Intellectual Property Due Diligence Issues in Mergers and Acquisitions

Casey GriffithPartner

Klemchuk Kubasta LLP

What am I buying?

Due Diligence

• What rights does the target company own?

• What rights will you acquire?

Due Diligence

• What rights does the target company own?• Ownership disputes• Owner or licensee• Strength of rights• What is covered?• Geographic limitations?• Temporal limitations?

Due Diligence

• What rights does the target company own?• Validity concerns

• Reexamination or litigation• Enforceability concerns• Laches• Litigation

• Past, Present, and Future

Due Diligence

Due Diligence

• What rights does the target company own?

• What rights will you acquire?

• What rights will you acquire?• Can the target’s IP affect your existing IP

rights?• Has the target licensed its IP?

• What are the terms?• Good deal?• Expiration?• Exclusive / Nonexclusive?

Due Diligence