Information

Technology doesn’t stand still and fortunately, neither do we. We have a long history of working with clients in the semiconductor, emerging technologies, firmware and software sectors. We also work with software service and data analysis providers. This means we understand the evolving products and services clients create and advise on the best way to protect and get new products and services to market. From the latest SAAS, PAAS, and IAAS offerings, intelligent calendar systems and kettles, through to the latest audio and voice recognition systems, we are passionate about our clients’ products and services.

At the start of the cycle this can mean supporting with early access and trial phases, through to product launch and service roll-out. We have a deep understanding of technology licensing, distribution, support, outsourcing and manufacturing. Because we advise many clients in the same sector, we have a strong feel for what is reasonable and can help you close deals quickly and pragmatically, to maximise your budget. We support clients with our Wraparound Services to ensure clients get international advice, when required, such as for international IP protection and with distribution and manufacturing contracts. 

We know the pressures of getting products and services to market and ensure our Services are appropriate for each stage of the business, always keeping an eye on the bigger picture for tech clients, which often involves sale and investment.

We provide IP Audits and legal reviews of technology businesses in preparation for sale or investment. We also provide General Counsel services in this sector to help clients get into shape for this phase.

One of our greatest pleasures is seeing longstanding clients through to investment and sale, especially where we have worked with them from start-up phase.

Alongside supporting supplier clients in the tech sector, we also advise businesses who are acquiring technology licences, licensing software or firmware or acquiring products and services. We advise on outsourcing of technology services and all forms of SAAS. We love the changing nature of technology deals and relish the creativity we can bring to resolving and closing deals.

We advise software and firmware developers on how to protect software and firmware assets, licensing and contracts with customers including service level agreements. We also advise on the use of contractors and sub-contracting development together with clean room development. On the customer side, we act for businesses which license in software for use on a standalone basis, within products or as a services together with associated support service agreements.

We have extensive experience of this sector through acting for multiple clients who develop, manufacture and supply semiconductor products internationally. This involves support with trials and partner relationships, manufacture and IP licences through to agency, reseller and distributor arrangements internationally. We also provide IP advice on protecting and defending patents, trademarks and copyright for products and brands in this sector.

Manufacturing relationships are crucial to the successful supply of products.  Its why we’re focused on ensuring clients’ manufacturing suppliers are contracted on appropriate terms and these are mirrored in our clients supply commitments.  We support our clients to ensure any tooling is treated appropriately and back up and fall over relationships are in place to protect supply chain continuity. We also advise frequently on IP protection for bespoke tooling and moulding for products.

A successful route to market involves the right Reseller and Distribution network. We’re frequently asked to advise on this and the appointment of local agents internationally. This can involve setting up or restructuring international distribution networks or agency relationships, advising on internet retailing and advice on delivery methods, exports, imports and parallel trade. Through our Wraparound Service we can ensure clients get consistency of support for these types of contracts and advice on an international scale. 

Digital platforms and e-commerce is now entrenched in our everyday lives and through out digital work, we support clients on the front end.  However we also support clients on the back end of these platforms with functionality and feature development, assistance with storage and hosting contracts, SAAS and related services and SLA’s. We provide regulatory and compliance advice on all aspects of digital platforms including on platform and intermediates liability and data capture. We also advise on the specific regulations applicable to consumers all of which gets fed back into the design of the platform so that we support a designed approach.

We advise on all types of outsourcing, one-off arrangements and framework procurements including collaboration and partnering arrangements within the Media, Digital, Creative and Technology sectors. We also support clients who wish to bring external services back in-house by negotiating and advising on return-sourcing arrangements. Our deep understanding of the Media, Digital, Creative and Technology sectors means we understand the dependencies, ask the right questions and ensure all necessary regulations and practicalities are considered. With our Wraparound Service, we can work alongside international partners to ensure a consistent approach is taken to all forms of international outsourcing.

Fintech is a fast-developing sector focused on combining traditional finance products and services with the latest technology platforms and models for customers. Exciting opportunities include, new payment systems and currencies, comparison sites, crowd funding, data analysis and infrastructure. From our work with tech companies, ecommerce and digital platforms and content providers we are able to advise on the fast developing challenges which face this sector. Often early stage businesses, we can provide the Strategic, Advisory and Compliance services required by new business and work with existing advisors with our Wraparound Services to ensure our clients get the international advice they require.  Our work has included advising on the full range of legal issues including regulatory requirements, intellectual property, data protection and technology contractual matters. Our strong background in Technology, IP and Content Production means we can think laterally and respond to the ever changing demands of Fintech.

Highlights

  • Advising semiconductor client Picochip, on commercial, technology and IP issues, and providing general counsel services reporting to the executive team prior to sale to Mindspeed

  • Working with semiconductor audio specialist, XMOS on commercial, technology and IP issues including the recent spin-out of technology to Graphcore;

  • Instructed on behalf of Graphcore in relation to advise on its technology IP supplier and manufacture contracts

  • Working with firmware developer, Bytesnap on its customer terms and conditions, IP issues and specific projects

  • Drafting terms and conditions and associated advice to hosting client, Netsight on hosting and development services

  • Advising SGX Sensortech on the development, manufacture and supply of its new sensor product

  • Advising on the sale and negotiating the sale agreement for a telco billing solution

  • Working with US counsel and negotiating UK SAAS contract with Barclays UK on behalf of data analysis client, Platfora (subsequently sold to Workday);

  • Advising on the agile development of a billing platform

  • Drafting and overseeing negotiations with leading broadcaster re the outsource of services

  • Advising on the development of and investment into a crowdfunding digital platform

Key contracts / services

  • Cloud-based Solutions - SAAS, PAAS, IAAS contracts

  • Software License Agreements

  • Software Development Agreements

  • Platform Development Agreements

  • Support Agreements

  • Master Supply Agreements

  • Manufacturing and Packaging Agreements

  • Data Centres and Co-Location Agreements

  • Distribution, OEM and Reseller Agreements

  • Managed Services Agreements

  • Hosting Agreements

  • Outsourcing Agreements

  • System Integration Agreements

Case Studies

Producer of Audio Hardware – Licence of MFI through authorised reseller

Our client is a provider of hardware products aimed at the sound and recording markets. Our client wished to license the Apple MFI (essentially, the hardware connectors and components that are required to manufacture iPod, iPhone, iPad, and AirPlay audio accessories and the certain protocols to enable interaction with iPod, iPhone and iPad devices). We worked with our client to negotiate the Buy and Sell agreement with Avnet (one of two authorised resellers of Apple MFI products).

Licensing from Avnet, meant our client also had to agree to resell its MFI compliant kits (which it developed to enable developers and engineers to create Apple compliant products, including our client’s chipsets) through this authorised reseller. This gateway deal was an important driver for future OEM (Original Equipment Manufacturer) sales for our client.  It meant guiding them through a sensitive balancing act of both parties’ requirements, including an indemnity sought by Avnet against any loss that arose from our client selling its products that included Apple’s intellectual property.

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Producer of Micro controllers – Intelligent Flying Equipment

Our client is a premier provider of hardware products for the sound and recording markets. They were about to enter into a research and development collaboration involving the University of Bristol, Queen Mary, University of London, Technology Strategy Board (TSB) and a provider of helicopter navigation hardware. The aim of the collaboration was to adapt on-board flight monitoring systems so helicopters start to think and respond more like humans; to take the right action, at the right time, and in the right area.

Our task was to help the client put in place an agreement that accurately reflected each party’s commitments and the revenue share arrangements that were to arise from the resulting product.  At the same time, we needed to protect our client’s intellectual property and their ability to work with it outside of the project. The collaboration was complex as there were multiple strands of intellectual property from all parties. We had to carefully consider the implications of the universities’ development work alongside our client’s existing intellectual property, while ensuring our client was not tied to tipping its intellectual property solely into this project. Meanwhile, all of these considerations had to be finely balanced with the requirements provided by the TSB, which partly funded the project.

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Who to contact

Rebecca Steer

Rebecca Steer

rebecca.steer@steerandco.com
+44 (0)117 230 9700
+44 (0) 7887 627063

At Steer & Co, the “very professional, supportive and flexible” Rebecca Steer advises start-ups and cutting-edge businesses on software licensing and development contracts.

– Legal 500 2015, ranked in TMT, IT and Telecoms, South West.

“Rebecca Steer of Steer & Co in Bristol is “highly commercial” and provides “a quick turn around time while giving clear and concise, easily executable advice”, say clients.”

– Chambers and Partners 2011, ranked in Information Technology, South West – Leading Individual.

“Steer & Co has particular expertise in the semiconductor sector, and advises clients on platform and app development projects.”

– Legal 500 2014, ranked in TMT, IT and Telecoms, South West.