IP Due Diligence & Freedom-to-Operate in Practice

This intensive one-day course will give you many insights into the best practice of organising and conducting an efficient and thorough IP due diligence project.

NEW COURSE

20 Jun 2019

& 14 Nov 2019

GBP 699
EUR 979
USD 1,090

Book now

Overview

A properly conducted due diligence search can lead to many opportunities for both buyers and sellers, including long-term relationships and new business synergies.

Attending this seminar will ensure you know how to mitigate the risks involved and will give you key insights into balancing internal resources and outside expertise to
the best advantage. It will help you understand the vital aspects of an FTO analysis from a US and EU perspective, plus, learn about the IP landscape in China as well as new opportunities.
You will benefit from the experience of the expert panel during the discussion session and get the solutions you need to your questions.

Who should attend?

  • Patent attorneys
  • In-house lawyers
  • Business development executives/managers
  • IP and patent managers
  • Licensing executives
  • Trade mark attorneys

Why you should attend

By attending this one-day intensive seminar you will:

  • Gain practical advice from highly-rated experts on how best to prepare for your due diligence and FTO projects
  • Learn to identify when due diligence and FTO projects are desirable and how to determine what the scope should be
  • Improve your understanding of the risks around ownership and learn how to minimise these risks
  • Communicate due diligence results effectively while protecting confidential and privileged information
  • Understand your obligations if the deal doesn’t go through
  • Be prepared for the FTO questions that will be raised by your client/company when they want to use new technology or expand existing technology
  • Understand which FTO questions you should ask, to make the most of your time and budget
  • Discuss best practices for setting up and conducting a thorough analysis
  • Gain valuable insight into infringement and validity analysis in Europe and the US
  • Take away practical advice on leveraging the European and US systems to your advantage
  • Learn to evaluate, minimise and communicate risk effectively

Programme

Best practices for organising and conducting an IP due diligence project

  • 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 budgets
  • Awareness of relevant US IP issues frequently encountered
  • Potential pitfalls when involving company’s technical persons: a list of ‘do nots’

In-house perspectives on conducting IP due diligence and FTO projects

  • Role of IP – risk factor, nice to have or deal driver?
  • Coordination of the projects within various business units
  • Balancing internal resources with expertise of outside counsel
  • Impact of IP due diligence and FTO projects on IP awareness within the business units

  • Mitigating the identified risks
  • Real examples will be used to illustrate the types of risks that generally arise and how to restructure or
    end a deal having significant risks
    - 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 underlying deal does not go through
  • Handling negative information
  • Obligations that remain if the deal is successful
  • Practical aspects of file retention

Vital aspects of an FTO analysis – US perspective

  • Tactics for recognising the products and processes to be cleared
  • Timing and scope of the project
  • Defining the search – common pitfalls
  • Validity and infringement analysis – tactics for ‘triage’ on the FTO search results
    - US perspectives on relevant legal issues
  • Cost effective approach for dealing with potentially problematic or ‘blocking’ patents
    - US perspectives on relevant legal issues

Vital aspects of an FTO analysis – EP perspective

  • Strategies for analysing whether EP infringement and validity issues in FTO context
  • Recognising the risks in different EP jurisdictions
  • EP options for dealing with competitor patents
  • Best practices for EP counsel and in-house teams

Wrestling the Chinese dragon

  • IP landscape in China
  • Strategies used by Chinese companies to leverage IP
  • Chinese FTO
    - Conducting searches for China IP
    - The ‘language issue’ (using Chinese documents) – Strategic options for specialist support
    - Options for dealing with third parties
    - Chinese weapons

Panel discussion: FTO risks – never black and white

  • Quantifying the risk of third-party patents
  • Likelihood of preliminary or permanent injunction
  • Looking at possible damages
  • Design around or licensing
  • Reporting risks to business group

Presenters

Sean Jauss

Sean Jauss is a solicitor and Head of the Legal Team at Mewburn Ellis LLP. Once upon a time he was a scientist. He gained his BSc in microbiology from Imperial College, London and a PhD in the same subject from the University of Cambridge (Trinity Hall) where he focussed on the biochemistry of Pseudomonas sp. bacteria. On completing his PhD, however, he decided to apply his science to the legal profession and eventually trained as a solicitor at Slaughter and May. When he qualified Sean left the City to establish the technology transfer office at the London School of Hygiene & Tropical Medicine. Some years later the love of surfing sent him West and he joined the Bristol office of Osborne Clarke where he headed the transactional intellectual property team.

Sean advises his clients on technology transfer and the exploitation of intellectual property. This includes advising on strategy, conducting due diligence and preparing and negotiating transactional agreements (often in the context of corporate transactions). He also advises on life science/pharma regulatory issues.

Sean has particular experience in the life science, clean technology and defence/engineering sectors. In Chambers & Partners (2012) he was noted as “an expert on the non-contentious side, with a strong background in biotechnology that makes him extremely popular with clients”.

Tim May

Timothy May is a partner in the Washington, DC office of Finnegan LLP. He has over 20 years experience in the field of US patent law, and focuses his practice on advising European high-tech companies on US patent matters. He counsels clients in all areas of US patent practice and currently manages the patent portfolios for several European clients in various electrical and mechanical technologies. He also counsels clients on patent validity and infringement. Prior to joining the firm, he served as a Patent Examiner at the US Patent and Trademark Office, where he examined applications involving digital communications, image analysis and testing and measurement devices.

Christian Reinders

Christian Reinders is Chief IP Counsel at Draexlmaier Group. He is responsible for all IP matters such as patent prosecution work, advising the board of management and all business units about IP matters, negotiating and reviewing all agreements in relation to IP matters, organising internal IP trainings, defining and developing internal workflows in relation to IP matters and defining and implementing patent strategies. Christian has worked as a German and European patent attorney over the last 15 years in different roles for various companies and IP firms in Germany, Switzerland and the UK, and therefore knows about working as an outside IP counsel and as an in-house IP counsel. He has extensive experience of advising internal and external clients on patent portfolio management, patent strategy, and how to implement IP-related workflows within an organisation.

Tim Whitfield

Tim Whitfield is a partner with Powell Gilbert LLP. He advises clients in contentious IP matters across all IP rights with a strong focus on patent litigation and strategy, across a wide range of technologies, especially disputes having an international element in the pharmaceutical sector. He represents clients in cases before the English Courts and the European Patent Office. He has very extensive experience of advising clients on the co-ordination of international patent litigation strategy including in the pharmaceutical, medical devices and electronics fields. Tim also advises on related issues arising from international technology standards, patent pools and licensing, as well as pharmaceutical regulatory issues and SPCs. Tim also has experience of patent portfolio due diligence projects, contentious design right issues and trade mark infringement disputes.

Sean Jauss

Dr Sean Jauss is a solicitor and Head of the Legal Team at Mewburn Ellis LLP. He advises his clients on technology transfer and the exploitation of intellectual property. This includes advising on strategy, conducting due diligence and preparing and negotiating transactional agreements (often in the context of corporate transactions). He also advises on life science/pharma regulatory issues. With a PhD in Microbiology and his experience establishing the technology transfer office at the London School of Tropical Medicine, Sean has a particular focus in the life science, clean technology and defence/engineering sectors.

John Nevard

John Nevard was, until recently, Director, Intellectual Property, for Cambridge Display Technology Ltd (CDT). He now runs his own IP consultancy, holds a non-executive directorship of TLIP Ltd, and is a senior advisor to Tianhao Intellectual Property in Hangzhou. After years of experience as an engineer, John changed career in ICI and qualified as a European Patent Attorney where he advised many businesses within the Chemicals, Polymers and Materials groups of ICI. He became Global Intellectual Property Manager for ICI’s Polyurethanes business in Everberg, Belgium, later part of the Huntsman group of companies, during which time he was a frequent visitor to Shanghai for technology transfer negotiations. He then entered into private practice in Hong Kong before moving back to England in 2003 to take on the role as Senior Patent Counsel, and then Chief IP Counsel, for the Alere group of companies. In April 2011, John took up his position with CDT. He has lectured at the Shanghai University of Finance & Economics and also on different aspects of Chinese IP law at the Centre for Commercial Law Studies of Queen Mary, University of London.

Book now

20 Jun 2019
20 Jun 2019 Rembrandt Hotel, London GBP 699.00
EUR 979.00
USD 1,090.00
+ VAT @ 20.00%
Enrol now
14 Nov 2019
14 Nov 2019 Venue not yet confirmed
+ VAT @ 20.00%
Enrol now

Previous customers include...

  • ELPEN PHARMACEUTICAL CO.INC.
  • Geistlich Pharma AG
  • Genmab A/S
  • Keller & Partner Patentanwälte AG
  • LifeArc
  • Saint Gobain Ltd
  • Tesa SE
  • Williams Powell
  • WP Thompson

All good and clear. Well prepared and well delivered.

Julian Potter, Partner - Patent Attorney, WP Thompson