IP Due Diligence in M&A: Investigating Transferability of IP Assets, Blocking Rights, Liens and Other Encumbrances

Leveraging Diligence Results When Negotiating Price and Other Deal Terms

Recording of a 90-minute premium CLE webinar with Q&A

Conducted on Thursday, October 4, 2018

Recorded event now available

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Program Materials

This CLE webinar will guide counsel for conducting intellectual property due diligence in merger and acquisition deals. The panel will outline best practices for conducting the IP investigation and leveraging the investigation results in negotiating pricing and other deal terms.


What a buyer seeks to achieve with a transaction should determine the focus and scope of IP due diligence.

IP and corporate lawyers usually recognize that verification of IP rights central to the deal is an essential component of IP due diligence, but many do not understand and appreciate the more complex issues that can arise.

These issues may include: (1) transferability of licenses, IP assets and other IP rights to the buyer, (2) how IP licenses may limit the buyer’s business goals, (3) IP ownership verification, (4) identifying blocking rights, and (5) removing liens and other encumbrances on IP assets.

Listen as our authoritative panel explains critical considerations for conducting IP due diligence in M&A deals and offers strategies for using the results of due diligence to negotiate pricing and other deal terms.



  1. Considerations regarding diligence team reviewing confidential information
    1. Preventing taint
    2. Employing a consultant or expert
  2. NDA considerations for second phase
  3. Due diligence issues relating to the target’s agreements
    1. Identifying agreements that may impact the value of the target
    2. Evaluating the transferability of key agreements from the target to the acquiring company
    3. Corporate structure of final entity and effects on licenses/IP-related agreements
    4. Restrictive clauses that may impact business goals of acquirer
  4. Typical problems arising during due diligence
    1. IP ownership and lien verification
    2. Third-party roadblocks to commercial activity post-acquisition
    3. Handling opinions (e.g., FTO, validity, etc.) or the lack thereof during due diligence
  5. Leveraging due diligence results in deal negotiations
    1. Value drivers
    2. Deal points


The panel will review these and other relevant issues:

  • What are the best approaches for counsel to identify the IP assets to review during due diligence?
  • How should counsel address IP ownership questions that arise during due diligence?
  • How can counsel leverage information from the due diligence process in deal negotiations?


Colson, Randall
Randall E. Colson

Partner, Head of Technology Transactions Practice Group
Haynes and Boone

Mr. Colson has extensive experience counseling clients with a myriad of technology and intellectual property-related...  |  Read More

Feingold, Stephen
Stephen Feingold

Kilpatrick Townsend & Stockton

Mr. Feingold's practice focuses on trademark, copyright, advertising and Internet matters. He has handled complex...  |  Read More

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