Partner & Head of Intellectual Property, Hale & Mercer LLP · Former software engineer · Patents, trade secrets, licensing
Chicago · Hale & Mercer LLP · 911+ connections
I lead the IP practice at Hale & Mercer: patents, trademarks, trade secrets and software licensing for people who build things. I was a software engineer for seven years before law school, and I have been the engineer whose work was taken. That is why I do this.
I can read your codebase, your commit history and your contractor agreement, and I will tell you in plain English which one of them is going to cause the problem.
I race a J/24 called Tuesday, talk to strangers on 20 metres, and play the button accordion at the Sunday session at Chief O'Neill's.
Founders: your contractor agreement either assigns the IP to your company or it doesn't. 'Work for hire' does not automatically cover software in most situations. If the word 'assign' isn't in there, the contractor owns your product. I check this first on every deal. Half the time it's missing.
Nine years ago a two-person robotics company called me because their former contractor had walked out with their motion-control algorithms. We traced it through the commit history and had an injunction in eleven days. They have 140 employees now. Version control is evidence. Keep it.
Eleven days is still the firm record for an injunction, for the avoidance of doubt.
Open-source licences are contracts. GPL in your proprietary product is not a philosophy problem, it's a licensing problem, and a buyer's diligence team will find it. Run the scan before they do. I say this as someone who commits to open-source projects every weekend.
Patents, trademarks, trade secrets, software and data licensing. The 2017 robotics trade-secret injunction in eleven days.
Patent prosecution and litigation support. Learned the law; already knew the code.
Built trading-infrastructure software. Watched a former colleague take our work to a competitor and nobody could stop him. Went to law school.
My grandfather's shop. Took apart everything.
Loyola University Chicago School of Law, J.D., 2011
Trinity College Dublin, B.A. (Mod.) Computer Science, 2003
Sending this to every founder in my inbox. All of them.
And the investors will check it in diligence, so better you find it now.