The Premier Best Practices Forum on

Life Sciences IP Due Diligence for Buyers

Wednesday, April 11, 2007

About

Ensure you acquire valuable IP through the IP diligence review appropriate for your deal

In many life sciences transactions, the IP due diligence review can be timely, costly and difficult, but can provide a number of benefits: Business relationships can be developed and protected during the process. Identified problems can be solved before the deal is consummated … and even increase the value of the transaction. But the biggest benefit is that you are ensuring that the intellectual property behind the transaction supports the value of the deal – at the very least.

Ask all the questions that matter when analyzing the IP

As the person responsible for ensuring the IP’s value, you need to know what assets are important and the business drivers behind the deal. These influence the type and depth of diligence needed. Only then can you develop an appropriate diligence strategy, build the team, and devise the right checklist.

Use the diligence review advantageously

Whether the deal is a collaboration, license, or acquisition, it is vital to ensure that the IP has value. You need to determine whether title is clear, and whether there is the right to commercialize the IP. The portfolio’s value must be assessed, including the validity of the patents and the potential risks. And you must protect the attorney-client privilege throughout the process.

With all of this in mind, ACI has developed the The Premier Best Practices Forum on Life Sciences IP Due Diligence for Buyers publication. An experienced faculty of leading IP practitioners and experienced in-house counsel will provide you with the best techniques for conducting a successful and cost-effective IP diligence review.

Contents & Contributors

About

Ensure you acquire valuable IP through the IP diligence review appropriate for your deal

In many life sciences transactions, the IP due diligence review can be timely, costly and difficult, but can provide a number of benefits: Business relationships can be developed and protected during the process. Identified problems can be solved before the deal is consummated … and even increase the value of the transaction. But the biggest benefit is that you are ensuring that the intellectual property behind the transaction supports the value of the deal – at the very least.

Ask all the questions that matter when analyzing the IP

As the person responsible for ensuring the IP’s value, you need to know what assets are important and the business drivers behind the deal. These influence the type and depth of diligence needed. Only then can you develop an appropriate diligence strategy, build the team, and devise the right checklist.

Use the diligence review advantageously

Whether the deal is a collaboration, license, or acquisition, it is vital to ensure that the IP has value. You need to determine whether title is clear, and whether there is the right to commercialize the IP. The portfolio’s value must be assessed, including the validity of the patents and the potential risks. And you must protect the attorney-client privilege throughout the process.

With all of this in mind, ACI has developed the The Premier Best Practices Forum on Life Sciences IP Due Diligence for Buyers publication. An experienced faculty of leading IP practitioners and experienced in-house counsel will provide you with the best techniques for conducting a successful and cost-effective IP diligence review.

Contents & Contributors

Getting to the Heart of the Business Reasons for the Deal
Michael J. Lerner, Lowenstein Sandler PC (Roseland, NJ)
Maria E. Pasquale, Celgene Corporation (Summit, NJ)

Getting the Best Answers to the Due Diligence Checklist
Christine P. Bellon, Infinity Pharmaceuticals, Inc. (Cambridge, MA)

Creating the Due Diligence Checklist
W. Murray Spruill, PhD, Alston & Bird LLP (Raleigh, NC)

Including IP Valuation Considerations in the Due Diligence Assessment
Lewis Bender, Emisphere Technologies (Tarrytown, NY)

Repositioning Due Diligence Strategy Based On New Case Law and Patent Reforms
John Todaro, Merck & Co., Inc. (Rahway, NJ)

Role of Written Description in IP Due Diligence
Cynthia L. Kanik, PhD, Lahive & Cockfield, LLP (Boston, MA)

Due Diligence for University/Industry Collaborations and Licenses
Mary Dicig, University of Illinois at Chicago (Chicago, IL)

Due Diligence for University/Industry Collaborations and Licenses
Christopher A. Bloom, Bell, Boyd & Lloyd LLC (Chicago, IL)

Enforceability of the IP to Be Acquired: The Jungle of Inequitable Conduct
Thomas L. Irving, Finnegan, Henderson, Farabow, Garrett & Dunner, LLP (Washington, DC)

Emerging Hot Button Issues: Government Rights, Litigation Risks, Antitrust, Trade Secrets, Safety
Jeffery A. McKinney, Altairnano, Inc. (Reno, NV)

Overcoming Attorney-Client Privilege and Ethical Concerns When Conducting Due Diligence
David P. Frazier, PhD, Finnegan, Henderson, Farabow, Garrett & Dunner, LLP (Washington, DC)
Barbara A. Fiacco, Foley Hoag LLP (Boston, MA)

Ownership & Inventorship Issues in IP Due Diligence
Kenneth Mitchell, AstraZeneca Pharmaceuticals, LP (Wilmington, DE)

Conducting the Freedom to Operate Search
Mary Catherine DiNunzio, Esq., H. Lundbeck A/S (Copenhagen, Denmark)
Matthew W. Siegal, Group, Strook & Strook & Laven, LLP (New York, NY)

Patent Portfolio Evaluation
Leslie Gladstone Restaino, Sills Cummis Epstein & Gross PC (Newark, NJ)
Thomas J. Dodd, Johnson & Johnson (New Brunswick, NJ)

Intellectual Property Representations and Indemnities
Philip Hahn, Pfizer, Inc. (New York, NY)

Solving Identified Problems During the Diligence Process
Mathew J. Golden, Schering-Plough Corporation (Kenilworth, NJ)
Scott T. Piering, Cargill Incorpoarted (Wayzata, MN)
Eric J. Marandett, Choate, Hall & Stewart (Boston, MA)



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