The faculty-partners at Finnegan Henderson-are all patent attorneys with extensive experience in due diligence investigations. The panel has many years of experience in IP practice and expertise in several different areas of technology. Throughout the course, the faculty shares interesting “war stories,” observations, and practical tips for conducting the investigation in a comprehensive and efficient manner.
Why Should You Take This Course?
As today’s tight economy continues to challenge the business of clients, pressure mounts for the patent practitioner to help clients enjoy a higher return on investment in deals involving both acquisitions and licensing-in of patent rights. By the same token, those who represent target companies need to learn the IP strategies that help maximize income from either takeovers or licensing-outs.
This course will provide practical guidance for conducting patent due diligence investigations in today’s changing legal environment. The panel will explore how the America Invents Act (AIA) and recent decisions of the Supreme Court and Federal Circuit dramatically affect the due diligence process, while sharing practical techniques and strategies for conducting complete investigations. These tactics apply to both large and small transactions, irrespective of the nature of the specific transaction or the party you might be representing. Now, more than ever, companies contemplating commercial transactions–be they licensing, corporate mergers, acquisitions, or private equity deals–need to rely on due diligence counsel to provide a thorough understanding of the value and risks associated with the transfer of intangible assets.
During the course, you will interact with instructors and other students while exploring case-study examples and lecture topics on a wide range of issues:
- common legal-interest agreements
- claim construction
- freedom to operate
- validity assessments
- inequitable conduct (including a discussion of the Federal Circuit’s Therasense decision)
- patent eligibility (including a discussion of the Supreme Court’s Prometheus decision), and
The lively and entertaining presentation covers every phase of a due diligence investigation. Beginning with the initial involvement of patent counsel, the panel navigates a course through early information-gathering, drawing in the attendees as part of the due diligence team to spot critical patent issues that can make or break a deal. The panel also shares effective strategic approaches to focus investigations and requests for further information during the plunge into the data room and to facilitate making recommendations to the client that may ultimately affect the price and structure of the deal.
On Day 1, from approximately 2:30-4:45 p.m., as currently estimated, we will discuss potential ethical issues and inequitable conduct hazards that may arise during an IP due diligence investigation.
The concluding sessions of the course cover risk-management issues that provide invaluable, practical suggestions for contractual considerations, including effective uses of representations and warranties. Topics discussed in the course apply both to investigating a target’s patent portfolio and to preparing a portfolio for suitors.
In short, the knowledge you will gain from this course will enable you to avoid due diligence pitfalls, while more effectively assessing and managing risks endemic in business transactions involving complex IP rights and issues.
You will receive a thorough course book, chock full of notes, examples, and case law as part of your course material.
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