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

Conducted on Tuesday, May 31, 2016

Recorded event now available

or call 1-800-926-7926
Course Materials

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.


Every business uses some form of IP. When a party seeks to purchase a business or some assets of the business, the buyer will need to acquire the IP used along with other types of assets. IP counsel is called on for the negotiations and drafting of the IP related documents.

Buyers need to examine the level to which the company owns or has the right to use the IP necessary to the company’s current and anticipated business. Uncertainties regarding the ownership of or right to use IP are not uncommon. Further, if the IP was jointly developed with another party, there may be restrictions on the ability to transfer the IP or require that ownership of the IP be shared with the third parties.

The company’s representations and warranties as to its IP ownership are among the most significant. While the buyer needs assurances that the company owns the IP it purports to own, the selling company wants to avoid making reps and warranties for the time after the closing.

Counsel must weigh the IP considerations in asset purchase transactions and carefully structure the IP provision in the purchase agreements to avoid potential liability and delaying the deal.

Listen as our authoritative panel of IP attorneys addresses key IP considerations in asset purchase transactions. The panel will offer guidance on negotiating and drafting the IP aspects of asset purchase agreements, including reps and warranties and ancillary agreements.



  1. Key IP considerations in asset purchase transactions
    1. Implications of transaction structure on IP assets and liabilities
    2. Due diligence
    3. IP disputes and office actions
    4. Pending applications, registrations
    5. Security interests
  2. Negotiating and drafting IP aspects of asset purchase agreements
    1. Reps and warranties
    2. Implied warranties of non-infringement
    3. Assignments and licenses
    4. Pre-closing covenants
    5. Ancillary IP agreements


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?


Jessica N. Cohen
Jessica N. Cohen

Skadden Arps Slate Meagher & Flom

Ms. Cohen focuses on intellectual property and technology issues in a wide variety of transactions, including licensing...  |  Read More

Spencer F. Simon
Spencer 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

Underwood, Robert
Dr. Robert H. Underwood

McDermott Will & Emery

Dr. Underwood has extensive experience creating U.S. and international intellectual property rights, and identifying...  |  Read More

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