EARN CLE ETHICS CREDITS

Be in the Room Where it Happens: Knowing how to Effectively and Successfully Communicate with the IP Due Diligence Team

November 29, 2018 3:45pm

Target

Thomas L. Irving
Partner
Finnegan Henderson Farabow Garrett & Dunner LLP (Washington, DC)

Jennifer Zarutskie Sieczkiewicz
Vice President, Chief Intellectual Property Counsel
Wave Life Sciences (Cambridge, MA)

Gary J. Speier
Shareholder
Carlson Caspers Vandenburgh Lindquist & Schuman, PA (Minneapolis, MN)

Ha Kung Wong
Due Diligence Head CM and NS
Venable Fitzpatrick

Acquirer

Matt Blischak
Vice President, Intellectual Property Counsel
Roivant Sciences, Inc. (New York, NY)

Alysia A. Finnegan, Ph.D., Esq.
Counsel, Intellectual Property Group
Merck & Co. Inc. (Rahway, NJ)

Mercedes K. Meyer, Ph.D., J.D.
Partner
Drinker Biddle & Reath LLP (Washington, DC)

Len Smith
Principal Counsel and Co-Founder
Transformative Legal (Scottsdale, AZ)

Here is your chance to be a part of the “dueling” deal teams as our team leaders walk you through a mock deal scenario providing best practices for fostering inter- and intra-team communications, and tailored solutions for overcoming top challenges faced by both acquirers and targets. Our teams will dive into all aspects of the diligence process including: preparation, valuation, ethical and privilege issues, as well as tying up necessary strings to complete the IP due diligence phase of the deal process. Be prepared for this highly interactive think tank where everyone participates! Sample topics of discussion include:  
  • Getting the target’s “IP house” in order
  • Performing an objective review of your portfolio to prepare for the acquirer’s questions while considering how closely to guard privileged information
  • Timing and extent of flaw identification: what to do with known risks in your portfolio? When to identify them up front vs. waiting until the potential buyer asks?
  • Evaluating what the other side is looking for, and drafting a plan to get there
  • Disclosure: determining how much information to relay to the target about flaws when you still want the deal to proceed and understanding potential privilege considerations
  • Assisting the business team with valuation of the patent(s)
  • Identifying risk in a target IP portfolio and effectively conveying this
  • information to the business development team
  • Understanding best ways to submit data to the relevant team, e.g., IP attorney vs non-IP person