Part 4: What US VCs Require to Invest in Irish Companies

Part 4: What US VCs Require to Invest in Irish Companies

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

Post below written by Daniel Glazer, Wilson Sonsini Goodrich & Rosati and Robert Mollen, Fried Frank Harris Shriver & Jacobson

US Expansion – Setting up the Right Way

What US VCs Require to Invest in Irish Companies

Daniel Glazer, Wilson Sonsini Goodrich & Rosati and Robert Mollen, Fried Frank Harris Shriver & Jacobson

We are frequently asked by Irish companies what they need to do to attract US venture capital (VC) investment.  This article discusses the general requirements of US VCs considering early-stage investment (Superseed/Series A or Series B) in Irish startups.

Proximity matters – how near are you to the VC?
Venture capitalists – especially in Silicon Valley – place a high value on proximity to their early-stage investments.  The reason for this is that VCs bring to the table not just capital, but also their experience, advice and networks.

Consequently, we find most US VCs are reluctant to make early-stage investments in Irish companies without a founder (or at least a strong decision-making team) in reasonable proximity to the VC’s location.   We have seen exceptions where the VC was willing to invest in a company on the condition that it uses the funds to establish US operations.  However, in our experience this is usually where the company already has contracts with, and revenues from, significant US customers and business partners so that its further US business potential is clear.

It may be possible for an Irish company to raise early-stage funding from a US VC without a significant US presence if the US VC teams with an Irish or another non-US VC.  In this scenario, the non-US VC leads a Superseed/Series A round (with participation from the US VC) for a company located near to the non-US VC.  The US VC is then in prime position to lead the next investment round when the company sets up in the US.  While we believe this kind of cross-border teaming will increase, at present it’s not particularly common.

Thus, Irish companies seeking US investment may be faced with pressure to establish US operations earlier than they might otherwise prefer.  This can be done cost-effectively, but it’s still expensive relative to the operating budget of a typical early-stage company.  There also typically needs to be a founder willing to relocate to the US, and the company will need to work out an approach to cross-border management.  For Irish companies, this poses particular challenges if the most likely potential VC investors are on the West Coast – that is eight time zones distant, with potential flight times of 11 hours or more.

To be clear, as we’ve discussed in a previous article, setting up in the US does not necessarily require an Irish company to “flip” to become a subsidiary of a Delaware-incorporated holding company, and there are good reasons to resist doing so.  However, it is advisable to form a US subsidiary corporation (probably in Delaware) to do business in the state or states where you want to establish your operations.

Comfort with local laws and tax
While many US VCs are prepared to make early-stage investments in Irish and UK holding companies, you are likely to find lower levels of comfort with companies based in many other European jurisdictions.  That is not because there is anything inherently wrong with those countries’ laws, but rather because it may be expensive for the early-stage VC to gain sufficient understanding of the relevant corporate and tax laws.  As you would expect, this is less true of larger early-stage VCs, who are more likely to have made prior investments across a wider set of jurisdictions.

Relevance of sector, competition and expertise
US VCs are also likely to be more interested in Irish companies in some sectors than in others.  Some of this has to do with the reputation that some countries and their start-ups have already developed as leading in certain sectors.   For example, European and Israeli companies in fintech or cybersecurity businesses have attracted specific interest from US investors, particularly where the companies have notable US customers and business partners.

As we’ll discuss in more detail in a subsequent article, it is important for you to identify which VCs are most likely to be interested in, and knowledgeable about, your business.  You should also consider whether they are already investing in companies that are competitive with, or complementary to, your company’s business.  More generally, you need to have a deep understanding of your global competitors.  US VCs are only likely to invest in Irish companies if they are seen as having a true competitive advantage over investment opportunities in the same sector within the United States.

 

Daniel Glazer leads the US expansion team, and the NYC Tech Transactions practice, at Silicon Valley-based Wilson Sonsini.  He can be reached at daniel.glazer@wsgr.com.

Robert Mollen advises European companies on US matters at Fried Frank in London.  He can be reached at robert.mollen@friedfrank.com.

 

Part 2: Negotiating Technology Contracts with US Companies

Part 2: Negotiating Technology Contracts with US Companies

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

US Expansion – Setting up the Right Way

This post has been written by Daniel GlazerWilson Sonsini Goodrich & Rosati and Robert MollenFried Frank Harris Shriver & Jacobson

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.

*             *             *

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 daniel.glazer@wsgr.com.

Robert Mollen advises European companies on US matters at Fried Frank in London.  He can be reached at robert.mollen@friedfrank.com.

 

 

Part 1 : US Expansion – Setting up the Right Way

Part 1 : US Expansion – Setting up the Right Way

US Expansion – Setting up the Right Way

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.

This is the first part of a series that will be posted on the blog, prepared by Daniel Glazer, Wilson Sonsini Goodrich & Rosati and  Robert Mollen, Fried Frank Harris Shriver & Jacobson

US Expansion – Setting up the Right Way

Establishing US operations presents various administrative challenges. It makes sense to address as many of these as possible before you land, so you can focus on building your business when you’re on the ground.

None of this is particularly complicated, but it pays to be proactive. The US has a more complex legal and tax environment than most non-US jurisdictions, and the enforcement and liability risks are higher if something goes wrong.

Here is a checklist of ten key areas  you’ll want to address:

1. LEGAL
Corporate – Confirm your corporate structure. It typically will make sense to set up a US subsidiary to separate the US and Irish businesses, both for tax and liability reasons. Your US subsidiary also will need to appoint a registered agent, and “qualify to do business,” in every state in which you have an office or other similar presence.
Intellectual Property – Address US trademark issues defensively (confirming that no one else has prior registered or unregistered rights to your name and key brands) and offensively (by filing a US trademark application). Depending on your business, you may also need to address patent issues.
Contractual Terms and Conditions – Your contractual terms and conditions will need to be converted to the laws of a US state, for both legal and commercial reasons.
Employment – You will need US employment advice. Most US employees do not have employment contracts, but you should have confidentiality and IP assignment agreements with all employees. You’ll also be bound by offer letter terms, employee manuals and other undertakings. Employment-related litigation is a substantial risk in the US – while US employees can theoretically be fired “at will” without notice or cause, and there is no statutory redundancy, the risk of discrimination, harassment or other claims and litigation means that terminations require delicate handling.

2. TAX STRUCTURING AND COMPLIANCE
Establish appropriate arm’s-length arrangements between your Irish parent and its US subsidiary, in order to keep separate your Irish and US taxable income. This is particularly important since US corporate tax rates (federal and state), totalling about 40%, are typically 3x the level in Ireland. You also should put in place appropriate compliance procedures to address federal and state corporate income tax, as well as other potentially relevant tax regimes (sales tax, personal property tax, etc.), particularly at the state and local level. With care as to your choice of tax provider, this can be handled cost-effectively. If you send over personnel from outside the US, they will need expat tax advice and support.

3. BACK OFFICE SUPPORT
You will need help with book-keeping, employee tax withholding, HR and mandatory employee insurance and benefits, and similar matters. All of this can be out-sourced to companies experienced in working with high-growth companies.

4. BANKING
It can be difficult for a non-US company to set up banking for its US subsidiary. Some banks are particularly focused on banking high-growth companies on a trans-Atlantic basis, which can help ease the process.

5. IMMIGRATION
If you’re sending over personnel outside the US to staff your US office, they will require visas permitting them to work. You should allow three to four months to sort this out.

6. INSURANCE
The US is a high-risk environment. Get an insurance broker with trans-Atlantic experience to confirm your insurance arrangements (types of cover as well as terms and limits) are appropriate.

7. RECRUITMENT
The hardest part about setting up in the US is finding the right people. Obtaining recommendations from people whom you know and trust (such as your VC or angel investors, advisors, or other good friends) is likely to be the best way. If that’s not an option, however, you’ll need advice from a trustworthy source and will need to do appropriate diligence. Cross-cultural recruitment is hard; beware of the gap between “talking the talk and walking the walk” (especially with US sales people).

8. LOCATION
The US is a big place! Beware of pre-conceptions (e.g., that you must go to Silicon Valley). There are many markets in the US, from both a customer and investor standpoint, and you will need to assess a variety of factors, including the area of focus of your business, locations of potential investors, costs of doing business and, for Irish companies, the greater difficulties of managing operations on the West Coast (8 time zones; 11-hour flight) vs. the East Coast (5 time zones; 6-hour flight).

Once you’ve determined location, you’ll then need to address property issues – whether to go into a network of co-working spaces (like WeWork), accommodation offices (like Regus) or rent your own premises.

9. INCENTIVES AND SUPPORT
Government agencies (e.g., Enterprise Ireland, the US Commercial Service, and state and local development agencies) and international chambers of commerce can provide very useful support. State and local incentives for investment and job creation also may be available.

10. INVESTORS
If part of your reason for US establishment is to secure US investment, allow for the time it will take to build US investor trust. US investors will want to see that you have a sensible US-focused business plan and are committed to, and achieving traction in, the US market. Also, make sure your investor pitch materials are appropriate for the US market – sophisticated early stage US investors are more focused on prospects than existing revenues, and your materials need to convey convincingly why your business will generate blow-out returns.
US market entry can be daunting, but the basic steps required for establishment don’t need to be difficult. Just get appropriate, cost-effective advice and do it right from the start.

Daniel Glazer leads the US expansion team, and the NYC Tech Transactions practice, at Silicon Valley-based Wilson Sonsini.  He can be reached at daniel.glazer@wsgr.com.

Robert Mollen advises European companies on US matters at Fried Frank in London. He can be reached at robert.mollen@friedfrank.com.

 

Symmetry Surgical announces exclusive US distribution agreement with neoSurgical

Symmetry Surgical announces exclusive US distribution agreement with neoSurgical

NASHVILLE, TN – January 05, 2015 – Symmetry Surgical Inc. (Nasdaq:SSRG) announced today an exclusive distribution agreement in the United States with neoSurgical Limited for its innovative neoClose® Trocar Port Closure System. Symmetry Surgical’s sales representatives in the United States will begin selling the neoClose® System in the first quarter of 2015.NeoClose

neoSurgical received clearance to market neoClose® from the United States Food & Drug Administration (FDA) in 2013 for the closure of trocar ports used in robotic and laparoscopic surgical procedures. Since its pilot release, surgeons and clinicians have commented on the product’s ease-of-use, closing 5 mm to 15 mm trocar ports quickly, with virtually no learning curve. Barry Russell, Chief Executive Officer & Founder of neoSurgical Limited, commented, “neoClose® is the first product launch from neoSurgical and we are pleased to be able to partner with Symmetry Surgical on this agreement to achieve access to the entire U.S. market for our innovative solution for trocar port closure.”

Thomas J. Sullivan, Symmetry Surgical’s President and Chief Executive Officer, said, “We are pleased to enter an exclusive distribution agreement in the United States with neoSurgical for its unique neoClose® Trocar Port Closure System. neoSurgical has received positive physician feedback on the neoClose® system in its pilot launch, which gives us confidence that it will be well received in a national launch. Symmetry Surgical is ideally positioned to drive adoption of the neoClose® System with our U.S. sales force, broad customer relationships and strong complementary product offerings in laparoscopic surgical instruments and accessories.”

Mr. Sullivan added, “The collaboration with neoSurgical and the addition of the neoClose® System is aligned with our growth strategy, which is anchored on expanding our product offerings through distribution agreements with innovative companies, acquisitions into the broader $5 billion single use, re-usable, and re-posable surgical device market and our own new product development. Maintaining focus on executing this strategy will drive growth through our core business and in our new products.”

About neoSurgical
neoSurgical is an award-winning global medical device company focused on providing technical innovation to the surgical devices industry, particularly for those surgeons conducting laparoscopic and minimally invasive surgery (MIS). Winner of the 2014 Kinetic Process Innovation Award and the R&D 100 Award, neoSurgical leverages its in-depth expertise in interpreting surgeons’ needs and converting these needs via an innovative and market led engineering response to deliver compliant devices with the goal to make surgery safer, simpler and superior for both surgeons and their patients. The company’s European headquarters is in Dublin with U.S. headquarters in Boston. More information about neoSurgical can be found at www.neosurgical.com.

About Symmetry Surgical Inc.

Symmetry Surgical is dedicated to developing and delivering high-quality, innovative surgical instruments that meet clinicians’ needs and improve patients’ lives. Our team collaborates with healthcare providers around the world to provide medical devices that exceed our customers’ expectations and provide solutions for today’s needs and tomorrow’s growth. Our rich and diverse history creates one of the industry’s most comprehensive surgical instrument portfolios, which includes our well-known brands such as BOOKWALTER®, GREENBERG®, RILEY™, OLSEN™, ULTRA™, QUAD-LOCK®, FLASHPAK®, RAPIDCLEAN®, OPTI-LENGTH®, CLASSIC® and CLASSIC PLUS®. Symmetry Surgical is headquartered in Nashville, TN. For more information, please visit www.symmetrysurgical.com.

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