Buying and Selling Patents & Other Intellectual Property
Buying and selling patents has become more complicated and more expensive following the recent passage of patent reform under the America Invents Act which will took effect on September.
The Knowledge Group has assembled a team of key thought leaders and experts to help make sense of the most important issues and the impact of the new law in the business industry.
Among the key issues discussed will be:
– How to Successfully Buy and Sell Patents
– Things Legal: Buying & Selling Patents and IP
– Implementation Issues Leahy-Smith America Invents Act
– Avoiding the Common Pitfalls
– Up-to-the-minute regulatory updates and implementation framework issues
Edward G. Black, Partner,
Ropes & Gray LLP
- Identifying and acquiring essential interests (the “must haves”) associated with the IP.
- Identifying and acquiring related interests (the “nice to haves”) associated with the IP.
- Researching and confirming clean title.
- Sale v. License
- Structured Ownership and IP assets:
- Debt structures: Securitized or collateralized IP.
- IP in holding companies and other tax optimized structures.
- IP structures supporting monetization strategies.
- Structures supporting M&A (break ups).
- Effect of AIA.
David A. Jakopin , Partner,
Pillsbury Winthrop Shaw Pittman LLP
– Depending on the purpose, requirements will be much different.
- Buying Patents and IP Assets — recognizing the purpose:
- Purchaser Product Extension or New Product Area
- Patent Enforcement
- Know-How acquisition
- Personnel acquisition
- Selling Patents and IP Assets — recognizing the purpose
– Again, depending on the pursues, requirements will be much different.
- Selling assets with a business unit — patents, technology and personnel
- Patents for cash (or possibly just spin-off to a newco and litigate)
- Sale of the whole company
- Licensing alternative instead of sale.
- For all transactions, considerations to keep in mind that are significant:
- Use of technical and business team to analyze the entire transaction
- Maintaining privilege and confidentiality
- Recognizing Existing obligations and going forward requirements
- Determining rights to future enhancements of what is bought and/or sold
- Issues with putting the assets into play in the first instance (particularly if the deal doesn’t go through)
Who Should Attend:
– IP/Copyright Attorneys & Consultants,
– In-house Counsel – Manufacturing Bio/Pharma/Tech/Manufacturing and Healthcare
– Other related professionals
Ed Black is a head of Ropes & Gray’s Intellectual Property Transactions Group. He joined the firm after practicing in the areas of technology management, intellectual property, and media in San Francisco, the Silicon Valley and in Boston.
He represents companies and investors in the creation and management of intellectual assets in ways that optimize value return to the sponsors through various means, including best practice rights management, licensing, coventuring, asset sale or debt based financing, holding company strategies, and other arrangements. Ed’s clients include technology companies, branded product companies, investment managers, media organizations, as well as companies and private equity organizations that acquire or invest in these businesses.
Ed remains active with a number of trade and professional associations where he is also a speaker on intellectual property, media, technology, and the operation of businesses built around proprietary rights.
Honors & Awards
• Chambers USA: America’s Leading Lawyers for Business (2011)
Professional & Civic Activities
• Past Co-chair, Intellectual Property Committee of Boston Bar Association
Presentations & Speeches
• Ed Black discussed the growing importance of intellectual property in valuations and transactions in a December 2011 Merger Market webinar in association with IntraLinks.
• JD, 1989, University of California, Berkeley School of Law (Boalt Hall)
• BA, with Honors, 1986, Brown University Bar Admissions
• Massachusetts, 1997
• California, 1990
• Honorable D. Lowell Jensen, U.S. District Court for the Northern District of California
Practice Ed Black is a head of Ropes & Gray’s Intellectual Property Transactions Group. He joined the firm after practicing …
Mr. Jakopin has 24 years of experience in IP litigation related matters. He also advises clients on strategic IP issues and licensing issues, particularly in the context of mergers, acquisitions and investments. With a strong technical background in electronics, Mr. Jakopin brings a unique combination of talents when litigating IP disputes, having particularly significant experience in Reexamination proceedings relative to technically complex electronics matters. This technical background also proves highly valuable to clients on licensing strategies, intellectual property acquisitions and sales, IPO’s, cross-border issues and other strategic IP issues.
Mr. Jakopin has 24 years of experience in IP litigation related matters. He also advises clients on strategic IP issues …
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About Ropes & Gray LLP
Ropes & Gray LLP is a leading global law firm with offices in Boston, Chicago, Hong Kong, London, New York, San Francisco, Shanghai, Silicon Valley, Tokyo, and Washington, D.C.
Built on a foundation of more than 140 years of forging strong client relationships, the firm represents interests across a broad spectrum of industries in corporate law and litigation matters. In addition, the firm offers counsel on labor and employment issues, tax and benefits, creditors’ rights, and private client services. Firm’s clients range in size from large to small companies and include leading industrial companies, financial institutions, government agencies, hospitals and health care organizations, colleges and universities, as well as families and individuals.
Over 1,000 lawyers and professionals provide the highest-quality legal advice. The firm combines superior talent with a supportive environment that is conducive to nationally-recognized problem solving and service for its clients.
The firm has a reputation for high-quality work, a positive outlook, and the highest standards of service and ethics. The firm continues to attract excellent clients, challenging assignments — and outstanding lawyers. All this translates to a team of legal counsel solely focused on providing the best service possible for the clients.
About Pillsbury Winthrop Shaw Pittman LLP
Pillsbury is a full-service law firm with a keen industry focus on the energy and natural resources, financial services, real estate and construction, and technology sectors. Based in the world’s major financial, technology and energy centers, Pillsbury counsels clients on global intellectual property, regulatory, litigation and corporate matters. We work in multidisciplinary teams that allow us to anticipate trends and bring a 360-degree perspective to complex business and legal issues—helping clients to take greater advantage of new opportunities and better mitigate risk. This collaborative work style helps produce the results our clients seek.