IP Due Diligence In Corporate Transactions 2015

Total Credits: 6.5 (2.0 Professional Practice, 3.0 Skills, 1.5 Ethics). Attorneys admitted 24 months or less are not eligible to receive credit in Skills and Ethics via a program recording.

IP Due Diligence in Corporate Transactions, presented by the Intellectual Property Law Section, was recorded November 10, 2015.

Topics include:

• Considering the deal
• Asset review
• Licenses
• Drafting representations and warranties, indemnification obligations
• Preparation of IP schedules, assignment and other IP-related documents
• Ethical considerations

NYSBA Member price: $215 | Non-Member Price: $325
Intellectual Property Law Section Member Price: $125
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1. CONSIDER THE DEAL

• Basic IP Definitions
• Type of Deal
• Is it an IP-based Business?
• Consider the Differing Positions of Buyer and Seller
• Don't Forget the Lender
• Talk to the Client

PANELISTS
Erica D. Klein, Esq., Kramer Levin Naftalis & Frankel LLP
Robin E. Silverman, Esq., Golenbock Eiseman Assor Bell & Peskoe LLP
Howard Feller, MMG Advisors, Inc.

2. ASSET REVIEW

• Review of IP Portfolio (world-wide)
• Review of IP-related Claims/Litigations
• Assess Seller Software
• Website/Privacy Issues

PANELISTS
Marc A. Lieberstein, Esq., Kilpatrick Townsend & Stockton LLP
Laurie J. Gentile, Esq., Nine West/The Jones Group
Stephen A. Holzen CLP, CVA, Stout Risius Ross
Gary A. Kibel, Esq., Davis & Gilbert LLP

3. WHAT ABOUT THE LICENSES?

• Review of IP-related Licenses
• Licenses In
• Licenses Out

PANELISTS
Rita M. Odin, Esq., Estee Lauder Companies Inc.
Megan E. Bussey, Esq., Kilpatrick Townsend & Stockton LLP
Scott Sisun, Esq., Kelley Drye LLP
Katherine S. Gardner, Esq., Gunderson Dettmer

4. DRAFTING OF REPRESENTATIONS AND WARRANTIES; INDEMNIFICATION OBLIGATIONS (Part I) – NEGOTIATION OF REPS/WARRANTIES

• Who is Making the Reps/Warranties?
• Potential Exposure
• The Definitions are Critical
• Issues to be Addressed with Respect to Reps/Warranties/Limitations
• When Things Go Wrong

PANELISTS
Victoria A. Cundiff, Esq., Paul Hastings Janofsky & Walker, LLP
David M. Klein, Esq., Quislex, Inc.

5. DRAFTING OF REPRESENTATIONS AND WARRANTIES; INDEMNIFICATION OBLIGATIONS (Part II) – FOLLOW-UP ON THE APA SPA – PREPARATION OF IP SCHEDULES, ASSIGNMENT AND OTHER IP-RELATED DOCUMENTS

• Schedules
• Copyright, Trademark, Patent and Domain Name Documents
• Recordation of Assignments
• Transfer of Files and Responsibility for Future Maintenance

PANELISTS
Victoria A. Cundiff, Esq., Paul Hastings Janofsky & Walker, LLP
David M. Klein, Esq., Quislex, Inc.

6. ETHICS: PRESERVING PRIVILEGE WITHOUT LOSING THE DEAL: AVOIDING WAIVER OF ATTORNEY-CLIENT PRIVILEGE DURING DUE DILIGENCE

• Who is the Client?
• Diligence Materials
• Opinions of Counsel
• What happens if information is discovered after the closing?

PANELISTS
Yitzy Nissenb