Electronic monitoring company, Tekelek, has partnered with fuel technology leader, Paygo, for business development in their respective markets. The agreement, announced during an Enterprise Ireland Trade Mission led by Minister Sean Canney TD, allows both organizations to capitalize on advances in IoT technologies to provide greater intelligence for the management and procurement of industrial fuels.
Pictured (L-R): Colm Rochford, Tekelek Product Applications Manager; Duane Walton, Paygo Account Executive; Oliver McCarthy, Tekelek General Manager; and Minister Sean Canney TD.
Tekelek is delighted to announce that they secured an order for $1.4m with Paygo to serve the US and Canadian markets. In parallel, Tekelek is now developing an intrinsically safe sensor to facilitate the expansion of Paygo’s service offering.
“This agreement allows Tekelek and Paygo to make the most of a timely opportunity, effectively scaling in new territories,” said Leo McAdams, International Sales and Partnering Manager, at Enterprise Ireland. “We are very pleased to facilitate and support international partnerships between Irish and Canadian businesses as they each seek to develop business in new ways. Today’s agreement between Paygo and Tekelek presents an exciting opportunity for growth, and Enterprise Ireland will continue to support Tekelek’s expansion in Canada.”
Founded in 1995, Tekelek has established a strong European market with a range of tank monitor technologies including the Gremlin Tank Monitor. Tekelek also specializes in control based design and manufacturing solutions. These are collaborative and customized products that pride themselves on meeting environmental highly regulated environmental standards. Tekelek’s niche is delivering product requirements where innovation and flexibility is key.
“IoT in industrial applications is facilitating smarter decision-making and leaner, more agile businesses,” Oliver McCarthy, General Manager, Tekelek said today. “We’re very excited to apply this thinking and our technology to the industrial fuels market-place and we’re similarly pleased to partner with an organization of Paygo’s caliber to bring our technologies to the North America market.”
Phil Baratz, CEO Paygo, said “We at Paygo are delighted to be associated with Tekelek. Having completed a rigorous research and development process, it is great to introduce the Gremlin tank monitor to our customers in Canada and the United States. We see it as strengthening our current range of products and services.”
In the United States, Irish companies supported by Enterprise Ireland in the United States have created over 80,000 jobs. Seven hundred companies, operating across all 50 US states, provide employment in a diverse array of high-value sectors, including consumer products, construction products, and services, life sciences, software, food manufacturing, industrial and engineering products.
“The state of Ireland’s partnership with the United States is strong,” said Julie Sinnamon, CEO, Enterprise Ireland. “Our shared values, expertise and experience is business-positive for both countries — as evidenced by the 80,000 jobs created by Enterprise Ireland supported companies in the United States.”
Irish firms at the vanguard of employment growth in the United States include:
Sysnet Ltd.: A leading provider of cyber security and compliance solutions to the payments industry, Sysnet recently announced a $2 million investment and the creation of 500 new jobs for a new contact center in DeKalb County, Atlanta.
Oldcastle: The North American arm of CRH plc., one of the world’s leading building products and materials companies based in Dublin, Ireland. Oldcastle has more than 1,700 operations in 50 states and 6 Canadian provinces.
Kerry Group: One of the largest players in the global food industry with current annual sales of approximately $6.5 billion and multiple manufacturing operations across the United States.
Smurfit Kappa: A world leader in paper-based packaging with approximately $8.5 billion in global sales, Smurfit Kappa employs over 43,000 people globally and owns multiple recycling and manufacturing operations across the southwestern United States.
Glanbia: One of the world’s top nutrition companies, Glanbia employs 2,000 people in 29 countries. The United States has the most Glanbia facilities of any country, with 12 manufacturing operations and corporate offices across seven states.
Initiafy, a client of Enterprise Ireland in Canada was invited to attend a breakfast meeting to commemorate the trade partnerships between Canada and Ireland. What’s exciting is that many of these companies, including Initiafy have created strong roots in Canada, and we can expect them to grow exponentially in the coming months!
Initiafy is a SaaS (Software as a Service) company that specializes in helping large organizations in many industries such as construction, oil/gas and mining. Initiafy helps these companies easily on-board and train their new contractors and employees. The software company is expanding in several global markets, including Canada. Initiafy has proven to cut costs by more than 75% and simultaneously reduce the number of accidents and loss time injuries in the workplace.
Representing Initiafy, Kevin Mathiasz, Initiafy’s business development manager, had a one-on-one meeting with the Irish ambassador to Canada, Mr. Jim Kelly and Irish Minister, Eoghan Murphy. Together, they discussed Initiafy’s progress, constant development and how the company is continuing to expand in the Canadian market.
With an office in Toronto since 2007, Enterprise Ireland views Canada as a highly accessible market of opportunity for Irish exports. The Canadian economy shows strong and stable rates of growth, and Irish firms should seek to benefit from the expanded trade opportunities presented through the recent CETA agreement between Canada and the EU.
That’s why Enterprise Ireland is pleased to host a Trade Mission to Toronto and Ottawa this coming May, led by Minister for Jobs, Enterprise and Innovation Mary Mitchell O Connor. Joining us will be a delegation of highly ambitious Irish companies from a variety of sectors, all seeking to grow their business in Canada.
For more information, contact the EI team in Toronto.
Each year, the South by South West (SXSW) festival in Austin, Texas, brings together the best, brightest, and most innovative people and companies to celebrate the convergence of the interactive, film and music industries. The event — an essential destination for global professionals — features a wide variety of business and networking opportunities.
“Being at South by Southwest, you get to meet your clients, and you get to meet new prospects. It’s a reminder to them that you’re in the space and you’re important,” said Kevin Lowe, Head of Sales, NewsWhip.
EI also hosted a business panel with Garret Flower of Parkpnp, Karl Llewellyn from Sanctifly, and Fearghal Kelly from digisoft.tv, participating in the informative discussions. The panel was moderated by Daniel Ramamoorthy of Parkpnp, and they discussed why Ireland was a great place to do business, and how Irish startups are getting noticed.
“Enterprise Ireland is a government body that helps Irish businesses grow, test their business ideas, establish some feasibility of their business ideas, and become investor-ready,” said Carol McKeon, CEO and Founder, DataKraft. “Everybody loves Ireland. There’s so many people who are a little bit Irish, and they see Ireland here, and there’s such enthusiasm and such a warm reception to us.”
With roughly 75,000 in attendance this year, and journalists representing thousands of different print, radio, TV, and digital outlets from across the US and around the world, SXSW continues to prove that the most unexpected discoveries happen when diverse topics and people come together.
Enterprise Ireland has teamed up with Daniel Glazer a partner at Wilson Sonsini Goodrich & Rosati, where Daniel leads the New York office’s technology transactions practice and also advises Irish and other European emerging technology companies on US expansion, fundraising and strategic partnership transactions. This series will offer perspectives on setting up a business in the US and considerations for Irish companies looking to raise VC investment from US investors
After Irish startups start to establish themselves in the domestic market, many consider expanding their businesses to the US. Whether or not actually on the ground in the US, Irish technology companies looking stateside will need to deal with US contracts that may contain unfamiliar terms and concepts.
This article addresses five pitfalls Irish companies should avoid when entering into technology contracts with US companies. These risks can be mitigated, but only if your company is sensitive to them during negotiations.
All US laws are not created equal
Although for simplicity’s sake this article will refer to “US law,” for the most part there is no single body of US contract law. Rather, each of the 50 US states has its own contract law, and your US partner likely will insist that the contract be governed by the laws of a US state with which that company is familiar. The larger US commercial centers, such as the states of New York and California, tend to have better-developed, more predictable contract laws.
The contract laws of the various states generally adhere to common themes, but each state’s laws have their own idiosyncrasies. For example, New York state law allows parties to select New York law to govern commercial contracts that bear no relation to New York, but only if the contract is worth more than $250,000.
As another example, California state law offers broad protection to technology developers, in some circumstances interpreting IP transfer language in a manner that recognizes a potentially unintended employment relationship between California technology developers and companies commissioning technology development.
Indemnification is expected
US commercial litigation is relatively common, in part because unsuccessful US litigants usually are not required to pay the prevailing party’s legal costs. Accordingly, there is a particular focus in US contracts on obtaining financial protection against litigation claims.
When contracting with a US company, your company most likely will be asked to defend the US company against certain types of claims and indemnify it for related losses. Common topics for indemnification include breach of confidentiality obligations, violations of law, damage to property, and personal injury.
Indemnification for intellectual property infringement claims asserted by third parties is a key provision in technology contracts, as US intellectual property litigation is particularly widespread and costly. Technology recipients typically will ask for an IP infringement indemnity from their providers, but the provider may seek to limit, eliminate or even reverse the indemnity obligation when the alleged infringement was the recipient’s fault (such as where the alleged infringement was caused by the recipient’s unauthorized use or modifications of the provider’s technology, the recipient’s failure to implement a work-around, or the provider’s compliance with recipient’s instructions).
Ensure appropriate confidentiality protection
US laws governing confidentiality obligations can be tricky. Your company should carefully consider the ramifications of any proposed limit on the duration of your partner’s obligation to protect your valuable confidential and proprietary information (characterized as “trade secrets” under US law).
Trade secret protection exists indefinitely under US law unless the information is disclosed without a duty of confidentiality or independently discovered; the long-secret Coca-Cola formula is perhaps the best-known example. Agreeing to term-limited confidentiality obligations for your company’s trade secrets creates a significant risk that your company will lose the ability to protect the information.
Beware joint ownership
Joint ownership of technology commonly is viewed as an efficient way to avoid difficult negotiations over intellectual property rights. However, joint ownership can result in uncertainty at best and, at worst, hinder your company’s ability to use and commercialize the jointly-owned technology.
The rules of joint ownership vary not only among the different types of intellectual property (e.g., patents, copyrights, trade secrets and trademarks), but also among various countries. Under US law, each joint copyright owner may commercialize the copyrighted work without the other joint owners’ consent, but must account for licensing royalties received and may not destroy the value of the work. This is different than, for example, UK law, which states that joint copyright owners cannot exploit their rights in the work without the other joint owners’ consent. It also is different than the US rule on joint patent ownership, which is that joint patent owners have no duty to account to the other joint owners for licensing royalties.
Joint owners can agree to modify these rules in their contract, but they likely will apply by default if the contract specifies without further elaboration that the parties are “joint owners” of developed technology.
Use the present tense
Language intended to assign rights to your company should reflect a present transfer of rights (e.g., the counterparty “hereby assigns” its rights), not a future promise to transfer (e.g., “will assign” or “agrees to assign”). Under the latter formulation, your US partner’s failure to deliver the promised assignment may result in a breach of contract claim, but not necessarily ownership of the relevant IP rights.
This distinction figured prominently in a case recently decided by the US Supreme Court, which found that the “agree to assign” language was merely a promise to assign – a promise that the inventor could not keep due to his subsequent present assignment of rights to a competitor. Although this is clearly a worst-case scenario, it highlights the importance of drafting the transfer of rights in a manner that will withstand scrutiny under US law.
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Business moves quickly in the digital age, and there is understandable reluctance to potentially lose a deal crucial to US expansion due to an excess of caution over legal terms.
However, having a US-qualified lawyer conduct at least a brief review of your company’s US agreements – typically for a pre-agreed fixed cost – will help ensure you get the deal you think you’re getting.
Daniel Glazer leads the US expansion team, and the NYC Tech Transactions practice, at Silicon Valley-based Wilson Sonsini. He can be reached at email@example.com.
Robert Mollen advises European companies on US matters at Fried Frank in London. He can be reached at firstname.lastname@example.org.
Insights from the North American Chief Learning Officer Symposium in Florida. Enterprise Ireland supported a delegation of Irish companies to attend the event to learn, make connections and enhance their business opportunities in the US.
Rory O’Doherty Trade Development Executive from the New York Office shares his insights and learnings from this recent successful event which can be viewed here
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