Course overview
A properly conducted due diligence search can lead to many opportunities for both buyers and sellers, including long-term relationships and new business synergies. This intensive training course will give you invaluable insights into the best practice of organising and conducting an efficient and thorough IP due diligence project.
Attending this training course will ensure that you know how to mitigate the risks involved and will give you practical advice on balancing internal resources and outside expertise to the best advantage. The course will help you understand the vital aspects of an FTO analysis from a US and EU perspective.
You will also benefit from the experience of the expert faculty during the discussion session and get the solutions you need to your questions and challenges.
Key topics to be covered include:
- Types of IP due diligence
- Mergers and acquisitions
- Sale of IP assets
- Freedom to operate (FTO)
- Best practices for organising an IP due diligence project
- Developing comprehensive checklists
- Aligning project scope with business goals
- Parts of a due diligence evaluation
- Evaluating the patent portfolio
- Mitigating the risks
- Communicating results
- Focus on FTO projects
- Best practices for when and how to do an FTO analysis
- Validity and infringement analysis: US and European perspectives
- US options for dealing with blocking patents
- Dealing with FTO risks
CPD Hours: 6
Course Content
- Day 1
- Best practices for organising and conducting an IP due diligence project
- In-house perspectives on conducting IP due diligence and FTO projects
- Mitigating the identified risks
- Communicating results and post-deal issues
- Vital aspects of an FTO analysis - US perspective
- Vital aspects of an FTO analysis - EP perspective
- FTO from the perspective of a licensing company
Speakers
Tim May
Timothy May is a partner in the Washington, DC office of Finnegan LLP. He has over 20 years experience in the field of US patent law, with significant experience counselling clients on software patent matters. Tim currently manages the patent portfolios for several European clients in various software, medical device and electrical and mechanical technologies. He regularly speaks on software patent issues. Prior to joining the firm, he served as a Patent Examiner at the US Patent and Trademark Office, where he examined applications involving digital and software technologies. From 2006 to 2011, Tim was located in the firm’s European office and continues to work with many European clients.
Andy Spurr
Andy Spurr is a patent attorney at Canon Europe, specialising in software related inventions with a particular focus on video encoding and standard essential patents. Before joining Canon, Andy spent 8 years at a private practice IP firm where he worked with numerous software start-ups, advising on how to best leverage their IP to create commercial value.
Tim Whitfield
Tim Whitfield is a partner with Powell Gilbert LLP. He advises clients in contentious IP matters across all IP rights with a strong focus on patent litigation and strategy, across a wide range of technologies, especially disputes having an international element in the pharmaceutical sector. He represents clients in cases before the English Courts and the European Patent Office. He has very extensive experience of advising clients on the co-ordination of international patent litigation strategy including in the pharmaceutical, medical devices and electronics fields. Tim also advises on related issues arising from international technology standards, patent pools and licensing, as well as pharmaceutical regulatory issues and SPCs. Tim also has experience of patent portfolio due diligence projects, contentious design right issues and trade mark infringement disputes.
