Structuring IP Provisions in Asset Purchase Agreements
Negotiating Scope of IP Assets, Representations and Warranties, Pre-Closing Covenants, and Ancillary IP Agreements
Recording of a 90-minute premium CLE webinar with Q&A
This CLE course will provide guidance for counsel involved in negotiating and drafting intellectual property (IP) aspects of asset purchase agreements, including reps and warranties and ancillary agreements. The panel will also address key IP considerations in asset purchase transactions.
Outline
- Key IP considerations in asset purchase transactions
- Implications of transaction structure on IP assets and liabilities
- Due diligence
- IP disputes and office actions
- Pending applications, registrations
- Security interests
- Negotiating and drafting IP aspects of asset purchase agreements
- Reps and warranties
- Implied warranties of non-infringement
- Assignments and licenses
- Pre-closing covenants
- Ancillary IP agreements
Benefits
The panel will review these and other key issues:
- What are the key IP factors for counsel to consider in an asset purchase transaction?
- What are the best approaches for counsel to identify the IP assets and ensure ownership?
- What key provisions should be included when drafting IP aspects of asset purchase agreements?
Faculty
Jessica N. Cohen
Counsel
Skadden Arps Slate Meagher & Flom
Ms. Cohen focuses on intellectual property and technology issues in a wide variety of transactions, including licensing... | Read More
Ms. Cohen focuses on intellectual property and technology issues in a wide variety of transactions, including licensing and development agreements, outsourcing agreements, service agreements, strategic alliances, and M&As. As part of the firm’s Intellectual Property and Technology Group, Ms. Cohen counsels clients both large and small on IP protection and ownership issues, and technology implementation and maintenance issues. Ms. Cohen also advises clients on general commercial contract issues, including those arising in manufacturing and supply arrangements.
CloseSpencer F. Simon
Special Counsel
Sullivan & Cromwell
Mr. Simon’s practice focuses primarily on the representation of technology-intensive companies in all aspects of... | Read More
Mr. Simon’s practice focuses primarily on the representation of technology-intensive companies in all aspects of intellectual property and corporate transactions, and data protection and cybersecurity matters. His practice covers a broad spectrum of technologies, including pharmaceutical, biotechnology, medical devices, semiconductor, information, software and telecommunications.
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Dr. Robert H. Underwood
Partner
McDermott Will & Emery
Dr. Underwood has extensive experience creating U.S. and international intellectual property rights, and identifying... | Read More
Dr. Underwood has extensive experience creating U.S. and international intellectual property rights, and identifying and evaluating third party IP risks, to help clients achieve business objectives. He assists clients with strategic counseling, patent portfolio development and management, patent prosecution, patentability, non-infringement, invalidity and freedom to operate opinions, due diligence and agreements that involve IP rights. He also assists clients with product planning matters, patent life-cycle management and the acquisition and divestment of IP assets.
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