Sean C. Fifield’s practice focuses on intellectual property protection and licensing, general business contracts and financing, and merger and acquisition transactions. Sean is a member of the Firm’s Intellectual Property and Merger and Acquisitions practice groups and the Business Technology industry group.
Sean regularly handles matters involving the protection and licensing of copyrights, trademarks, trade secrets and related intellectual property rights. He is experienced in the negotiation and drafting of patent licenses, trademark licenses, software licenses and other agreements governing a wide range of intellectual property rights.
Sean also regularly negotiates information technology licenses and agreements, including application service provider arrangements, information management and outsourcing transactions. Sean has prepared forms of licenses for the products of a number of software vendors and custom software licenses with software vendors on behalf of a wide variety of clients.
Sean advises and assists clients with their selection, screening, registration and protection of trademarks in a wide variety of industries, including consumer food products, manufacturing, specialty chemicals, podcasting, banking, insurance and other financial services, hospitality products, restaurant services, specialty apparel, video games and entertainment.
Sean also assists clients in the publishing, entertainment, podcasting, financial services, software and other industries in the protection and licensing of their copyrights. In connection with assisting clients in the protection of their intellectual property, Sean regularly prepares and responds to cease and desist letters involving infringement or allegations of infringement of trademarks, copyrights and patent rights.
Sean’s practice also involves merger and acquisition transactions and financing transactions, particularly transactions focused on the transfer of intellectual property assets or involving technology businesses. Sean also regularly handles matters relating to corporate governance, and the negotiation of a wide range of agreements, including consulting arrangements, sales contracts and distributorship agreements.
Representative Experience :
- Intellectual property matters in which Sean Fifield has assisted clients include:
- Represented an oilfield services company in the negotiation of a development agreement and technology license for drilling rig monitoring systems and software
- Represented a health care benefits company in connection with the negotiation of an alliance agreement involving the development of wellness software apps for wearable personal devices
- Represented a pharmaceutical company in negotiation of multiple license and settlement agreements permitting the launch generic pharmaceutical products
- Represented a public transit agency in the negotiation of agreements with vendors and other public transit agencies for the development and operation of a mobile application for fares across multiple transit systems
- Represented pharmaceutical and cosmetics specialty manufacturer in negotiations with major pharmaceutical companies involving supply agreements for components used in Rx and OTC pharmaceutical products and cosmetic products
- Represented specialty minerals supplier in connection with the licensing and implementation of SAP enterprise resource planning software for the client’s worldwide operations
- Represented component manufacturer in the negotiation of a joint development agreement and technology license for the use of biometric identification devices
- Represented manufacturer of wafer production machines in the negotiation of a joint development agreement and underlying technology license with Fortune 500 corporation for the next generation of client’s devices
- Represented a non-profit provider of a database in the negotiation of a license agreement with a local governmental entity for the use of the data in the provision of social services
- Corporate transactional matters in which Sean has assisted clients include:
- Represented an insurer in the termination of a joint venture and acquisition of 100% of the equity of a Florida property and casualty insurance company and the simultaneous divestiture, through a reinsurance transaction, of its participation in an insurance joint venture in Ohio, Pennsylvania and Kentucky
- Represented hearing care product manufacturer in acquisition of provider of business and performance management solutions to independent hearing care practices for approximately $150 million
- Represented health insurance company in the $65 million acquisition of a health information technology service company
- Represented a manufacturer of component and subsystem devices in the $65 million acquisition of a manufacturer of proprietary touch sensitive user interfaces
- Regularly represent a hearing care product manufacturer in connection with the establishment of joint venture and financing arrangements with distributors of its products
Professional Affiliations :
- Member, Chicago Bar Association
- Member, American Bar Association
- J.D., University of Michigan Law School, 1996
- Michigan Journal of International Law
- B.S.E., cum laude, University of Michigan, 1993
Admissions : California, 2014; Illinois, 1997
Rate : $$$