Ropes & Gray LLP
What are the key characteristics that clients look for in a top-level IP attorney?
I am a specialist in IP and tech transactions. The key characteristics that clients look for in this field are knowledge and experience across a range of value-generating transactions. This includes the purchase, sale and licensing of IP rights, collateralisation of IP rights for debt financing, tax structuring of IP rights and related revenues, structured ownership of IP rights to permit exploitation by more than one party, structured joint ventures and collaborations to develop and exploit intellectual property in novel settings and completing the necessary IP transactions to carry out mergers, acquisitions and company-level deals.
What type of work do you find most rewarding and why?
IP transactions, which often involve truly novel innovation, regularly provide the opportunity for me to create, negotiate and conclude transactional arrangements and business structures that bring products, brands and services into entirely new geographic regions, user communities and commercial settings. I find this ‘settling the frontier’ aspect of the work the most rewarding.
What are the biggest IP challenges facing US tech companies at present?
The biggest IP challenge facing US tech companies at present is the tension between the globalisation of technology and political nationalism and isolation. Most new innovations across both the engineering and life sciences fields are now almost immediately commercially viable on a global scale. Yet we see increasing national barriers against technology transfer and data transfer – many for good reasons. We need to structure transactions that take advantage of the global value of innovation, while respecting and complying with the narrowly defined requirements of specific jurisdictions.
How do you expect the IP transactions space to evolve as more and more industries continue to be affected by technological convergence?
I expect there to be a dramatic increase in the number and importance of IP transactions. Overall convergence is combined with the increasing specificity of products and services. Therefore, what we are seeing is that while everything is essentially migrating toward cloud-based software, the complete ‘solution stack’ for most products and services is increasingly large and complex and involves many more stakeholders than products and services embodied in the pre-convergence world.
You are an active member of various trade and professional associations. What are the benefits of these on both a personal and an industry level?
I find that the principle benefit of trade and professional associations is peer-to-peer engagement. Personally and professionally, trade and professional associations create opportunities to meet, work with and learn from other professionals – this is by no means limited to other attorneys.
Edward Black is global co-head of Ropes & Gray’s technology, media and telecommunications, and data, privacy and cybersecurity practices. He has more than 30 years’ experience with transactions involving the acquisition, sale and strategic management of assets and businesses focused on technology, data, media, financial services, brands and related IP and intangible assets. Mr Black’s clients include financial services organisations, hedge funds, investment managers, technology companies, consumer branded product companies, media organisations and private equity investors.