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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, October 16, 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 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.

Faculty

Spencer F. Simon
Partner
Willkie Farr & Gallagher, LLP

Mr. Simon’s practice focuses primarily on the representation of technology-intensive companies in all aspects of intellectual property, corporate and other commercial transactions, and data protection and cybersecurity matters. His practice covers a broad spectrum of technologies, including software, fintech, pharmaceutical, biotechnology, medical devices, semiconductor and telecommunications.

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Robert H. Underwood
Partner
Hogan Lovells

Dr. Underwood draws on his in-depth experience establishing U.S. and international IP rights and identifying and evaluating third-party IP risks to help his clients achieve their business objectives. His clients range from startups to mature multinationals, nonprofits, and universities, as well as venture capital and private equity investors. Dr. Underwood focuses his practice on the life sciences and chemical industries. His experience with pre-litigation planning and contentious litigation matters, including patent interferences and oppositions, allows him to support clients in strategic counseling, patent portfolio development and management, and patent prosecution. He also guides clients through transactions and agreements that involve IP rights, including joint development agreements, sponsored research agreements, licenses, and corporate transactions.

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Description

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 party.

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.

Outline

  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

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?