Rhona E. Schmidt
PEOPLE

Rhona E. Schmidt

Partner
schmidt.rhona@dorsey.com

Overview

RHONA HELPS CLIENTS WITH COMPLEX COMMERCIAL CONTRACTS AND LICENSE AGREEMENTS INVOLVING TECHNOLOGY AND INTELLECTUAL PROPERTY RIGHTS. RHONA PROVIDES PRACTICAL ADVICE BASED ON 20+ YEARS OF EXPERIENCE WORKING BOTH BUY AND SELL SIDE ACROSS INDUSTRIES.

License agreements and other commercial contracts covering technology, products and services are ongoing, relationship contracts. An ability to get a deal completed in a manner that reflects fairly on both parties, and meets each parties’ objectives, is key to a successful, long-term relationship. Working with both buyers and sellers of technology, products and services over the years across industries has provided Rhona with a wealth of background on how to accomplish a fair deal and what terms a client is likely to be able to negotiate, given the particular industry and leverage of the parties.

Rhona works closely with clients and their counterparts to understand their business objectives and to structure transactions that meet those goals. Rhona has deep experience in licensing intellectual property rights, as well as the operations side of commercial contracts, and how liability is typically structured.  Rhona is a member of the firm’s Technology Commerce Practice Group (former Co-Chair) and currently serves on the firm’s Management Committee.

 

Education & Admissions

William Mitchell College of Law (J.D., 2000), summa cum laude
Salutatorian

College of Law, London (1998), Qualified Lawyer's Transfer Test
(allows for the practice of law in England)

University of Minnesota Law School (LL.M., with thesis, 1995)

University of Aberdeen, Scotland (Dip. L.P., 1994),   University of Aberdeen, Scotland
LL.B., June 1993, Honours

Admissions

  • Scotland
  • Minnesota

Experience

Representative Transactions

Development and Collaboration Agreements:

  •  Buy-side:
    • General representation of client in their Sponsored Research Agreements with universities in the US and around the globe.
    • General representation of client in agreements for the development of new technologies in the consumer device space and subsequent commercialization.
    • Represented clients in development and services agreement for the development of various mission critical technologies for their use in different industries, including platform technology, applications and websites.
  • Sell-side:
    • General representation of a design and manufacturing company in drafting and negotiating development and manufacturing agreements for medical device clients.
  • Joint:
    • Represented a public company in a joint development agreement and license arrangement for the joint development of crop nutrient products.
    • Represented a multi-specialty health care company, in a strategic collaboration to develop and commercialize a new skin care line. 

IT and Outsourcing Agreements:

  • Buy-side:
    • Represented multiple clients with licensing in ERP solutions, HR and payroll solutions, wealth management solutions, IaaS, PaaS, application management, and other mission critical solutions, and in transforming their on premises models to cloud models and vice versa.
    • Represented multiple hospital clients in licensing in ERM solutions and other mission critical tools used in hospital operations.
    • Represented multiple clients engaging with cloud vendors for use of their cloud environments.
  • Sell-side:
    • Representation of multiple software-as-a-service (SaaS) vendors, including tools for ecommerce CRM, trading, school integration and exchange, higher education fundraising, human capital management, hotel and car park reservations, expertise certifications, and coding for healthcare.
    • Representation of multiple clients with platform technologies, including software, AI, SaaS, hardware and/or services for various industries.
    • Represented integrator of third party software solutions.
    • Represented multiple clients in the creation of their template agreements for selling both on premises and SaaS solutions, including ancillary maintenance and hosting terms.
    • Represented Optum360 in the provision of end-to-end revenue cycle management services to key coastal hospital systems. 
    • Represent agricultural technology client in platform technology agreement.

Other Commercial/ License Transactions: 

  • Buy-Side:
    • Represented multiple clients licensing in technology and/or intellectual property rights including patents, know-how and copyright, including for medical device technology and drugs and other technologies.
    • Represented multiple clients in purchasing under supply agreements for various types of products, including consumer goods, medical devices and capital equipment.
    • Represented clients who are distributors or sales reps in their distribution/sales rep agreements.
    • Represented multiple clients in the creation of their template agreements for purchasing various products and services.
  • Sell-side:
    • Represented multiple clients who are licensors of technology and/or intellectual property rights including patents, know-how and copyright, including for food products, concentration of water and other liquids, medical device and drug technologies, indices and other financial services, toys, and other technologies.
    • Represented clients in selling under supply agreements for various types of products including consumer goods, medical devices, and capital equipment.
    • Represented clients who are contracting with distributors and sales representatives to sell their products/services.
 

News & Resources

Select Presentations

  • “Technology Contracting – Traps That Can Trip Up Even the Most Experienced Attorney,” co-presenter, Computer & Technology Law Institute, October 29, 2015
  • “Cybersecurity Symposium,” co-presenter, Dorsey & Whitney LLP, Des Moines Botanical Center, November 12, 2014
  • Protecting Your Legal Interests in the Cybersecurity Space, Dorsey U client seminar as part of Cybersecurity Presentation, March 12, 2014
  • Revenue Recognition Provisions in Software Deals, MN CLE, March 4, 2014
  • We’re Beyond Web 2.0-Are Your M&A IP Reps Still from (Gasp!) the Dot–Com Age?, Dorsey U client seminar, February 27, 2013 
  • Presented on IT Contract Issues to Iowa client legal and business team, February 2013 
  • Led series on software licenses, maintenance agreements, professional services agreements and SaaS agreement, Dorsey U, November and December 2011 and January 2012 
  • Participated in panel presentation, 7 Scenarios Analyzed: Wrangling "The Cloud" for Your Clients, Minnesota CLE, October 2011 
  • Webinar on Hot Legal Issues in EHR Contract Negotiation and Renegotiation, Stratis Health, May 2011 
  • Yes, All Those Words Really Do Matter: A Guide to Drafting and Negotiating Indemnification Clauses, Dorsey U, November 2009 
  • Participate in presenting contract law in Virtual Gaming seminar at William Mitchell College of Law, 2009, 2008 
  • Contractual Tools in Food Industry, TechLaw Group, Inc., May 2009 
  • A Guide to Drafting and Negotiating Indemnification Clauses, Dorsey U, November 2009 
  • A Practical Guide to Warranties and Disclaimers in Commercial Contracts, Minnesota CLE, April 2008

Industries & Practices

Cybersecurity, Privacy & Social Media
  • Banking & Financial Institutions
  • Blockchain & Digital Assets
  • Creative Industries
  • Cybersecurity, Privacy & Social Media
  • Digital Health
  • Emerging Companies
  • Energy & Natural Resources
  • FinTech
  • Food, Beverage & Agribusiness
  • Healthcare
  • Hospitality
  • Mergers & Acquisitions
  • Sustainability
  • Technology
  • Technology Commerce

Professional & Civic

Professional Achievements

  • Member of the Minnesota Bar Association
  • Member of the Law Society of Scotland
  • Co-chair of E-commerce Committee, Business Law Section, Minnesota State Bar Association, 2009 to 2011

Accolades

  • Named Attorney of the Month in Attorney at Law Magazine, 2019
  • Listed as a "Rising Star" by Minnesota Super Lawyers, 2008 and 2009
Rhona E. Schmidt