2nd National Conference on: Life Sciences IP Due Diligence

June 26, 2006
Affinia Manhattan Hotel, New York, NY

Addressing the Target's Prior Contractual Obligations

James F. Farrington, Jr. Partner, Wiggin and Dana LLP (Stamford, CT)

  • Reviewing the target's prior agreements with other parties and projecting how the fruits of this review affect the value and terms of the transaction
  • The key terms to review in connection with the transaction Handling prior licenses or other rights to third parties Addressing sublicenses with no direct relationship to the IP owner
  • Review of issues under collaborative, contract, and sponsored research agreements
  • Special issues under consultancy and employee agreements

From the Target's Perspective: The Seller's Due Diligence Obligations

Todd E. Garabedian Partner, Wiggin and Dana LLP (Hartford, CT)

  • Evaluating what is being sold and why it's being sold - how the strategic assessment differs based on whether the whole business, a portion of the business, or part of an IP portfolio, is being sold
  • Understanding who the potential buyers are - identifying the most likely candidates and the strategic reasons for their interest to focus your preparatory efforts
  • Ensuring that the "house is in order" - identifying the weak spots and questions in advance - fixing what can be fixed before any offers - establishing how expired patents, third-party patents, and know-how affect the valuation
  • Realizing the business constraints - how much time is allotted for the deal? - what is the minimum price threshold for the deal to be viable for your company?
  • Creative implementation strategies for the deal concerning: - cash - stock - payments over time - royalties
  • Presenting the strengths and weaknesses of your IP portfolio
  • Selecting your diligence team - striking the right balance of transactional and IP counsel, scientists, and business development officers
  • Defining what will and will not be presented and how it will be presented - ensuring best practices in presenting data or other aspects of the deal
  • Protecting privileged and confidential information - how much should be disclosed and when? - who will have access? - incorporating trade secrets and know-how into your protection strategies - protecting information in the event that the deal falls through
  • Deciphering what litigation risks need to be disclosed - hints of litigation in the pipeline