IP Due Diligence / Transactional Practice
In addition to valuation, risk assessment is perhaps the most important aspect of any transaction involving Intellectual Property (IP), including patents, trademark, copyrights, trade secrets, and other know how. IP drives high technology merger and acquisition strategies. Many corporate transactions have IP aspects that require careful consideration. Now more than ever, companies contemplating transactions need to have a thorough understanding of the risks associated with the transfer and leveraging of IP assets as part of any deal.
N&V regularly represents clients in a wide variety of transactions, including agreements to develop, license, test, market, distribute, co-brand, protect and acquire or divest technology and related IP rights. N&V has performed hundreds of seller, buyer and investor-side due diligence matters for some of the most important and respected industry players. The firm is very adept at focusing clients on what is hoped or intended to be gained from any prospective transaction to reduce IP risks, value the underlying IP assets and identify opportunities to strengthen IP portfolios. N&V’s strategic approach leverages a deep understanding of every aspect of IP law so that clients have full knowledge of which IP assets are part of a deal, including the nature and potential value of those assets and what limitations or risks are attached to them.
N&V attorneys have significant experience assisting clients in IP due diligence/transactional matters, including:
- Representing licensors, licensees, developers, venture capitalists, investment banks and technology companies of all sizes and in all areas of high technology and life sciences.
- Representing investment banks and venture capitalists to achieve their business goals and protect or leverage their IP through such services as freedom-to-operate assessments, landscaping analyses and patent portfolio audits.
- N&V performs all aspects of IP due diligence related to the transfer of intellectual property assets pursuant to stock and asset acquisitions, divestitures, mergers and licensing arrangements.
- N&V has extensive experience handling negotiations with respect to IP risk allocation and drafting contractual language for inclusion in transaction documents. We structure assignment documentation to transfer the IP assets involved in such transactions and record such documentation in the various patent and trademark offices worldwide, the U.S. Copyright Office and other appropriate forums.
- N&V drafts ancillary agreements in connection with the transfer of IP pursuant to an acquisition or divestiture, such as licenses, independent contractor agreements, joint development agreements and distribution agreements.
- N&V regularly assists other non-IP focused law firms and boutiques on IP related aspects of buyouts and recapitalizations, debt offerings, initial public offerings, securities and mergers and acquisition transactions involving public and private companies.
The firm’s sensitivity to both the technical aspects of IP and the related business environment in which the IP exists enables us to consistently obtain exceptional results. N&V assists clients to make informed decisions on potential deals, optimize deal outcomes and properly allocate risk in the course of pursuing strategic initiatives.
N&V also understands that the scope of IP due diligence should be tailored based on several factors, including the overall value of the transaction, the relative importance of the technology and the potential IP-related risks. N&V works closely with our clients to structure an IP due diligence strategy to meet their needs effectively and efficiently. Many of our clients have turned to N&V to manage the IP that we have evaluated during the course of our IP due diligence. N&V has a significant track record of assisting clients across a wide array of transactions requiring IP due diligence. From simple to complex scenarios, N&V possesses the creativity and the tenacity to efficiently and effectively address the myriad of IP issues that arise in any transaction.
- Performed IP due diligence and IP transaction document negotiations for a French public company in its $6.5 million strategic investment in a U.S. mobile payments technology startup.
- Assisted an armor company with the IP related aspects of its $40 million placing and admission to AIM (the London Stock Exchange’s international market for smaller growing companies).
- Represented the originator in a $229 million securitization of a portfolio of pharmaceutical royalty payments protected by substantial intellectual property assets covering 13 drug products.
- Represented a fund with its $115 million royalty monetization transaction relating to sales of a top selling sleep aid drug.
- Represented the originator in a single-drug monetization of royalty payments, funded through a 144A offering.
- Represented a fund in its revenue monetization agreement with a generic drug company selling dermatological products.
- Represented a purchaser of a semiconductor fab business.
If you are interested in legal representation or would like more information, please contact one of our attorneys or call us at 1-703-816-4000.