expectations. They routinely fall short of the expected deliverables and take longer and cost more than planned. To the extent there is “blame” to be placed for these failures, it is often shared by both the customer and the vendor. The good news is that a major source of these problems is miscommunication and that is an area where spending time to implement a detailed agreement can save you future heartache. The following are eight of the most critical clauses where I recommend spending your attention: Clear milestones and timelines—It is hard to overstate the importance of establishing clear milestones and then setting hard timelines for achieving those milestones. Each milestone should include expected deliverables in as much detail as possible. Of course, there are times when an element of the project may include evaluation and analysis to set goals and parameters for the project. When that is the case, the parties can still establish details for the analysis stage, accompanied by overall timelines for project completion. Additionally, the parties can include clear language regarding change order processes to allow for natural project evolution. Consider also whether the arrangement would benefit from provisions outlining project managers and a meeting schedule, and requiring documentation of understandings reached in such meetings. Intellectual Property Rights—Although it is counter-intuitive, the party paying is not the automatic owner of deliverables absent an agreement outlining specific assignment of intellectual property rights. Close attention should be paid to what exactly is being developed and/or delivered to the customer. From the customer's perspective, any deliverables that are uniquely developed for the customer should be owned by the customer. Conversely, if a deliverable is not unique, the customer should have clear license rights to use the deliverable in a manner that is consistent with the operation of its business. This should include the right, where appropriate, to create derivative works and to sublicense and/or transfer the license. Consideration should also be placed on when the assignment or license occurs. The vendor will want that to be upon payment in full. The customer will want the transfer or license to be automatic so that it will have the product done to date in the event the agreement is terminated prior to completion of the agreement (especially if it needs to transition the project to another vendor). Transition Services—Speaking of transition, consider whether transition services are needed in the event that the agreement is terminated. Include details on the length of time and acceptable price to be charged for those services. In the event key personnel are critical to the project, the transition services clause can specify the continued assistance of those personnel. To the extent that the project supports significant data or content that the customer needs, the transition services provisions should provide for a timely transfer of those materials in a manner that is reasonably agreed upon by the parties. In some circumstances, a data dump is not an effective transfer and, for those situations, the customer should consider whether it needs to insist upon continued access to an archived instance of the vendor’s software or platform so that it can properly read and use its data post-termination. Use of Third-Party Materials—It is increasingly common for IT solutions to be composed of a hybrid of vendor-owned proprietary materials and third-party materials/resources. Vendors will often seek to remove any warranties or liability for such third-party materials but the vendor is typically the only party in the transaction that has privity of contract with the third party. At a minimum, vendors should be required to pass through the representations they obtained from the third party. Ideally, they are pushed to provide ordinary course representations as if it is their product and to hold liability for failures of those representations. Access to Source Code—In some cases, the technology being licensed or otherwise provided as a service is either unique in the marketplace (such that replacements are not easily found) or is mission-critical for the customer. In those instances, customers should consider whether they want to insist that the source code underlying the technology be escrowed and released to the customer on the occurrence of certain events, such as the vendor going bankrupt or deciding to no longer support the technology.In considering whether to insist on such an escrow, consideration should be given to the fact that the escrow is only as good as the vendor’s efforts to keep the assets up to date, that the release triggers will need to be very precise, and that there is a cost associated with setting up and maintaining the escrow. Additionally, if the customer does not have the right expertise to immediately start using the released materials then the escrow may not be the best solution for the customer. Security of and Right to Use Data—Most technology solutions result in considerable exposure of one party to the other party’s data. Provisions should be included to address information security requirements, including expected standards of security to be met, timely notifications of breaches, business continuity and disaster recovery protections, and appropriate limitations on the use of data. Additionally, it is typical for vendors to desire to use data collected from customers in an aggregated and de-identified manner. Close consideration should be given to whether this is acceptable to the customer. In particular, consider whether, in light of the increasing use of artificial intelligence (AI) tools, language should be added to either prohibit or restrict use of data with or to train AI tools.  Process Improvement—Technology moves very quickly. Ideally, your agreement moves with it. Pay close attention to the treatment of upgrades, releases, modifications and new versions of products and services and include language addressing exactly what will be provided to you and whether there will be extra cost for it. Especially in those circumstances where the deliverables are services, consider adding a provision requiring the vendor to use efforts to continuously improve its processes and services and to pass through those improvements to the customer. Such pass-throughs can be via updated products, services or functionality, or can be through decreases in price caused by gains in efficiency. Service levels—Most technology agreements include service levels where a technology solution is being provided via a service model. Close attention should be paid to the details of these provisions. Common items to watch for include ensuring that the exceptions to what is being measured are not excessive, ensuring that the provisions include time lines for fixing problems rather than just responding to them, addressing situations where failures are constantly repeated (even if timely fixed), ensuring any credits are of a significant amount that they create incentives for the vendor to perform, and providing for escalation so that credits are not the only recourse for the customer in the event of ongoing problems. Thorough articles could be written on any one of the eight areas I have highlighted in this article. Hopefully, this article can serve as a checklist for your next technology project and a reminder that spending time up front on the agreement between the parties can pay dividends later in the relationship for both customer and vendor. Jacqueline Pennino Scheib, a partner in Robinson+Cole's intellectual property and technology group, has more than two decades of experience helping national and international companies preserve their intellectual property and achieve their business goals. She works with clients in the areas of intellectual property counseling, prosecution, and enforcement as well as on transactions related to intellectual property, technology, and corporate law. She has a particular depth of experience with clients in the technology, manufacturing, health care, consumer product, and food and beverage industries. Reprinted with permission from the November 7, 2025 edition of Corporate Counsel© 2025 ALM Global Properties, LLC. All rights reserved. Further duplication without permission is prohibited, contact 877-256-2472 or asset-and-logo-licensing@alm.com

July 7, 2025

Can AI Be Patented? Navigating Patent Subject Matter Eligibility

Mealey’s Litigation Report: Intellectual Property
Mealey’s Litigation Report: Patents
Mealey’s Litigation Report: Artificial Intelligence
Data Privacy + Cybersecurity Insider teaser
October 31, 2024

Data Privacy + Cybersecurity Insider

October 31, 2024

False Patent Marking Claims Find New Home In Lanham Act

Law360

The “Expert Analysis” article examines how the Lanham Act could become a new avenue for false patent marking claims in the wake of the U.S. Court of Appeals for the Federal Circuit reversing a district court’s decision in Crocs v. Effervescent, which involved a false advertising counterclaim alleging Crocs falsely advertised their closed-cell resin as “exclusive,” “proprietary,” and/or “patented.” “Crocs’ advertising statements were tied to types of false statements made actionable under the Lanham Act, namely, false statements directed to the nature, characteristics or qualities of the footwear,” John wrote. “The Crocs decision suggests that false advertising relating to the patented status of products or the technology they contain may be actionable, at least where a competitor can prove that those statements would mislead customers.” It is not clear if this decision will open the floodgates for future false patent marking claims, but John posits that “the reports of the death of false patent marking claims may have been greatly exaggerated.” Read the article.

Legal Update: Supreme Court Decision Could Increase Copyright Trolling in the Second Circuit teaser
May 24, 2024

Legal Update: Supreme Court Decision Could Increase Copyright Trolling in the Second Circuit

Legal Update: The Corporate Transparency Act: Beneficial Ownership Reporting Requirements for Certain Companies Doing Business in the United States teaser
November 3, 2023

Legal Update: The Corporate Transparency Act: Beneficial Ownership Reporting Requirements for Certain Companies Doing Business in the United States

May 17, 2023

Precooked Bacon, Artificial Intelligence Patents, and a Defense of the Common Law

IPWatchdog

It’s not every day that bacon can serve as the starting point for a discussion on intellectual property. John uses the recent case of HIP, Inc. v. Hormel Foods Corp., No. 2022-1696 (Fed. Cir. May 2, 2023) to introduce the question, “who is an inventor?” and discuss the impact that artificial intelligence (AI) is having on the issue of “inventorship.” John suggests we rely on the Patent Act which “delegates the issue to the courts for development through common law…” and that we should “allow the courts to consider individual cases about who owns patents and copyrights to which AI contributed. The specific works and the incarnate facts will matter and will enable the just result to be more easily gleaned.” View the article.

March 10, 2023

Christmas Light Patent Wars: Customer Infringement Notices and Free Speech

IPWatchdog

In the article, John explores the recent decision in the case of Lite-Netics, LLC v. Nu Tsai Capital, LLC, which upholds strong free speech rights for patent holders and addresses the issue “how much can (or should) be said in the marketplace about a patent dispute?” The Federal Circuit clarified that First Amendment protections apply to patent holders, and that “federal patent law preempts state-law tort liability for a patentholder’s good faith conduct in communications asserting infringement of its patent and warning about potential litigation.” That said, the decision serves as “a reminder that what can be done under the First Amendment may not necessarily coincide with what should be done.” View the article.



Data Privacy + Cybersecurity Insider teaser
October 31, 2024

Data Privacy + Cybersecurity Insider

October 31, 2024

False Patent Marking Claims Find New Home In Lanham Act

Law360

The “Expert Analysis” article examines how the Lanham Act could become a new avenue for false patent marking claims in the wake of the U.S. Court of Appeals for the Federal Circuit reversing a district court’s decision in Crocs v. Effervescent, which involved a false advertising counterclaim alleging Crocs falsely advertised their closed-cell resin as “exclusive,” “proprietary,” and/or “patented.” “Crocs’ advertising statements were tied to types of false statements made actionable under the Lanham Act, namely, false statements directed to the nature, characteristics or qualities of the footwear,” John wrote. “The Crocs decision suggests that false advertising relating to the patented status of products or the technology they contain may be actionable, at least where a competitor can prove that those statements would mislead customers.” It is not clear if this decision will open the floodgates for future false patent marking claims, but John posits that “the reports of the death of false patent marking claims may have been greatly exaggerated.” Read the article.

Legal Update: Supreme Court Decision Could Increase Copyright Trolling in the Second Circuit teaser
May 24, 2024

Legal Update: Supreme Court Decision Could Increase Copyright Trolling in the Second Circuit

Legal Update: The Corporate Transparency Act: Beneficial Ownership Reporting Requirements for Certain Companies Doing Business in the United States teaser
November 3, 2023

Legal Update: The Corporate Transparency Act: Beneficial Ownership Reporting Requirements for Certain Companies Doing Business in the United States

May 17, 2023

Precooked Bacon, Artificial Intelligence Patents, and a Defense of the Common Law

IPWatchdog

It’s not every day that bacon can serve as the starting point for a discussion on intellectual property. John uses the recent case of HIP, Inc. v. Hormel Foods Corp., No. 2022-1696 (Fed. Cir. May 2, 2023) to introduce the question, “who is an inventor?” and discuss the impact that artificial intelligence (AI) is having on the issue of “inventorship.” John suggests we rely on the Patent Act which “delegates the issue to the courts for development through common law…” and that we should “allow the courts to consider individual cases about who owns patents and copyrights to which AI contributed. The specific works and the incarnate facts will matter and will enable the just result to be more easily gleaned.” View the article.

March 10, 2023

Christmas Light Patent Wars: Customer Infringement Notices and Free Speech

IPWatchdog

In the article, John explores the recent decision in the case of Lite-Netics, LLC v. Nu Tsai Capital, LLC, which upholds strong free speech rights for patent holders and addresses the issue “how much can (or should) be said in the marketplace about a patent dispute?” The Federal Circuit clarified that First Amendment protections apply to patent holders, and that “federal patent law preempts state-law tort liability for a patentholder’s good faith conduct in communications asserting infringement of its patent and warning about potential litigation.” That said, the decision serves as “a reminder that what can be done under the First Amendment may not necessarily coincide with what should be done.” View the article.


News


January 13, 2026

John Mutchler, Anand Gupta, and Sarina Bhargava Elected to SABAC Leadership Roles

Intellectual Property + Technology group partner John Mutchler, Construction Law group lawyer Anand Gupta, and Business Transactions group lawyer Sarina Bhargava were elected to serve in various roles on the South Asian Bar Association of Connecticut’s (SABAC) Board of Directors at its Annual Meeting on December 4, 2025. The new leadership positions became effective January 6, 2026. John was re-elected to serve a fourth consecutive term as Treasurer. In this role, John will receive and track all SABAC finance matters, including sponsorships and member fees, in addition to collaborating with the organization’s accountants for submitted tax returns to the Internal Revenue Service. John has been an active SABAC member since 2017, has served on its Board of Directors since 2021, and has served as Treasurer since 2022. In addition, he also serves as a member of the South Asian Bar Association of North America (SABA NA) Foundation’s Board of Directors and is a member of the South Asian Bar Association of Washington DC. Anand was elected Vice President, marking an elevation to SABAC’s executive board. In this role, Anand will help lead the organization’s strategic initiatives for expanding SABAC’s reach, enhance member engagement, promote professional excellence, and advance innovative and forward-thinking ideas for diversity and inclusion in the Connecticut legal community. Anand was first elected to SABAC’s Board of Directors in 2025. Sarina was elected to serve a one-year term on SABAC’s Board of Directors. In her role, Sarina will support the board’s initiatives collaborating with local communities and national organizations to ensure Connecticut lawyers of South Asian descent have a greater voice and find equal opportunity and representation in the legal field. SABAC was founded in 2004 and strives to serve and provide a resource base for Connecticut’s lawyers and law students of South Asian descent for professional growth, networking, and community outreach. The organization focuses on advancing diversity and equity in the Connecticut legal space and for the state’s South Asian residents in their professional and personal endeavors.

South Asian Bar Association of Connecticut
November 17, 2025

Kayla O’Leary Daly Discusses Three Key Issues When Negotiating Big Tech Agreements

Industry Today
November 14, 2025

Robinson+Cole Secures Top Rankings in 2026 Edition of Best Law Firms®

Firm earns 6 national and 46 first-tier rankings in Boston, Hartford, New York, Rhode Island, and Stamford Markets
Robinson+Cole Secures Top Rankings in 2026 Edition of Best Law Firms® teaser
January 13, 2026

John Mutchler, Anand Gupta, and Sarina Bhargava Elected to SABAC Leadership Roles

Intellectual Property + Technology group partner John Mutchler, Construction Law group lawyer Anand Gupta, and Business Transactions group lawyer Sarina Bhargava were elected to serve in various roles on the South Asian Bar Association of Connecticut’s (SABAC) Board of Directors at its Annual Meeting on December 4, 2025. The new leadership positions became effective January 6, 2026. John was re-elected to serve a fourth consecutive term as Treasurer. In this role, John will receive and track all SABAC finance matters, including sponsorships and member fees, in addition to collaborating with the organization’s accountants for submitted tax returns to the Internal Revenue Service. John has been an active SABAC member since 2017, has served on its Board of Directors since 2021, and has served as Treasurer since 2022. In addition, he also serves as a member of the South Asian Bar Association of North America (SABA NA) Foundation’s Board of Directors and is a member of the South Asian Bar Association of Washington DC. Anand was elected Vice President, marking an elevation to SABAC’s executive board. In this role, Anand will help lead the organization’s strategic initiatives for expanding SABAC’s reach, enhance member engagement, promote professional excellence, and advance innovative and forward-thinking ideas for diversity and inclusion in the Connecticut legal community. Anand was first elected to SABAC’s Board of Directors in 2025. Sarina was elected to serve a one-year term on SABAC’s Board of Directors. In her role, Sarina will support the board’s initiatives collaborating with local communities and national organizations to ensure Connecticut lawyers of South Asian descent have a greater voice and find equal opportunity and representation in the legal field. SABAC was founded in 2004 and strives to serve and provide a resource base for Connecticut’s lawyers and law students of South Asian descent for professional growth, networking, and community outreach. The organization focuses on advancing diversity and equity in the Connecticut legal space and for the state’s South Asian residents in their professional and personal endeavors.

South Asian Bar Association of Connecticut
November 17, 2025

Kayla O’Leary Daly Discusses Three Key Issues When Negotiating Big Tech Agreements

Industry Today
November 14, 2025

Robinson+Cole Secures Top Rankings in 2026 Edition of Best Law Firms®

Firm earns 6 national and 46 first-tier rankings in Boston, Hartford, New York, Rhode Island, and Stamford Markets
Robinson+Cole Secures Top Rankings in 2026 Edition of Best Law Firms® teaser
November 13, 2025

Jackie Scheib Highlights Critical Clauses for Avoiding Disputes in IT Projects

Corporate Counsel
November 6, 2025

Robinson+Cole Commends 62 Attorneys Recognized in 2025 Super Lawyers®

Recognition spans key regions and highlights the firm’s seasoned practitioners and emerging leaders in many business transactions and litigation practices
Robinson+Cole Commends 62 Attorneys Recognized in 2025 <i>Super Lawyers</i>® teaser
September 30, 2025

Robinson+C​ole Welcomes 2025 Fall Class

Robinson+C​ole Welcomes 2025 Fall Class teaser
August 26, 2025

78 Robinson+Cole Lawyers Listed in The Best Lawyers in America© 2026

Firm receives top listing in Connecticut lawyer count in national peer review survey
78 Robinson+Cole Lawyers Listed in The Best Lawyers in America© 2026 teaser
August 18, 2025

John Mutchler Appointed to SABA NA Foundation Board of Trustees

South Asian Bar Association of North America (SABA NA) Foundation
July 8, 2025

John Mutchler Examines Patent Eligibility of AI-Related Inventions

Mealey’s Litigation Report: Intellectual Property
Mealey’s Litigation Report: Patents
Mealey’s Litigation Report: Artificial Intelligence

November 13, 2025

Jackie Scheib Highlights Critical Clauses for Avoiding Disputes in IT Projects

Corporate Counsel
November 6, 2025

Robinson+Cole Commends 62 Attorneys Recognized in 2025 Super Lawyers®

Recognition spans key regions and highlights the firm’s seasoned practitioners and emerging leaders in many business transactions and litigation practices
Robinson+Cole Commends 62 Attorneys Recognized in 2025 <i>Super Lawyers</i>® teaser
September 30, 2025

Robinson+C​ole Welcomes 2025 Fall Class

Robinson+C​ole Welcomes 2025 Fall Class teaser
August 26, 2025

78 Robinson+Cole Lawyers Listed in The Best Lawyers in America© 2026

Firm receives top listing in Connecticut lawyer count in national peer review survey
78 Robinson+Cole Lawyers Listed in The Best Lawyers in America© 2026 teaser
August 18, 2025

John Mutchler Appointed to SABA NA Foundation Board of Trustees

South Asian Bar Association of North America (SABA NA) Foundation
July 8, 2025

John Mutchler Examines Patent Eligibility of AI-Related Inventions

Mealey’s Litigation Report: Intellectual Property
Mealey’s Litigation Report: Patents
Mealey’s Litigation Report: Artificial Intelligence

Events


Upcoming

Navigating Legal Essentials in Distributor Agreements & IP Protection

May 6 2026
U.S. Department of Commerce’s International Trade Administration's Mastering International Distributor Success Seminar
Past

Can AI Be Patented? Navigating Patent Subject Matter Eligibility

Feb 9 2026
2026 AUTM Annual Meeting
Upcoming

Navigating Legal Essentials in Distributor Agreements & IP Protection

May 6 2026
U.S. Department of Commerce’s International Trade Administration's Mastering International Distributor Success Seminar
Past

Can AI Be Patented? Navigating Patent Subject Matter Eligibility

Feb 9 2026
2026 AUTM Annual Meeting
Past

Bankruptcy Issues for the IP Practitioner

Feb 5 2026
American Intellectual Property Law Association Intellectual Property Transactions Committee Meeting
Past

Artificial Intelligence in the Legal Profession

Nov 19 2025
Middlesex County Bar Association Program
Past

Navigating Legal Essentials in Distributor Agreements & IP Protection

Oct 22 2025
U.S. Department of Commerce’s International Trade Administration Mastering International Distributor Success Seminar
Past

Best Practices in Trademark Acquisition

Jun 5 2025
American Intellectual Property Law Association Intellectual Property Trademark Law Committee Annual Meeting
Past

Bankruptcy Issues for the IP Practitioner

Feb 5 2026
American Intellectual Property Law Association Intellectual Property Transactions Committee Meeting
Past

Artificial Intelligence in the Legal Profession

Nov 19 2025
Middlesex County Bar Association Program
Past

Navigating Legal Essentials in Distributor Agreements & IP Protection

Oct 22 2025
U.S. Department of Commerce’s International Trade Administration Mastering International Distributor Success Seminar
Past

Best Practices in Trademark Acquisition

Jun 5 2025
American Intellectual Property Law Association Intellectual Property Trademark Law Committee Annual Meeting