2nd National Conference on: Life Sciences IP Due Diligence

June 26, 2006
Affinia Manhattan Hotel, New York, NY
Monday-1:35

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
Tuesday-8:30

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