Mergers and acquisitions, spin-offs, investments and other financing transactions frequently present intellectual property issues that require careful consideration. In corporate transactions involving businesses that own or license technology or intellectual property, diligence and planning are critical to achieving business objectives, maximizing value and minimizing potential liability.

Attorneys in our IP Transactions & Strategies Practice are business counselors with an expertise in intellectual property. We have deep experience with corporate transactions in technology and intellectual property-intensive industries, such as computer hardware and software, semiconductors, telecommunications, wireless, life sciences, medical devices, financial services, publishing and new media.

Our attorneys carefully review and evaluate the technology and intellectual property in a transaction and work closely in interdisciplinary teams with the firm’s business and antitrust lawyers to structure the acquisition, sale or license of intellectual property rights to meet the business objectives of our clients. In addition, lawyers in our IP Transactions Practice partner with our tax lawyers to counsel clients on how to optimally structure technology transactions to minimized tax liabilities.

We identify and assist clients in addressing issues such as:

• Is the seller planning on retaining intellectual property necessary for conduct of the company’s business? 

• Conversely, will the buyer acquire intellectual property necessary for continued conduct of the seller’s existing business or the conduct of the seller’s proposed business?

• Will any post-closing transitional licenses be necessary; for example, a license permitting the buyer to transition from the seller’s brand to the buyer’s new brand?

• Will post-closing field restrictions be imposed on the use of the intellectual property by either or both of buyer or seller? 

• How will field of use restrictions interplay with the deal’s non-competition agreement?

• Will the transaction necessitate a manufacturing or supply relationship?

• Will the buyer require technology or know-how transfer and training assistance as part of a transition services relationship?

Attorneys in our IP Transactions & Strategies Practice are highly experienced, with deep knowledge of transactions, negotiation strategy, technology and intellectual property. Our approach is pragmatic, business-oriented and always tailored to a particular transaction or business context.

Contact: Stephen G. Charkoudian