March 16, 2021
Intellectual Property Issues in M&A: A Deep Dive
For many companies in technology-related industries, intellectual property rights are fundamental to the value proposition of a proposed acquisition. Even outside of these industries, IP rights are frequently critical to the success of the business and a key aspect of the due diligence and negotiation process. If you are looking to get your arms around intellectual property issues in M&A transactions, be sure to check out this 106-page guide from Wachtell Lipton. This excerpt from the intro gives you a sense of the breadth of the guide’s coverage:
This Guide provides an overview of key issues regarding intellectual property rights and technology in M&A transactions, from the way in which intellectual property rights and technology may be defined and transferred or shared in transactions to the challenges that parties face in navigating often complex commercial relationships beyond the closing of the M&A transaction.
Chapter II of this Guide begins with a discussion of the major forms of intellectual property rights likely to be encountered in the M&A process. Special emphasis is placed on the distinction between legal rights themselves and the embodiment of those rights in forms such as documents, software, know-how, hardware and other types of tangible technology.
Chapter III applies the legal and theoretical framework outlined in the previous chapter to issues that arise in the M&A context. This Chapter provides guidance to practitioners on IP issues arising from the signing of a confidentiality agreement to the drafting of definitive transaction documents and closing.
Chapter IV is dedicated to issues arising in the negotiation of the licenses that may be required in carve-out or other private company transactions.
Finally, Chapter V deals with certain additional topics not addressed elsewhere in this Guide, including issues arising in joint ventures and financing transactions.
– John Jenkins