Computer databases and software. Unsolicited ideas policy, procedures and records. Seller's intellectual property legal function and staff - experience, organization and workload. Outside U. Avoid "infecting" Buyer's employees with Seller's technology if transaction does not close. Consider use of independent reviewers. Difficulty in identifying and evaluating assets due to lack of prior knowledge and expertise in the target technology. Ensuring confidentiality and non-use of transferred information, and non-competition by Seller after the transaction.
Ensuring intellectual property legal support from Seller during the transition period in order to preserve all rights. Identification of intellectual property assets to be retained by Seller, which may be licensed to Buyer or assigned to Buyer and licensed back. Avoid giving Buyer confidential trade secret and know-how information until after the transaction closes. Ensuring confidentiality and non-use of retained information by Seller's former employees after the transaction.
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Continuing obligations under transferred agreements. Stepped transactions, e. Recording assignments of U.
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Integrating the acquired business and intellectual property assets into Buyer. Definition and identification of the various types of intellectual property assets generally is accomplished by the use of schedules.
Assignment to Buyer of all intellectual property assets and rights used in or associated with the acquired business. Assignment to Buyer subject to reserved exclusive or non-exclusive license for Seller in a field. Assignment to and assumption by Buyer of license rights and obligations held by Seller. Term and termination of patent and know-how licenses. The schedules list all material intellectual property assets used in or associated with the acquired business. Seller owns title to the scheduled intellectual property assets, subject only to identified licenses granted to others; and there are no third party claims contesting Seller's ownership.
Seller has the right to use all scheduled intellectual property assets in the acquired business and the right to disclose the trade secrets and know-how used in the acquired business; and there are no restrictions on the use of these assets that have not been disclosed. Use of the scheduled intellectual property does not violate any third party rights; and there have been no third party infringement claims against the acquired business. Seller has no knowledge of any defects or other threats, pending or reasonably foreseeable, that will cause the invalidity, unenforceability or other loss of any scheduled intellectual property asset; and all patent, trademark and copyright registrations are currently in force.
The loss or expiration of any intellectual property asset or right will not have a material adverse effect on the acquired business or its operations. There are no royalty or other payment obligations associated with Buyer's use of the transferred intellectual property assets that have not been disclosed, and all payments are current.
IP Due Diligence
There are no liens, security interests or other encumbrances on the transferred intellectual property assets. Seller has no knowledge of any infringement or violation by third parties of the intellectual property assets transferred to Buyer. The usual contract warranties of "no breach" and "valid and in force", apply to all intellectual property licenses from third parties. Seller has not disclosed any trade secrets or other intellectual property whose value is contingent upon confidentiality without securing an appropriate confidentiality agreement.
Allocation of rights and responsibilities for enforcement of intellectual property rights and employee confidentiality agreements. Allocation of responsibilities for recording assignments and prosecuting and maintaining intellectual property assets. Arrangements for post-closing support and consulting necessary to transfer the technology. Dispute resolution provisions for intellectual property issues. Read Free For 30 Days. Flag for inappropriate content. For Later. Related titles. Jump to Page. Search inside document.
Initial Considerations A. Priority Setting 1. Is the transaction driven or limited by technology considerations? What time constraints exist? Establish priorities early.
IP Due Diligence 5 Questions You Must Ask In Corporate Transactions
Coordination with other functions 1. Counsel clients to seek legal review prior to agreeing to terms. Patents 1. Identify Seller's unfiled invention records. Determine which patents cover which products. Does Seller mark the patented products? Provide samples of product marking.
Identify revenue streams or royalty obligations associated with each license. How has Seller enforced its patents in the past? Trademarks 1. Provide all Section 8 and 15 filings. Provide all registered user documents. Provide copies of product advertising and other promotional literature.
Identify all products that are not covered by a trademark. Identify revenue streams or payment obligations associated with each license. Copyrights 1. How has Seller enforced its trade secrets in the past? Research university agreements - rights in inventions and secrecy. Consulting agreements - rights in inventions, secrecy, non-compete.
Joint venture agreements - rights in inventions, secrecy, non-compete. Indemnification agreements. Franchise agreements. Agreement negotiations in progress. Other Considerations A. Anti-trust Considerations 1. Export Control Policy 1. Identify Seller's export control procedures.
Record Keeping Practices 1. Record retention policy and procedures. Record marking policy - required for government contracts. Agreement retention and maintenance policy and procedures. Intellectual Property Legal Services 1. Special Concerns of Buyer 1. Retaining key employees of acquired business and the know-how they possess.
Special Concerns of Seller 1. Potential warranty or indemnity liability for transferred technology. Post-Transaction Activities 1. Due diligence memorandum and documentation.
Post closing review. Definitions 1. Transfer Provisions 1. Exclusive license to Buyer in a field. Non-exclusive enabling license to Buyer. Transitional license, e. Possible non-exclusive license or cross-licenses for improvements. Representations and Warranties 1. Other Provisions 1. Mutual confidentiality as to all trade secrets and other confidential information. Arrangements for delivery of know-how. Joanne Vhale Carlin Milan. Kamaljeet Kaur. Cristhian Jacinto Calderon.
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Regine Yu. Masnun Rahman. National Press Foundation. Therefore, it is important that you understand:. Given the importance of intellectual property assets to a business, and the willingness of owners to litigate in order to protect them, it is important that you ensure:. As a prospective vendor or licensor , you should ensure you have good IP management practices in place; as a prospective purchaser or licensee , you will hope to see these in place during your due diligence.
For a prospective purchaser, failing to take these steps could result in significant wasted transaction costs if you later have to walk away from a transaction due to an adverse issue that could have been identified early on. Furthermore, failing to conduct an adequate review and having sufficient warranties could also mean paying for assets that are worth less than you thought. It could even mean paying for assets that have onerous liabilities to third parties attached to them and which you cannot use.
For a prospective vendor, good IP housekeeping practices, and a structured approach to IP due diligence, will assist not only in maximising the value of your intellectual property assets, but also in ensuring transactions run as smoothly as possible. If you have any questions on this article or would like to propose a subject to be addressed by Synapse please contact us. Research, development and collaboration agreements.