Overview

Technology is a fast-paced sector with no shortage of legal complexities. Possessing a wealth of multidisciplinary experience, Katten's Technology team helps you navigate matters associated with the development, procurement, implementation, use, monitoring and commercial exploitation of technology, data and intellectual property.

Comprehensive services on the cutting edge

Whether you are a developer, provider, customer or investor, your business goals are closely aligned with your technology assets. We pride ourselves on being forward-thinking and providing sophisticated solutions to help make those goals a reality. You can count on our attorneys to be well-versed in the areas that are important to your business, including intellectual property protection, development transactions, strategic alliances, distribution issues, outsourcing, commercial contracts and disputes, transactions related to data and databases, and emerging technology.

Intellectual property protection
  • Advises on matters involving employee and inventor agreements and complex confidentiality arrangements that allow for disclosure but create necessary protective measures
  • Provides guidance on intellectual property protection strategies
  • Negotiates patent, trademark and copyright licenses
  • Counsels on source code and technology escrows

Development and collaboration transactions
  • Structures a broad range of domestic and cross-border joint venture and partnering arrangements and other strategic alliances, including joint development agreements
  • Counsels on funding development
  • Negotiates software development agreements with complex bonus and penalty provisions
  • Coordinates original equipment manufacturer (OEM) agreements
Distribution issues
  • Represents technology providers in the licensing and distribution of proprietary technology and intellectual property
  • Counsels on marketing matters, including minimum advertised pricing (MAP) policies
  • Negotiates reseller and referral arrangements
  • Coordinates 3PL and other logistics agreements
Outsourcing, commercial contracts and disputes
  • Navigates virtually every type of contractual arrangement for customers and for providers, including the outsourcing of technology services and business functions, procurement transactions involving hardware, large-scale software licenses, data and technology services, and the use of cloud-based solutions
  • Creates sets of form documents such as end-user licenses, support and maintenance agreements and service-level agreements — and negotiates with sophisticated end users on complex, one-off arrangements
  • Engages in prelitigation efforts and settlements to resolve commercial disputes
Emerging technology
  • Provides counsel on legal matters with respect to development of and content for digital media and websites, as well as the benefits and risks associated with social media
  • Manages compliance with ever-changing privacy legislation — including increased standards for mobile apps — and how to take advantage of big data trends

Experience

  • Representation of technology users
  • Represent leading provider of direct investing services in the legal aspects of its online operations. Includes procuring software, professional services and support with leading providers of software solutions for the financial services industry; advising on inbound and outbound software licensing; advising on regulatory issues; drafting online customer agreements; and advising on Internet law issues.
  • Represent website for culinary enthusiasts in all legal aspects of the development, content population and operation of a website featuring tutorials from celebrity chefs, culinary-related features articles, a recipe database, marketing and sale of cookware and other culinary tools and culinary educational information.
  • Represent consortium of stock exchanges and a regulatory authority in drafting and negotiating contracts for administrative and processor services relating to the collection and consolidated reporting of market data.
  • Represent insurance company in a major license and consulting agreement for the development, integration and implementation of a new claims management system.
  • Represent large municipal health care system in negotiating and implementing a license and services agreement to replace its existing medical records system with an integrated system linking numerous health care facilities and other health care providers.
  • Represent nationwide for-profit hospital system in technology procurement transactions. Includes licensing an electronic medical records system, enterprise-wide scheduling system, cloud-based human resources system and enterprise resource planning system.
  • Represent retail chain of jewelry stores in outsourcing the chain’s IT infrastructure.
  • Represent boutique hotel management group in various transactions related to critical technology. Includes central reservation system and hotel management software, as well as an agreement for the development of websites pertaining to each hotel.
  • Represent large banking institution regarding a contract for a product by which the bank streams FX rate quotes and allows customers to submit order requests for FX transactions.
  • Representation of technology developers and vendors
  • Represent publicly traded gaming company in a platform development transaction for a new generation of casino games.
  • Represent social media management company in preparing form contracts, negotiating customer contracts and counseling on data use issues.
  • Counsel startup mobile app developer in all aspects of its business, including development contracts, licensing and privacy issues.
  • Outside general counsel to a software developer that provides identification verification and multi-factor authentication services in connection with preparing form documents and end-user licensing negotiations, including transactions with major national and international banks.
  • Represent developer of banking solutions in customer licensing transactions with large nationwide banks.
  • Counsel publicly traded technology solutions and outsourcing provider in a customer dispute over outsourcing services.
  • Represent Latin American market infrastructure firm in negotiations with a service provider regarding electronic trading and market surveillance systems and services powering a new foreign stock exchange. 
  • Represent national provider of secure clinical communications to hospitals, health systems and physician providers in contract negotiations with its major customers.
  • Represent European provider of payroll services in agreement to resell payroll-related software offered by a North American entity.

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Recognitions
Recognized or listed in the following:
  • BTI Litigation Outlook
    IP Litigation Honor Roll, 2018
  • Chambers USA
    Intellectual Property
    Illinois, 2006–2022
    Intellectual Property: Trademark, Copyright & Trade Secrets
    Illinois, 2021–2024
    Intellectual Property: Litigation
    District of Columbia, 2021–2024
  • IAM Patent 1000
    Patent Litigation, 2017
  • Managing Intellectual Property Annual Awards
    Trademark Contentious
    Midwest Region, 2017
  • Managing Intellectual Property IP Stars
    Patent Contentious
    United States, 2017, 2020–2021
    Trademarks, 2023
    Trademark Contentious
    United States, 2017, 2020–2024
    Trademark Prosecution
    United States, 2017, 2020–2024
  • The Legal 500 United States
    Trademarks
    Litigation, 2016–2024
  • Best Law Firms
    Litigation – Intellectual Property
    National, 2012–2023
    Chicago, 2012–2023
    Litigation – Patent
    National, 2014–2018
    Chicago, 2012–2018
  • World Trademark Review 1000
    The World's Leading Trademark Professionals
    National, 2017–2018
    Chicago, 2017–2018
    New York, 2017–2018
    Washington, DC, 2017–2018
Award Methodologies