IP Due Diligence & Freedom-to-Operate in Practice

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

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

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

We do not currently have dates confirmed for this course; please contact us to be informed when it is scheduled; or to discuss running this course on an in-house basis for your staff.