George R. Halsey Law

 

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legal checklist

reference architecture

a.1 non-disclosure agmt.

a.2 trade secrets

1.1 competitive analysis

1.2 patents

1.7 export / import

Secured Client Sites

Lawyer Site

Legal Counsel for Technology Ventures

 

Basic Development Legal Requirements

A.1

Execute confidentiality agreement prior to any confidential discussions with outside company details

A.2

Mark, handle and disclose proprietary information per strategy details

 

 


 

Phase 1 – Concept

1.1

Plan strategy for competitive analysis vs risks of competitive trade secret contamination. details

1.2

Develop patent and standards strategies. details

1.3

Clear code name for project. details

1.5

Evaluate availability of technology licenses required  from other companies details

1.6

Compliance with regulatory/Industry/government standards (e.g Section 508) details

1.7

Start Export Control Planning. details

1.8

If joining standards body, adhere to legal requirements. details


 

Phase 2 - Plan

2.3

Submit request for Trademark clearance & registration. details

2.4

Complete export classification questionnaire. details

 

 


 

Phase 3 – Develop “Alpha”  /  working prototype

3.1

Follow-on Patent Review. Submit invention disclosures. details

3.2

Conduct patent review of technical documentation before external release (e.g. whitepapers, journal articles, sem.presos, technical publications). details

3.4

Before hiring consultant or contractor to develop any portion of product – use contract to control ownership of work for hire  details

3.5

If downloading or using any opensource code or freeware obtain evaluation / advice details

3.6

Plan for OEM, Supply, Manufacturing agreements. details

3.6

Supplier Contracts Negotiated. details

3.7

Prepare Marketing Agreements / includes joint mktg efforts or 3rd party mktg involvement. details

3.9

Confirm export approval status. details

3.10

Contracts for backline customer support service, including contracts for vendor support and FRU repair` details

3.11

Incorporate Legal Notices into source code and splash screens. details

3.12

For software stacks/bundles review legal - service and tax issues involved. details

 

 


 

Phase 4 System Test  “Beta” / “Production Prototype”


 

Validate that test module has licenses for third party technology details

4.2

Confirm Submission of Patent filings. details

4.3

Complete pre-release requirements for external testing of products. details

4.4

Confirm Trademark registration has been finalized. details

4.5

Incorporate legal notices in product literature / CD case / documentation / enclosure as required- including as applicable Software source and binary code, manuals docs, web pages, etc. details

4.6

Determine if Copyright registration is required. Copyright registration for strategic software. 8 weeks lead time. details

4.7

All inbound license, reviews and vendor agreements. Finalize Inbound Technology Agreements and Opensource/Freeware reviews, Complete license, supply, service, support and marketing agreement. details

4.8

Prepare listings and/or customer agreements All inbound license, reviews and vendor agreements. service, support agreements. details

4.9

Complete Due Diligence Review. Confirm right to release all technology incorporated into the product. Start at least 4 weeks prior to earliest of first external release/ BOM freeze /code freeze/ or documentation sent for internationalization / localization. details

4.10

Due Diligence Review of Company/3rd Party collateral used for Marketing. Includes demos CD or website. details

4.11

Finalize Pre-Release/Early Access License Agreements. PRLAs for external alpha or beta testing details

4.12

Complete Phase 4 export legal requirements. Apply for Export License for all destinations details

4.13

Apply for Export Control Clearance. Needed only for Non-US system test or Beta candidates details

4.14

Apply for Import Clearances. As needed for products using encryption. details

4.15

Finalize Supply & Manufacturing Agreement details

4.16

Finalize Marketing and Marketing related agreements. Joint Marketing, Porting, Benchmark and Testing Agreements  details

4.17

Conduct Collateral Review and website content. details

4.18

Review privacy issues. Use of personal customer data. details

4.19

Cddress competitive / comparative claims in marketing.. details

4.20

Prepare Launch related standard agreements details

4.22

Prepare Agreements for 3rd party compatibility/ certification programs. details

4.23

Confirm Compatibility/ Certifications details

4.25

Resolve Customs Duties legal issues. Sale of new products or services. details

4.26

Resolve Service & Support legal issues. details

 

 


 

Phase 5 Customer Acceptance

5.1

Confirm all Patent filings have been completed. details

5.2

Finalize Trademark Clearances/Registration Confirm completion. details

5.3

Finalize and Integrate Legal Notices. Confirm incorporation into products and documentation. details

5.4

Finalize Product Release Due Diligence. Confirm completion and incorporate legal notices and license terms into product and documentation. details

5.5

Finalize Demo Product Due Diligence. Confirm completion. details

5.6

Finalize Inbound Agreements. All licenses, design, development, prototype, engineering services, supply and manufacturing agreements. details

5.7

Finalize Export Licenses and Clearances. Confirm completion. details

5.8

Finalize Marketing Agreements Confirm completion. details

5.9

Finalize product announcements details

5.10

Continue Collateral Review as needed. Ongoing. details

5.11

Finalize Substantiation of product claims. details

5.12

Finalize Integrated Stacks or Bundle Requirements. details

5.13

Finalize Competitive/Comparative Marketing Issues. details

5.14

Finalize Services Legal Issues. details

5.15

Post supplemental license terms.. details

5.16

Does product require modification to standard sales / sales licensing agreements. details

5.17

Finalize Early Access Agreements or Service Pilot agreement details

 

 


 

Phase 6 Deploy

6.2

Evidence of Use of TM. Provide evidence of use of registered Trademarks. details

6.3

Finalize Copyright Registration Application (if required). details

6.4

Continue Collateral Review as needed. details

6.5

Finalize Launch Related Agreements. details

 

 


 

Phase 7 Sustain

7.1

Notify Patent review for technical modifications details

7.2

Negotiate necessary in-bound license amendments for product refreshes. details

7.3

Negotiate new Supply & Manufacturing Agreements for product refreshes details

7.4

Update Product Release Due Diligence for product refreshes and demonstration releases details

7.6

Incorporate legal notices and licenses as needed for updated product releases. details

7.7

Seek legal guidance regarding quality issues as needed. details

7.8

Comply with export legal issues for product refreshes and updates. Update Export Licenses and Export Control Clearances. details

7.10

Legal plan for “end-of-life” details

7.11

EOL External customer letters and announcements. details

7.12

Anticipate supplier financial difficulties, bankruptcy, mergers and acquisitions. details

 

 


 

Phase 8 End of Life / Retire

8.1

Confirm notification of EOL details

8.2

Trademark EOL. details

8.4

Terminate license agreements as needed, so notices can be given as required. details

8.5

Anticipate Supplier Claims. details


 
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