IT Licensing

Our Group

Miller Thomson’s Information Technology Group has extensive experience with licensing transactions involving information technology. This allows us to provide practical advice to clients in procuring software or other technologies, and in commercializing technology they develop.

Our Clients

The Group’s clients include entities in both the private sector and public sector. Public sector clients include ministries, agencies, Crown corporations, universities and health care providers. Private sector clients include a number of multi-national companies in various industries including telecommunications, insurance, financial, automotive and real-estate. Our client base is not restricted to mature companies, though, and our MTech Program, in particular, provides much-needed assistance to emerging companies as they seek to commercialize technologies.

Our Services

The Information Technology Group has extensive experience providing advice on a wide variety of licensing agreements and related transactions. Our lawyers have assisted clients with:

  • Choosing the most appropriate licensing model (for example, deciding whether the license fees will be based on the number of named users, number of concurrent users or on another metric)
  • Managing licenses for any open-source code included in the client’s own products
  • Complying with export restrictions
  • Recommending an alternative form of licensing arrangements
  • Structuring appropriate support agreements for licensed technologies
  • Managing intellectual property rights when a licensee further develops a work
  • Responding when a license has been breached.

Our Expertise

Several lawyers in our Group are recognized leaders in this field. Our expertise is apparent from both our experience and the many books, articles and other publications written by the lawyers who form part of the group. This information is set out in the biographies for the group members.

Our Experience

  • Preparing standard-form licensing agreements for various software companies including both transitional licenses signed by the parties and agreements made by electronic means
  • Preparing standard-form licensing agreements for various technologies other than software
  • Preparing licensing agreements in relation to content for use on Web sites;
  • Assisting a multi-national corporation with licenses for various software programs from vendors located in Canada, the United States and elsewhere
  • Assisting a Crown corporation with the preparation of an RFP, agreement and statements of work relating to its acquisition of an asset management information technology system and related services
  • Assisting with the licensing agreement for deployment of human resources information system to be used by a large number of health care organizations
  • Assisting a number of Ontario municipalities in developing a new template agreement to be used with RFPs that may be issued from time-to-time to procure commercial off-the-shelf software (COTS), and other non-customized IT products and services