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IP Due Diligence & Freedom to Operate in Practice Training Course

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.

Customised in-house training course

The content, presenters and format of this course are customised to your requirements.

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Course 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, and this intensive one-day course will give you invaluable insight into the best practice of organising and conducting an efficient and thorough IP due diligence project.

Attending this event will ensure that you know how to mitigate the risks involved and will give you practical advice on balancing internal resources and outside expertise to the best advantage. The programme will help you understand the vital aspects of an FTO analysis from a US and EU perspective, learn about the IP landscape in China and discover new opportunities.

You will also benefit from the experience of the expert faculty during the discussion session and get the solutions you need to your questions.

Key topics to be covered include:

  • Types of IP due diligence
    • Mergers and acquisitions
    • Sale of IP assets
    • Freedom to operate (FTO)
  • Best practices for organising an IP due diligence project
    • Developing comprehensive checklists
    • Aligning project scope with business goals
  • Parts of a due diligence evaluation
    • Evaluating the patent portfolio
    • Mitigating the risks
    • Communicating results
  • Focus on FTO projects
    • Best practices for when to do and how to do an FTO analysis
    • Validity and infringement analysis: US and European perspectives
    • US options for dealing with blocking patents
    • Wrestling the Chinese dragon
    • Dealing with FTO risks: never black and white

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

Who should attend?

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


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 and post-deal 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


Sean Jauss (More...) (3 Dec 2020)

Dr Sean Jauss is a partner 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.

Tim May (More...) (3 Dec 2020, 17 Jun 2021, 24 Jun 2021, 30 Nov 2021, 3 Dec 2021)

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, with significant experience counselling clients on software patent matters. Tim currently manages the patent portfolios for several European clients in various software, medical device and electrical and mechanical technologies. He regularly speaks on software patent issues. Prior to joining the firm, he served as a Patent Examiner at the US Patent and Trademark Office, where he examined applications involving digital and software technologies. From 2006 to 2011, Tim was located in the firm’s European office and continues to work with many European clients.

Christian Reinders (More...) (3 Dec 2020, 17 Jun 2021, 24 Jun 2021, 30 Nov 2021, 3 Dec 2021)

Christian Reinders is Chief IP Counsel at Draexlmaier Group, a German automotive component supplier of electrical, electronic, interior and storage systems with more than 70,000 employees operating in over 20 countries worldwide. He and his team are responsible for all IP matters at the Dräxlmaier Group 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 various patent strategies for different technology sectors. 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 a company organisation. Christian has worked on a diverse range of technologies, including computer implemented inventions in various technology fields, consumer electronics, transportation, power generation and electrical networks.

Tim Whitfield (More...) (3 Dec 2020, 17 Jun 2021, 24 Jun 2021, 30 Nov 2021, 3 Dec 2021)

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.


Customise & book

This course can be customised to meet your requirements, and delivered to your colleagues at your location or online. For more information, call us on +44 (0)20 7749 4730, email us at inhouse@management-forum.co.uk or contact us below:

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Training options

Public course dates

We can deliver and customise this course for any number of attendees, at your location or online. But if you have fewer colleagues, this course is running publically on:

  • 3 Dec 2020
  • 17 Jun 2021
  • 24 Jun 2021
  • 30 Nov 2021
  • 3 Dec 2021

Book now

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Previous customers include...

  • AiCuris Anti-infective Cures GmbH
  • CinnaGen
  • Cresco Advocaten
  • Cynora GmbH
  • European Patent Office
  • Fieldfisher
  • Geistlich Pharma AG
  • Genmab A/S
  • Hoffmann Eitle S.r.l.
  • Kilburn & Strode LLP
  • LifeArc
  • Nederlandsch Octrooibureau (NLO)
  • Nutricia Research B.V.
  • Omya International AG
  • Onsagers AS
  • Oxentia Ltd.
  • Perspectum Diagnostics
  • PolyOne / ColorMatrix
  • Research and Markets
  • Saint Gobain Ltd
  • Strom & Gulliksson
  • Unipat BV
  • University of West Bohemia
  • Williams Powell
  • WP Thompson
  • Xellia
  • Zacco Norway AS

All the speakers seemed well prepared and gave good presentations. Overall, this course was excellent in providing knowledge about different types of DD and FTO in the main jurisdictions and how to practically conduct such tasks. Very good speakers, updated and good course material.

Synnøve Flister, European Patent Attorney, Zacco Norway AS, Nov 19

Excellent. I hoped to achieve a better understanding of the due diligence process and this was accomplished. I liked the smaller group size, which made it more interactive, and the expertise of the speakers.

Matt Kelly, Chief Innovation Officer, Perspectum Diagnostics, Nov 19

The course was well organised and ambitious with high level and experienced speakers. I liked that the course covered different jurisdictions and that the speakers were able to refer to relevant real cases.

Jan Nilsson, Patent Attorney, Strom & Gulliksson, Jun 19

The speakers were all good and clear. A well-prepared and well-delivered course.

Julian Potter, Partner - Patent Attorney, WP Thompson, Sep 18