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 1, 2020

Recorded event now available

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Course Materials

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.


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. Still, 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 due diligence findings to negotiate pricing and other deal terms.



  1. Considerations regarding the diligence team reviewing confidential information
    1. NDA considerations
    2. Clean teams
    3. Employing a consultant or expert
  2. 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 critical contracts from the target to the acquiring company
    3. The corporate structure of the final entity and effects on licenses/IP-related agreements
    4. Restrictive clauses that may impact business goals of the acquirer
  3. 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
  4. 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?


Darvall, Daisy
Daisy Darvall

Kirkland & Ellis

Ms. Darvall’s practice focuses on advising clients on a wide variety of commercial transactions involving...  |  Read More

Maddry, Tyler
Tyler Maddry

Hunton Andrews Kurth

As Co-Head of the firm’s Intellectual Property Practice Group, Mr. Maddry focuses his practice on complex...  |  Read More

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