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Course Details

Course Information
  • smart_display Format

    On-Demand

  • signal_cellular_alt Difficulty Level

    Intermediate

  • work Practice Area

    Trademark and Copyright

Date & Time
  • event Date

    Wednesday, May 14, 2025

  • 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 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.

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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Tyler Maddry
Partner
Hunton Andrews Kurth LLP

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.

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Description

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 analysis and confirmation of enforceable 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 IP licenses and unregistered IP to the buyer, (2) how IP license grants may limit the buyer's business goals, (3) verification of ownership of software, proprietary information and other registered and unregistered IP assets, (4) closely-held indications of infringement risk, and (5) adverse consequences from unchecked use of artificial intelligence (AI), including infringement risk from AI-generated output and loss of proprietary information used to train third-party AI models.

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.

Outline

  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 the 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

 

Benefits

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?