Intellectual Property Due Diligence in M&A Transactions: A Legal and Valuation Guide
To protect buyers in merger and acquisition (M&A) transactions from potential liability arising from intellectual property issues, IP due diligence is a must. Practitioners often make unnecessary IP ownership assumptions because they often overlook key transaction structure and drafting considerations. As a result, post transaction operations can be compromised.
In this LIVE Webcast, a panel of distinguished professionals and thought leaders brought together by The Knowledge Group will help the legal practitioners understand the important aspects of this significant topic. They will provide an in-depth discussion of IP Due Diligence in M&A Transactions and will underscore best practices during any corporate transaction.
Key topics include:
- IP Due Diligence
- Notable Case Law
- Common Pitfalls
- Key Legal Considerations
- Best Practices
Mike McLean, Senior Vice President, Intellectual Property Services
- Determining the composition of a patent portfolio associated with an acquisition
- Technology coverage, product/market coverage
- What is missing
- Finding assets that can be enforced in key areas
- Comparing inbound portfolio to existing portfolio
- Match of current and future needs
- How to action areas of excess/redundancy
- Buying a business unit/division/product line
- Getting the ‘right’ patents
- Ability to have a second round of selection
Efrat Kasznik, President
Foresight Valuation Group, LLC
- The IP Valuation "Reporting Gap”: why the target's intangible assets are largely invisible in terms of financial reporting
- Understanding the value of the target’s IP assets: Before the deal (due diligence) and after the deal (reporting requirements, integration)
- The types of Value that IP brings to a buyer: Enforcement Value, Synergistic Value, Freedom to Operate (strategic) value, others
- Post-merger integration: Merging the IP portfolios, Goodwill impairment
- The Google-Motorola acquisition case study, and other case studies, will be presented to demonstrate the concepts
Published Article about IP due diligence in M&A: http://www.ipeg.com/how-to-avoid-another-rolls-royce-ip-due-diligence-in-ma-transactions/
Stephen W. Larson, Partner
Knobbe, Martens, Olson & Bear, LLP
- Antitrust considerations: will certain IP have to be divested or subject to mandatory licensing because of antitrust concerns
- Validity, Scope and Enforceability Analysis: How to determine if the target has protected its IP in the key value drivers
- Risk of infringement: How to identify and evaluate risk of infringement, and prepare for possible IP litigation
- Post-closing activities: What types of activities should take place after the merger?
David Herman, Partner
Haug Partners LLP
- Review of commercial partnership, license, and strategic alliance agreements as part of IP due diligence.
- IP due diligence process: confirming what is being acquired versus understanding what is not being acquired.
- IP issues in inter-company agreements.
- New IP due diligence concerns and issues following Supreme Court Lexmark decision.
Who Should Attend:
- IP and Related Attorneys
- IP Owners
- IP Counsel
- Directors of IP
- IP Strategists
- IP Portfolio Managers
- Heads of Intellectual Property and Related Areas
- Technology Transfer Directors
- M&A and Related Lawyers
- Merger & Acquisition Specialists
Mike is a recognized leader in the Intellectual Property and Patent Strategy market. He is respected and sought after for his ability to assess complex situations and apply technical intelligence to ensure fact-based IP decisions related to patent licensing, patent portfolio management, and IP monetization. He works closely with the technology practices of major law firms, the in-house corporate counsel teams of key technology companies, and external licensing agencies where he helps develop, support, and execute high-return patent strategies.
Mike is a recognized leader in the Intellectual Property and Patent Strategy market. He is respected and sought after for …
Efrat Kasznik is an intellectual property (IP) valuation and strategy expert, as well as a Lecturer on IP Management at the Stanford Graduate School of Business (GSB). She specializes in valuation and strategy related to intellectual property, emerging technologies and startups, and has assisted some of the leading global technology corporations with bringing their innovation to market, across a range of industries. Efrat is the founder and president of Foresight Valuation Group, a Silicon-Valley based IP and start-up advisory firm, listed in the Forbes Top 25 IP Valuation firms list.
Throughout her career, Efrat has served as a co-founder, executive and advisor to several start ups, including serving as Chief Financial Officer at a telecom start-up. She is a mentor at the Center for Entrepreneurial Studies (CES) at the Stanford GSB, as well as an advisor to several other incubators, accelerators and investor groups in the US, Europe and Israel. Efrat is also a frequent conference speaker, author and blogger, and regularly writes for leading business and IP publications such as the Business Journals, VentureBeat, IAM Magazine and IPWatchdog. She has been listed on the IAM 300 list of leading World IP Strategists every year since 2013.
Efrat Kasznik is an intellectual property (IP) valuation and strategy expert, as well as a Lecturer on IP Management at the Stanford Graduate …
Stephen Larson has a broad intellectual property practice, having handled cases involving patent, antitrust, trade secret, trademark, and breach of contract matters. His current practice primarily involves handling complex patent and antitrust cases.
In 2014, Stephen served as trial counsel for Masimo Corporation in a three-week jury trial against Philips Electronics North America Corp. and Philips Medizin Systeme Böblingen GmbH. Masimo obtained a $466 million verdict based on infringement of its patents relating to pulse oximetry technology. The verdict was featured in The National Law Journal's "Top Verdicts of 2014" as the top intellectual property verdict and number 5 verdict overall, and was also listed as the "Top IP Award of 2014" by Law360. Stephen also had a primary role in defending Masimo against allegations of patent misuse and antitrust claims alleging monopolization, attempted monopolization, conspiracy, group boycott, tying and restraint of trade.
Stephen Larson has a broad intellectual property practice, having handled cases involving patent, antitrust, trade secret, trademark, and breach of …
David Herman is a Partner at Haug Partners, where he heads the firm’s Transactional and Licensing practice group. A specialist in the patent law, and regulatory issues related to the pharmaceutical, biotech and medical device industries, Mr. Herman possesses a nuanced grasp of the path of the various issues involved in any agreement. His due diligence work, in close conjunction with the firm’s Life Sciences practice group, emphasizes drafting and negotiating skills and demonstrates a deep understanding of the pharmaceutical, biotech, and medical device industries, and others. He also possesses extensive experience in Hatch Waxman settlement agreements, and is the firm’s expert in this area.
David Herman is a Partner at Haug Partners, where he heads the firm’s Transactional and Licensing practice group. A specialist …
Print and review course materials
Method of Presentation:
Basic Knowledge in IP and M&A Law
NASBA Field of Study:
Business Law - Technical
NY Category of CLE Credit:
Unlock All The Knowledge and Credit You Need
Leading Provider of Online Continuing Education
It's As Easy as 1, 2, 3
Get Your 1-Year All Access Pass For Only $199
For over a quarter-of-a-century, intellectual property teams and outside legal counsel have trusted TechInsights’ Intellectual Property Services to prove patent value and enable sound, fact-based IP decisions. Our Patent and Technology analysts have become an extension of some of the most advanced IP teams including 37 of the top 50 U.S. patent holders.
By combining deep patent knowledge with the most advanced reverse engineering and technical analysis capabilities in the world we have demonstrated an unrivaled ability to match patents to products and deliver solid evidence of use in advance technology markets.
Our clients use our insights to develop successful IP strategies that optimize the value of their patent portfolio, protect their competitive position, assert their IP or defend their position.
About Foresight Valuation Group, LLC
Foresight Valuation Group is a Silicon-Valley based intellectual property (IP) valuation and strategy advisory firm. Foresight helps corporations of all sizes, and across a range of industries, understand the value of their IP by thinking strategically about how to extract value from innovation. Foresight provides a full suite of analytical services related to the valuation, management and commercialization of IP and technology.
About Knobbe, Martens, Olson & Bear, LLP
Knobbe Martens is one of America's largest Intellectual Property firms —a team of smart, aggressive attorneys, scientists and technical experts committed to promoting and protecting innovation.
About Haug Partners LLP
Haug Partners is a full-service, national law firm that provides integrated multidisciplinary legal services for life science and technology companies. Our service offerings include: (i) Antitrust Litigation and Counseling; (ii) Commercial Litigation and Strategic Counseling; (iii) Due Diligence; (iv) FDA Compliance and Counseling; (v) Intellectual Property Enforcement; (vi) Intellectual Property Procurement and Strategy; (vii) International Trade Commission; (viii) Investigations, Compliance, and Risk Mitigation Services; (ix) Licensing and Transactions; and (x) Trademarks and Unfair Competition. With offices in New York, Washington, D.C., and Boston, and through relationships with firms in Germany, China, Japan, and other key international markets, Haug Partners has the resources, technical expertise, legal acumen, and business judgment to consistently deliver optimal outcomes for clients. The firm was founded in 1997 as Frommer Lawrence and Haug and adopted the Haug Partners name in March 2017.