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, and this intensive one-day course will give you invaluable insight into the best practice of organising and conducting an efficient and thorough IP due diligence project.

Attending this event 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 programme 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.

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 to do 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: never black and white

Why you should attend

By attending this one-day intensive seminar, you will:

Gain practical advice from highly rated experts on how best to prepare for your due diligence and FTO projects
Learn to identify when due diligence and FTO projects are desirable and how to determine what the scope should be
Improve your understanding of the risks around ownership and learn how to minimise these risks
Communicate due diligence results effectively while protecting confidential and privileged information
Understand your obligations if the deal doesn’t go through
Be prepared for the FTO questions that will be raised by your client/company when they want to use new technology or expand existing technology
Understand which FTO questions you should ask to make the most of your time and budget
Discuss best practices for setting up and conducting a thorough analysis
Gain valuable insight into infringement and validity analysis in Europe and the US
Take away practical advice on leveraging the European and US systems to your advantage
Learn to evaluate, minimise and communicate risk effectively

Who should attend?

Patent attorneys
In-house lawyers
Business development executives/managers
IP and patent managers
Licensing executives
Trade mark attorneys

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The IP Due Diligence & Freedom to Operate in Practice course will cover:

Best practices for organising and conducting an IP due diligence project

Understanding the business goals
Practical issues regarding accessing information
Privilege and confidentiality issues
Developing a comprehensive due diligence checklist to determine project scope under different deal conditions and budgets
Awareness of relevant US IP issues frequently encountered
Potential pitfalls when involving company’s technical persons: a list of ‘do nots’

In-house perspectives on conducting IP due diligence and FTO projects

Role of IP – risk factor, nice to have or deal driver?
Coordination of the projects within various business units
Balancing internal resources with expertise of outside counsel
Impact of IP due diligence and FTO projects on IP awareness within the business units

Mitigating the identified risks

Real examples will be used to illustrate the types of risks that generally arise and how to restructure or end a deal having significant risks
- How much risk is too much?
- What if you are asked to make the deal happen even if the risk is high?
- Can you mitigate that risk?

Communicating results and post-deal issues

Confidentiality obligations if the underlying deal does not go through
Handling negative information
Obligations that remain if the deal is successful
Practical aspects of file retention

Vital aspects of an FTO analysis – US perspective

Tactics for recognising the products and processes to be cleared
Timing and scope of the project
Defining the search – common pitfalls
Validity and infringement analysis – tactics for ‘triage’ on the FTO search results
- US perspectives on relevant legal issues
Cost-effective approach for dealing with potentially problematic or ‘blocking’ patents
- US perspectives on relevant legal issues

Vital aspects of an FTO analysis – EP perspective

Strategies for analysing whether EP infringement and validity issues in FTO context
Recognising the risks in different EP jurisdictions
EP options for dealing with competitor patents
Best practices for EP counsel and in-house teams

FTO when implementing standards

Short background on SEPs
Factors to consider prior to implementing a standard
Strategies for dealing with SEP owners

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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.

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Christian Reinders

Christian Reinders is Chief IP Counsel at the Draexlmaier Group, a German automotive supplier of electronical components, interior parts and battery systems with more than 75,000 employees operating in over 20 countries worldwide. He and his team are responsible for all IP-related matters at the Dräxlmaier Group such as patent prosecution work, advising the board of management and all business units about IP-related matters, negotiating and reviewing agreements in relation to IP-related matters and defining and developing internal workflows in relation to IP-related matters, in particular defining and implementing patent strategies.

Christian has worked as a European, German and UK patent attorney over the last 20 years in different roles for various companies and IP firms in Germany, Switzerland and the UK. Therefore he has a solid background about working as a patent attorney in private practice and as an in-house IP counsel in a company. Christian has extensive experience of advising internal and external clients on patent portfolio management, patent strategy, and how to implement IP-related workflows within a company organisation. He has worked on a diverse range of technologies, including computer implemented inventions, and in various technology fields, such as automotive, electronics & electrical engineering, IT & communications, oil&gas and transportation.

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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.

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Book IP Due Diligence & Freedom to Operate in Practice Live online/Classroom training

NEW higher discounts for multiple bookings - bring your colleagues to make your training budget go further:

30% off the 2nd delegate*
40% off the 3rd delegate*
50% off the 4th delegate*

26-27 Sep 2022

Live online

13:00-17:30 UK (London) (UTC+01)
14:00-18:30 Paris (UTC+02)
08:00-12:30 New York (UTC-04)
Course code 11797

GBP 499 599
EUR 719 859
USD 814 970

Until 22 Aug

2 sessions live online training
Browser-based, no download usually required
See presenters and interact with fellow attendees
Download documentation and certification of completion
Fair transfer and cancellation policy

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7 Dec 2022

Classroom
Rembrandt Hotel
London

09:00-17:00 UK (London)
Course code 12017

GBP 599 699
EUR 839 979
USD 934 1,090

Until 02 Nov

1 day classroom-based training
Meet presenters and fellow attendees in person
Lunch and refreshments provided
Download documentation and certification of completion
Fair transfer and cancellation policy

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* Early booking discounts may not be combined with other discounts or offers. As such, the discounts for 2nd/3rd/4th delegates are based on the full price.

Reviews of IPI's IP Due Diligence & Freedom to Operate in Practice training course

it was a good mixture of different aspects of this rather complex issue

Dec 1 2021

Paul Barbic Austria
Treibacher Industrie AG

Nov 14 2019

All the speakers seemed well prepared and gave good presentations. Overall, this course was excellent in providing knowledge about different types of DD and FTO in the main jurisdictions and how to practically conduct such tasks. Very good speakers, updated and good course material.

Synnøve Flister Norway
European Patent Attorney, Zacco Norway AS

Nov 14 2019

Excellent. I hoped to achieve a better understanding of the due diligence process and this was accomplished. I liked the smaller group size, which made it more interactive, and the expertise of the speakers.

Matt Kelly United Kingdom
Chief Innovation Officer, Perspectum Diagnostics

Jun 20 2019

The course was well organised and ambitious with high level and experienced speakers. I liked that the course covered different jurisdictions and that the speakers were able to refer to relevant real cases.

Jan Nilsson Sweden
Patent Attorney, Strom & Gulliksson