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
This CLE course 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.
- Considerations regarding the diligence team reviewing confidential information
- NDA considerations
- Clean teams
- Employing a consultant or expert
- Due diligence issues relating to the target's agreements
- Identifying agreements that may impact the value of the target
- Evaluating the transferability of critical contracts from the target to the acquiring company
- The corporate structure of the final entity and effects on licenses/IP-related agreements
- Restrictive clauses that may impact business goals of the acquirer
- Typical problems arising during due diligence
- IP ownership and lien verification
- Third-party roadblocks to commercial activity post-acquisition
- Handling opinions (e.g., FTO, validity, etc.) or the lack thereof during due diligence
- Leveraging due diligence results in deal negotiations
- Value drivers
- 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?
Kirkland & Ellis
Ms. Darvall’s practice focuses on advising clients on a wide variety of commercial transactions involving... | Read More
Ms. Darvall’s practice focuses on advising clients on a wide variety of commercial transactions involving intellectual property, including technology, software, trademark, patent, and copyright licensing and analysis, protection of trade secrets and rights of publicity, as well as privacy and other issues related to doing business on the internet, technology transfer and development agreements, and e-commerce agreements. In addition, her experience includes evaluating and advising on IP and technology issues that arise in general corporate transactions such as mergers and acquisitions, private equity, and debt financing transactions. Ms. Darvall has advised U.S. and foreign companies on intellectual property protection and ownership issues in the context of collaborations and joint-ventures. She has particular interest in software transactions and open source issues, privacy and data security, and intellectual property protection issues, the latter arising from her background in media and entertainment.Close
Hunton Andrews Kurth
As Co-Head of the firm’s Intellectual Property Practice Group, Mr. Maddry focuses his practice on complex... | Read More
As Co-Head of the firm’s Intellectual Property Practice Group, Mr. Maddry focuses his practice on complex intellectual property and technology contracts. He represents clients ranging from Fortune 100 companies to startups in structuring, drafting and negotiating complex intellectual property and technology contracts, including comprehensive master services agreements, joint development agreements, patent and technology license agreements, software licenses, software as a service (SaaS) agreements, data licensing, trademark license agreements, and IP and technology transfer agreements. Mr. Maddry also has extensive experience in structuring and negotiating IP and technology provisions in M&A transactions, conducting IP and IT due diligence investigations, advising on open source software compliance, litigation of intellectual property rights, and resolution of IP and technology contract disputes. His practice covers a range of industries, including life sciences, information technology, financial services, and telecommunications.Close