Leveraging IP as Collateral: Due Diligence, Value Assessment, Risk Considerations, Contractual Provisions

Course Details
- smart_display Format
On-Demand
- signal_cellular_alt Difficulty Level
- work Practice Area
Trademark and Copyright
- event Date
Tuesday, October 4, 2022
- schedule Time
1:00 p.m. ET./10:00 a.m. PT
- timer Program Length
90 minutes
-
This 90-minute webinar is eligible in most states for 1.5 CLE credits.
This CLE webinar will guide IP counsel on using IP as collateral. The panel will discuss the steps needed to conduct due diligence and determine the value of the IP assets. The panel will also address the potential risks of using IP as collateral and offer best practices for navigating through the process.
Faculty

Mr. Zander focuses his practice on the representation of lenders and companies in documenting technology, life sciences, and middle-market financing transactions, including traditional commercial leveraged debt financings, venture debt financings, and bridge loans. He has represented agents, lenders, participants, and companies in credit facilities aggregating in excess of $50 billion. Mr. Zander has also represented companies, secured and unsecured creditors, committees, trustees and asset purchasers in bankruptcy and out-of-court proceedings and continues to represent lenders in forbearances, loan restructurings, amendments, and modifications. He has restructured debt in excess of $2.5 billion in federal, state and out-of-court proceedings.

Mr. LaForgia assists clients in patent procurement and portfolio development. As a former patent examiner with experience working at law firms and in-house, he understands his clients’ needs and how to efficiently and economically navigate the patent process. Mr. LaForgia brings a keen business sense to building patent portfolios, as well as negotiating agreements on behalf of his clients.

Mr. Agiato oversees the structuring and pricing of deals, all due diligence functions, and developing and maintaining deal sourcing, patent, trademark and trade name valuations. He has been an active investor and team leader in various intellectual property transactions. He also served as the National Practice Leader for Intellectual Property Services at KPMG. His expertise helped pioneer and develop intellectual asset management procedures that helped clients generate significant incremental returns from their intellectual property rights. He performed more than 2,000 intellectual property valuations and has been involved with billions of dollars worth of intellectual property transactions.

In his role, Mr. Greifeld leads the team that is responsible for due diligence, performance monitoring, and deal structure of both prospective borrowers and portfolio companies. He holds a seat on the firm’s investment committee, amendment committee, and first deal review committee. Mr. Greifeld is also chairman of the firm’s ESG committee. He was included in the 2020 Rising Stars list by the Venture Capital Journal and the 2020 Rising Stars list by Private Debt Investor. Prior to joining Runway, Mr. Greifeld held several positions at J.P. Morgan and HPS Investment Partners.
Description
Intellectual property is increasingly valuable, and companies can leverage its value to help the company grow and expand. Using IP as collateral opens up opportunities for companies, but before leaping, the company should weigh the risks.
Among the potential risks are a loss of the IP or limitations on certain rights related to the IP, a decrease in the IP's value, and encumbrances added to the IP, among others. It is critical for the parties involved in a transaction using IP as collateral to conduct the proper due diligence. From conducting searches to determining what licenses are in place to verifying the validity and enforceability of the IP, the parties should understand the full picture to evaluate both the value of the IP and the possible risks involved.
Listen as our panel examines using IP as collateral. The panel will discuss the steps needed to conduct due diligence and determine the value of the IP assets. The panel will also address the potential risks of using IP as collateral and offer best practices for navigating through the process.
Outline
- IP as collateral requirements
- Due diligence and evaluating the value of the IP assets
- Risks of using IP as collateral
- Contractual provisions
- Best practices for using IP as collateral
Benefits
The panel will review these and other key issues:
- What are the potential risks associated with using IP as collateral?
- What due diligence should be done to assess the IP assets?
- What best practices should counsel employ when navigating the process of using IP as collateral?
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