IP & Technology Transactions Attorney — Software IP Chain Review + Trademark Strategy

Posted last week

Only freelancers located in the U.S. may apply.U.S. located freelancers only

Summary

We are a health tech startup that has built a proprietary tele-health platform through a related-party software development arrangement. The developer and our holding company share a common beneficial owner, making the IP assignment chain a related-party transaction that requires careful legal review. We need an IP and technology transactions attorney to review our IP assignment and license documents, confirm the chain of title is legally sound, and advise on a USPTO trademark filing strategy for our brand and platform names - 4 to 5 names and assist us with the filing. We already have the TRADEMARK CLEARANCE REPORT & FILING PREPARATION PACKAGE through Claude. ENTITIES AND RELATED-PARTY STRUCTURE The IP structure involves four layers. The key sensitivity is that [TECHNOLOGY_VENDOR] (developer) and [HOLDINGS_ENTITY] (IP owner) share a common beneficial owner. This must be disclosed and properly documented to avoid challenges to the assignment's arms-length validity. CURRENT IP CHAIN [TECHNOLOGY_VENDOR] Creates all software under Software Dev Agreement Work-for-hire; assigns all IP to [HOLDINGS_ENTITY] upon creation Doc 01 [HOLDINGS_ENTITY] Receives IP assignment; owns all platform IP Exclusive owner of all technology IP, trademarks, domain assets Doc 02 [MSO_ENTITY] Exclusive license from Holdings Sublicense rights granted; cannot sub-sublicense without consent Doc 03 [PC_ENTITY_CT/NY/CA/FL] Sublicense from MSO for clinical operations Field-of-use restricted to licensed state; no ownership Doc 03 DELIVERABLE - IP chain review memo - Redlined contracts (5 contracts) - Trademark filing confirmation + ITU execution - Written confirmation + TEAS filing - Word mark opinion - Technology licensing template review - Verbal briefing / call

  • $1,000.00

    Fixed-price
  • Intermediate
    Experience Level
  • Remote Job
  • Ongoing project
    Project Type
Skills and Expertise
Mandatory skills
Corporate Law
Health & Wellness
Nice-to-have skills
Legal Research
Trademark Consulting
Activity on this job
  • Proposals:5 to 10
  • Last viewed by client:last week
  • Interviewing:
    2
  • Invites sent:
    14
  • Unanswered invites:
    8
About the client
Member since Mar 22, 2019
  • United States
    Stanton7:07 PM
  • $14K total spent
    20 hires, 1 active
  • 10 hours
  • Mid-sized company (10-99 people)

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