Evaluating and Acquiring Patent Portfolios: Key Considerations
Structuring the Transaction, Conducting Due Diligence, Drafting and Negotiating Key Provisions
Recording of a 90-minute premium CLE video webinar with Q&A
This CLE webinar will guide patent counsel on the key considerations for evaluating and acquiring patent portfolios. The panel will provide insight into strategic considerations and transaction structures as well as the key issues to consider when conducting patent portfolio due diligence. The panel will offer best practices for drafting the provisions of a patent purchase agreement.
Outline
- Key considerations when evaluating patent portfolios for acquisition
- Strategic considerations
- Transaction structures
- Patent portfolio due diligence
- Best practices for drafting purchase agreement provisions
Benefits
The panel will review these and other vital issues:
- What strategic considerations drive a patent portfolio acquisition?
- During due diligence, what should be included in the scope and status of the patent portfolio?
Faculty
Charles F. O'Brien
Partner; Chair of the IP Transaction Practice
Cantor Colburn
Mr. O'Brien concentrates his transactional practice on the exploitation, transfer and licensing of technology. He... | Read More
Mr. O'Brien concentrates his transactional practice on the exploitation, transfer and licensing of technology. He has extensive experience in all aspects of complex IP licensing, including the preparation and negotiation of patent license agreements, software license agreements, joint development agreements, trademark license agreements, material transfer agreements, joint marketing and promotion agreements, and the like. Mr. O'Brien is also a member of the firm’s Litigation Department and has extensive experience in litigating IP related actions, including patent infringement actions and contractual disputes regarding IP rights. These skills provide him with useful and sometimes critical insight for his clients into issues and conflicts that can arise in IP transactional matters. This allows him to address these potential issues and conflicts early on at the transactional stage.
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Michael J. Lennon
Partner
Potomac Law Group
Mr. Lennon is a Partner in the firm’s Litigation, Patent, Intellectual Property, and Technology and IP... | Read More
Mr. Lennon is a Partner in the firm’s Litigation, Patent, Intellectual Property, and Technology and IP Transactions Practices, focusing on complex litigation, licensing and business transactions relating to intellectual property rights. Over his decades of practicing law, Mr. Lennon has represented and acted as an advisor to numerous multinational technology companies in industries ranging from medical devices to wind power systems. In transactional matters, Mr. Lennon acts as both legal counsel and as a strategic advisor to his clients, and he has negotiated numerous agreements relating to the acquisition, licensing and monetization of IP. He has appeared as trial counsel in more than 125 patent infringement, trade secret, licensing dispute and patent-antitrust lawsuits in the U.S. federal district courts, the U.S. International Trade Commission and the Federal Circuit.
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Peter J. Toren
Shareholder
Anderson Kill
Mr. Toren represents clients in patent litigation involving a variety of technologies including computer software... | Read More
Mr. Toren represents clients in patent litigation involving a variety of technologies including computer software and hardware, light emitting diodes, biotechnology, semiconductor manufacturing and fabrication, optics and medical devices as well as business methods. He has successfully obtained and defended motions for preliminary injunctions and summary judgment motions involving the Patent Act, Copyright Act, Lanham Act, Digital Millennium Copyright Act and Computer Fraud and Abuse Act. In addition to intellectual property litigation, Mr. Toren has experience in computer law, including cybersecurity. He is a former federal prosecutor with the Computer Crime and Intellectual Property Section of the Criminal Division of the United States Department of Justice where he worked for over eight years and also served as Acting Deputy Chief.
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