IP Due Diligence in M&A: Leveraging Diligence Results When Negotiating Price and Other Deal Terms
Uncovering Hidden Risks of Infringement Liability, Restrictions on Transfer of IP Licenses, Unchecked Use of AI, Deficiencies in IP Protection
A live 90-minute premium CLE video webinar with interactive Q&A
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.
Outline
- Understanding the transaction and customizing the IP due diligence
- Due diligence issues relating to the target's agreements
- Identifying agreements that may impact the value of the target
- Evaluating the transferability of critical contracts from the target to the acquiring company
- The corporate structure of the final entity and effects on IP licenses and related agreements
- Restrictive clauses that may impact the business goals of the acquirer
- Investigating the IP assets and their relation to the acquired business
- Identification of proprietary information, software and other valuable unregistered IP
- IP ownership and lien verification
- Evaluating the IP assets in relation to the target’s key products and services
- Verifying access to and transfer of all unregistered IP assets
- Analyzing infringement risk
- Uncovering closely-held indications of infringement risk
- Handling opinions (e.g., noninfringement and invalidity opinions) or the lack thereof during due diligence
- Third-party roadblocks to commercial activity post-acquisition
- Risks from unchecked use of AI
- Loss of the target’s proprietary information by training third-party AI models
- Infringement risks arising from use and distribution of AI-generated output
- Challenges with obtaining IP protection for AI-generated output
- Leveraging due diligence results in deal negotiations
- Value drivers
- 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?
Faculty
Daisy Darvall
Partner
Kirkland & Ellis
Ms. Darvall’s practice focuses on advising clients on a wide variety of commercial transactions involving... | Read More
Ms. Darvall’s practice focuses on advising clients on a wide variety of commercial transactions involving intellectual property, including technology, software, trademark, patent, and copyright licensing and analysis, protection of trade secrets and rights of publicity, as well as privacy and other issues related to doing business on the internet, technology transfer and development agreements, and e-commerce agreements. In addition, her experience includes evaluating and advising on IP and technology issues that arise in general corporate transactions such as mergers and acquisitions, private equity, and debt financing transactions. Ms. Darvall has advised U.S. and foreign companies on intellectual property protection and ownership issues in the context of collaborations and joint-ventures. She has particular interest in software transactions and open source issues, privacy and data security, and intellectual property protection issues, the latter arising from her background in media and entertainment.
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Tyler Maddry
Partner
Hunton Andrews Kurth
As Co-Head of the firm’s Intellectual Property Practice Group, Mr. Maddry focuses his practice on complex... | Read More
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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