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 one-day course will give you invaluable insights 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

This course is part of our collection of IP & Patents Training Courses.

Benefits of attending

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?

This course has been specially designed for:

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

Enrol or reserve

This 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 from the perspective of a licensing company

Selection and prioritisation of technologies for FTO
Interaction of FTO and trade secrets

Enrol or reserve

Tim May
Finnegan LLP

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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Tim Whitfield
Powell Gilbert LLP

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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Andy Spurr
Ceres Power

Andy is Head Patent Counsel at Ceres Power, a clean energy technology company developing hydrogen fuel cells and electrolysers. Ceres partners with industry all over the globe to bring its products to market. As such, IP is central to Ceres’ business model and is a consideration in almost every business decision. Prior to Ceres, Andy worked as an in-house patent attorney at Canon Europe and prior to that in private practice

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Andy Spurr
Ceres Power

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.

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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*

Please contact us for pricing if you are interested in booking 5 or more delegates

23-24 September 2024

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 13889

GBP 599
EUR 859
USD 979

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

View basket

Not ready to book yet?

for 7 days, no obligation

4 December 2024

Classroom
Rembrandt Hotel
London

08:30-17:00 UK (London)
Course code 14082
Optional £200/€260/$300 per night

GBP 599 699
EUR 869 1,009
USD 993 1,149

Until 30 Oct

1 day classroom-based training
Optional accommodation - 1 night including breakfast, checking in the day before the course
Meet presenters and fellow attendees in person
Lunch and refreshments provided
Download documentation and certification of completion
Fair transfer and cancellation policy

View basket

Not ready to book yet?

for 7 days, no obligation

6-7 March 2025

Live online

13:00-17:30 UK (London) (UTC+00)
14:00-18:30 Paris (UTC+01)
08:00-12:30 New York (UTC-05)
Course code 14562

GBP 499 599
EUR 719 859
USD 823 979

Until 30 Jan

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

View basket

Not ready to book yet?

for 7 days, no obligation

1 July 2025

Classroom
Rembrandt Hotel
London

08:30-17:00 UK (London)
Course code 14716
Optional £270/€351/$405 per night

GBP 599 699
EUR 869 1,009
USD 993 1,149

Until 27 May

1 day classroom-based training
Optional accommodation - 1 night including breakfast, checking in the day before the course
Meet presenters and fellow attendees in person
Lunch and refreshments provided
Download documentation and certification of completion
Fair transfer and cancellation policy

View basket

Not ready to book yet?

for 7 days, no obligation

4-5 November 2025

Live online

13:00-17:30 UK (London) (UTC+00)
14:00-18:30 Paris (UTC+01)
08:00-12:30 New York (UTC-05)
Course code 14937

GBP 499 599
EUR 719 859
USD 823 979

Until 30 Sep

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

View basket

Not ready to book yet?

for 7 days, no obligation

* 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; and apply only when booking multiple delegates on the same date.

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

Very interesting and inspiring course and very good speakers!

Sep 26 2022

Maria Alessandra Alisi Italy
INT. PROP. & COMP. INTELLIGENCE MANAGER, Angelini Pharma S.p.A.

Sep 26 2022

Excellent training. The fact that several caselaw and practices were confronted (US, UK , EPO, DE) and also some speaker working in the industry, other working in IP firm. It was enriching to have those different point of view.

Marie Guilmard France
Industrial Property & Trademarks Manager, AXENS

Dec 1 2021

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

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