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Course Details

Course Information
  • smart_display Format

    On-Demand

  • signal_cellular_alt Difficulty Level

    Intermediate

  • work Practice Area

    Commercial Law

Date & Time
  • event Date

    Wednesday, August 28, 2024

  • schedule Time

    1:00 p.m. ET./10:00 a.m. PT

  • timer Program Length

    90 minutes

Credit Information

  • This 90-minute webinar is eligible in most states for 1.5 CLE credits.

$347.00
CLE
ALL

This CLE webinar will guide M&A counsel on conducting effective intellectual property (IP) due diligence in merger and acquisition transactions. The panel will outline best practices for conducting a thorough IP investigation and provide strategies for using due diligence findings when negotiating deal terms.

Faculty

Derek Ventling
Attorney
Kirkland & Ellis LLP

Mr. Ventling advises clients on the intellectual property and technology aspects of complex corporate transactions, including mergers, acquisitions, divestitures, private equity, and venture capital investments. He also advises clients on operational issues relating to inbound and open source software licensing, information security and data privacy.

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Daisy Darvall
Partner
Kirkland & Ellis LLP

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.

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Description

IP has become an increasingly important asset in M&A deals and verification of IP rights is often critical to the deal. To ensure a successful transaction, the buyer must conduct thorough IP due diligence to identify the IP involved and evaluate any risks before closing.

The key considerations when conducting IP due diligence on a target 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.

Indemnification, representation, and warranty provisions in agreements play a significant role in allocating risks relating to IP that is pivotal to the deal. Also, issues that are uncovered during due diligence can be remedied by taking various actions pre or post-closing, including executing and recording assignments, amending licenses, filing claim amendments, and pursuing continuations and other actions if necessary.

Listen as our authoritative panel explains critical considerations for conducting effective IP due diligence in M&A deals and provides strategies for negotiating the deal and mitigating issues found during the due diligence process.

Outline

  1. Significance of IP in M&A value and strategy
  2. IP valuation
  3. Conducting due diligence
    1. Identifying third-party IP assets the target may be using under a license agreement or other arrangement
    2. Review IP ownership, validity, and transferability
    3. Determine any limitations on each IP asset
    4. Ascertain any potential IP infringement risks, including lawsuits or infringement claims
  4. Typical problems that arise during due diligence
  5. Leveraging due diligence results in deal negotiations
    1. Value drivers
    2. Deal points
  6. Fixing problems that are uncovered during IP due diligence
  7. The role indemnification, representation, and warranty provisions play in mitigating IP risks

Benefits

The panel will review these and other key issues:

  • What is the significance of IP in M&A deal valuation and strategy?
  • What are the key drivers and considerations when conducting IP due diligence?
  • What are some problems that typically arise during the IP due diligence process?
  • How can M&A deal lawyers leverage IP due diligence results when negotiating price and other deal terms?