Evaluating and Acquiring Patent Portfolios: Key Considerations

Structuring the Transaction, Conducting Due Diligence, Drafting and Negotiating Key Provisions

A live 90-minute premium CLE video webinar with interactive Q&A

This program is included with the Strafford CLE Pass. Click for more information.
This program is included with the Strafford All-Access Pass. Click for more information.

Thursday, February 23, 2023

1:00pm-2:30pm EST, 10:00am-11:30am PST

or call 1-800-926-7926

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.

Description

There are several reasons that may prompt companies to consider acquiring a patent portfolio, including improving innovation or preventing future litigation. As companies recognize the value of patents and their strategic importance, such acquisitions have become increasingly common.

As with other acquisitions, due diligence is critical in a patent portfolio acquisition. The diligence will focus on ownership issues, maintenance status, abandoned patents, current applications, licenses in place, and whether there are any obligations to standards bodies, among other things.

Several key provisions should be included in the acquisition agreement, including transfer provisions, reps and warranties, indemnification, and dispute resolution provisions. Patent buyers should also consider the Supreme Court's ruling in Hologic (2021), which may warrant some additional contractual protections.

Listen as our authoritative panel of patent attorneys examines key considerations for evaluating and acquiring patent portfolios. The panel will provide insight into strategic considerations and transaction structures. The panel will also discuss the key issues to consider when conducting patent portfolio due diligence and offer best practices for drafting the provisions of a patent purchase agreement.

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Outline

  1. Key considerations when evaluating patent portfolios for acquisition
  2. Strategic considerations
  3. Transaction structures
  4. Patent portfolio due diligence
  5. 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

O'Brien, Charles
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

Lennon, Michael
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

Toren, Peter
Peter J. Toren

Shareholder
Anderson Kill

Mr. Toren represents clients in patent litigation involving a variety of technologies including computer software...  |  Read More

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