June 20, 2002

Venable Creates First Resource Guide for Tech-Related Transactions in Maryland, Proving That IP Assets Are a License to Grow

5 min

New volume edited by Newton Fowler covers everything from acquisitions and licensing to joint ventures

BALTIMORE/WASHINGTON, DC (June 20, 2002) – In recent years, businesses and legal practitioners in Maryland and other states have been wrestling with the complications that intellectual property has created in their transactions, especially those involving technology licensing. Now they have a new guide to the landscape.

Newton B. Fowler, III, a Venable partner and member of the Baltimore City Mayor's Technology Task Force and board of the Greater Baltimore Technology Council, has edited the newly published Maryland Technology Transactions. The new volume, subtitled The Venable Practice and Forms Manual, is a practical handbook for technology officers, business owners and attorneys who have to understand and structure IP transfers.

The book, produced by Data Trace Publishing Company (http://www.datatrace.com), focuses on the critical issue of licensing, but also contains chapters on the evolving importance technology has come to play in mergers and acquisitions, joint ventures and strategic alliances.

"Intellectual property is often the most important asset in an acquisition," Mr. Fowler said. "Even businesses that don't think of themselves as tech-based are being forced to confront IP issues."

Venable has been highly successful at guiding tech-based companies to higher profitability through asset licensing. Notably, the firm's work supported the buildup of Mapquest – the interactive online mapping service – from a $34 million business to one eventually sold to for $1.2 billion to America Online. Mr. Fowler noted that this was largely achieved through licensing of Mapquest's mapping tools. Among Mapquest's licensing partners have been major banks, retailers, and leading travel guides and magazines such as Fodor's, Frommer's and National Geographic.

Venable has been the firm behind other deals that helped bring so-called "brick and mortar" companies into the online world, enhancing their potential by turning them into "click and brick" entities which do business both in the real world and on the Internet.

A Thorough Guide to Technology Transactions

Sophisticated yet adaptable template forms are provided in the handbook for each of the common situations encountered in technology transactions. Among the sample forms highlighted: Complex Software License; Application Service Provider Agreement; LLC Operating Agreement for a technology joint venture; End User License (application for shrink wrap and click wrap needs); Complex Development Agreement; and Strategic Alliance LLC Operating Agreement. The forms and sample language presented in each chapter are also offered on a free disk, so customizing is easy.

The book's 17 chapters include: The Maryland UCITA Statute; UETA and E-Sign; Economics of Licensing; Limiting Liability and Remedies; Special Issues in Acquisition Transactions; and Special Issues in Strategic Alliances. Other vital chapters apply traditional IP concepts, contractual performance standards and basic contract provisions to 21st century technology arrangements.

"Intellectual property has gone far beyond copyright, patents and trademarks," Mr. Fowler said. "In certain transactions these days, you may have to do something like put computer source code in escrow, or donate expiring patents to a university. There is so much overlap now between intellectual property and other legal practice areas that knowledge of technology transactions is a requirement for virtually all lawyers."

Maryland Is a Technology Hub

Maryland is among the most technologically oriented states, with one of the largest percentages of workers in the nation employed in technology (Source: http://www.mdbusiness.state.md.us/). Maryland is also home to a number of well-known aerospace and defense manufacturers and contractors.

Recognizing the need for regulation of electronic commerce, Maryland was one of the first states to enact a version of a proposed model law called UCITA, the Uniform Computer Information Transactions Act. Until now, no book has ever addressed the effect of MUCITA throughout all areas of technology transactions.

In addition to MUCITA, Maryland also passed its version of the proposed Uniform Electronic Transactions Act ("UETA"). Since UETA was permitted by Congress to preempt the Federal Electronic Signatures in Global and National Commerce Act ("E-Sign") of June 2000, Maryland's legal terrain is both unique and highly intricate. "With such a high level of technological activity combined with labyrinthine state and federal regulation, Maryland was ripe for this book," said Mr. Fowler.

Maryland Technology Transactions is the first in a rollout of technology-transactions primers from the same publisher. The next is planned for Virginia.

Fowler a Well-Known Technology Guru in the Region

Mr. Fowler heads Venable's technology transactions practice; he works in all areas of technology law including computer and telecommunications outsourcing, software licensing and development, systems integration and other technology distribution and joint venture arrangements, as well as structuring business relationships involving the Internet and all forms of e-commerce.

In addition to serving on the previously mentioned Mayor's Task Force, Mr. Fowler is active with several other technology and business related civic groups including the Greater Baltimore Alliance Strategic Futures Council; he serves on the boards of The Peabody Institute, Leadership Maryland, The College of Business and Economics at Towson University and three of the region's technology incubators.

Fifteen other Venable attorneys contributed to Maryland Technology Transactions. They are: Brian D. Anderson, Michael J. Baader, Gregory M. Bedward, Emried D. Cole, Denise V. Corsaro, Ronald S. Kasner, Jacqueline R. McCarthy, William A. McComas, Charles J. Morton, Jr., Vasilios Peros, John M. Ramirez, Swata Gandhi Shea, Neal H. Strum, Rachel S. Teiman and Theresa J. Withers.