IP Due Diligence

An In-house training programme on how to prepare for a due diligence project, identify when a due diligence project is desirable, learn to evaluate your, or your clients, patent and trade mark portfolios to ensure as much transparency as possible.

In-house training services and consultancy

This In-house training programme will show your team how to prepare for the FTO questions that will be raised by your clients or organisation when management want to use new technology or expand existing technology. It will help the team to Understand which FTO questions they should be asking and how to make the most of the departments time and budget.

Your next step is to call us now on +44 (0)20 7729 6677 or email us at info@falconbury.co.uk or use our contact form and find out how we can help. There are no commitments, and if we cannot help our advice and recommendations are free of charge.

Sample programme

Beginning due diligence – The practical problems

  • Understanding the business goals
  • Practical issues regarding accessing information
  • Privilege and confidentiality issues
  • Developing a comprehensive due diligence checklist to determine project scope under different deal conditions and budget
  • Conducting a due diligence project
  • Changing role of IP – Risk factor to deal driver?
  • Identifying or assessing IPR assets for the transaction
  • Balancing need for information with risk of uncovering negative information
  • Doing your homework in due diligence, risk allocation, strategies and planning

Evaluating the patent portfolio: Claim construction, term, validity and enforceability

  • Do the patent claims actually cover the product and is anyone infringing?
  • Do the patents have sufficient term for an adequate financial return and are they valid?
  • What are the risks of invalidity or unenforceability in different jurisdictions?
  • Is confidential information important?

Ownership and joint ownership of patents, trade marks and copyrights

  • The risks of joint ownership
  • Variation of rights of joint owners
  • Investigating inventorship of patents to assess ownership risks

Evaluating the trade mark portfolio

  • Ownership, scope, validity and enforceability of trade marks
  • Ability to expand the use and registration of marks
  • Legal claims and enforcement activities pertaining to the marks

Mitigation of Risk

  • Real examples will be used and discussed to illustrate the types of risks that generally arise and how to restructure or end a deal which carries significant risk:
    • How much risk is too much?
    • What if you are asked to make the deal happen even if the risk is high?
    • Can you mitigate that risk?

Communicating results, preparing the deal documents, and post acquisition issues

  • Confidentiality obligations if the deal doesn’t go through
  • Handling negative information
  • What obligations remain if the deal is successful?
  • Practical aspects of file retention

Avoiding risks and common pitfalls of a due diligence project

  • The effect of licenses on the deal
    • Licenses in
    • Licenses out
  • Can risks be mitigated?
  • Commonly encountered problems

Recommended Trainer

Lori-Ann Johnson

Lori-Ann Johnson focuses on client counselling where she assists clients with the value management of their portfolios. She helps companies understand the legal and commercial significance of their intellectual property and assists in aligning their IP portfolios to meet their business objectives. She has more than 25 years of experience in the areas of portfolio establishment and landscape analysis, due diligence, including acquisition, freedom to operate, new product launch, and pre-litigation analysis in the chemical area. She also has significant experience in all phases of utility and design patent preparation and procurement, infringement, validity and patentability opinion preparation, reissue and re-examination practice, interferences, post-grant proceedings including IPR and PGR before the Patent Trial and Appeal Board (PTAB), and licensing.

Lori’s technical experience is diverse and involves chemical subject matter such as consumer products, pharmaceuticals, papermaking, cosmetics, industrial chemicals, beverage compositions, photochemistry, glass making, and medical devices. She has worked with such companies as Georgia Pacific, Coca Cola, L’Oreal, Astra Zeneca, Sanofi-Aventis, Polymer Group Inc., and Xerox.

She routinely lectures in both the United States and Europe on all aspects of the protection and enforcement of U.S. intellectual property rights, including chemical patent practice, freedom to operate, due diligence, acquisition and landscape analysis, and licensing. From August 2003 to August 2009, Ms. Johnson served as resident managing partner of Finnegan’s Brussels office.

Bespoke training

We can customise this course to meet the requirements of your organisation. Contact us to discuss your training requirements.

Previous customers include...

  • Aglaia Biomedical Ventures
  • Alfa Laval Corporate AB
  • AOMB Intellectual Property Consultants
  • ArjoHuntleigh
  • BP International Ltd
  • BTG International Ltd
  • Bulboaca 7 Associatii SCA
  • CERN (European Organisation for Nuclear Research)
  • Edwards Angell Palmer & Dodge UK LLP
  • Element Six Ltd
  • F. Hoffmann-La Roche Ltd
  • Fresenius Medical Care AG & Co KGaA
  • Genkyotex SA
  • H. Lundbeck A/S
  • HMRC Shares and Assets Valuation
  • IMEC vzw
  • Innovia Films Ltd
  • Johnson Matthey Plc
  • Morphosys AG
  • Nissan Technical Centre Europe
  • Philips International B.V. -IP&S
  • Rising Tide
  • Rominvent SA
  • Sanofi-aventis Groupe
  • Seco Tools AB
  • Teva UK
  • Tiense Suikerraffinaderij NV
  • TomTom International BV
  • Total Petrochemicals and Refining SA/NV
  • University of Sussex