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IP due diligence from an in-house perspective
IPcopy and Keltie LLP were treated to an excellent presentation by Rob Carter of K2 IP on the subject of due diligence from an in-house perspective (Rob worked in Shell’s intellectual property legal team for over 25 years, the last 10 years as Associate General Counsel and as part of the Global IP leadership team).
A typical M&A transaction passes through a number of stages and IP plays a key role in many of these stages:
- Identification (to work out what IP is key?, how to extract value from the IP? etc.);
- Assessment (what information will need to go into the data room?, what IP assets does the target company have? what IP agreements will be needed?)
- Select (How do the IP due diligence results affect the proposed transaction?)
- Define (what IP-related agreements will be required – a brand licence, process licence, patent/trade mark assignments, etc?. What IP rights will a retained business need?)
- Execute (Negotiation and drafting of the IP-related agreements)
- Operate (the fun task of recording licences and assignments and transferring files)
- Asset Review (how did it go? How can we do better next time?)
Why Bother with Technology Transfer?
Technology transfer, or the process of converting scientific and technological advances into marketable goods and services, can be daunting. So why bother? Whether you’re a prospective licensor or licensee, this article will help you to understand the motivations for engaging in this important business process and to identify some risks which should be considered. (more…)
Managing Confidential Information
This is the second in a series of articles which aims to demystify the topic of technology transfer and give you valuable insight into its key elements. Whether you are just setting out to conduct R&D in collaboration with a third party, or are exploring a business opportunity such as licensing-in someone else’s technology or licensing-out your own technology, it will be vital to manage the flow of confidential information, including any know-how or trade secrets, in order to mitigate the twin risks of knowledge leakage and knowledge contamination. (more…)
The Technology Transfer Lifecycle
Technology transfer, or the process of converting scientific and technological advances into marketable goods and services, can be a daunting topic. This is the first in a series of articles which aims to demystify the topic and give you valuable insight into the key elements of technology transfer. A good technology transfer process will be self-sustaining, a form of virtuous circle starting with an innovation, then passing through the stages of technology evaluation, IP protection, technology transfer strategy, IP bundling and valuation, technology marketing, licensing, implementation and ultimately revenue generation, which in turn can support further innovation. This article picks up the story at the IP protection stage. (more…)