Transactions in intellectual property, whether assignments or licences, vary widely in complexity. We can work as sole advisors, drafting and negotiating agreements on behalf of clients. Alternatively, we can work as part of a team of advisors, providing specialist advice on the intellectual property aspects of an agreement. We also deal with any required registration before the appropriate Intellectual Property Offices.
| If you require general information about transactions in intellectual property, please see our Introduction to Intellectual Property Transactions. |  |
| If you are an intellectual property attorney based outside Europe, please consult our note on Intellectual Property Transactions in the UK and Europe. | |
Due Diligence
Often a prelude to a transaction, and required in preparation for investment, we are used to preparing intellectual property due diligence reports to meet varying requirements. Sometimes verification of the extent and content of an intellectual property portfolio is enough. More extensive reports may involve novelty and/or freedom to operate searching to properly assess the strength of the intellectual property and positioning with respect to competitors.
Assignments
When intellectual property rights are transferred in ownership for mainly organisational reasons, such as between affiliated companies, we can provide a straightforward assignment document. When the change in ownership is part of a bigger transaction, as well as dealing with preparation of the assignment, we are often called upon to deal with preparatory work, such as advising on the value of the intellectual property or performing due diligence. More often than not, we will also take over responsibility for the intellectual property rights that are acquired and advise on subsequent strategy.
Licences
Intellectual property licenses need to be framed in the context of a sophisticated commercial deal. We work with commercial lawyers to draft licence agreement appropriately, using our internal resources to advise on the specific intellectual property issues surrounding the agreement. These typically comprise valuing the intellectual property and performing due diligence, as well as dealing with the licensor's or licensee's on-going duties in relation to the intellectual property rights under the agreement.
Registration
Whether a transaction is by way of assignment or licence, there is usually a requirement to register the transaction at the intellectual property offices that are responsible for granting the intellectual property rights concerned. This is frequently a complex logistical process, requiring different documentation to be filed at each intellectual property office within a given time frame. We are very familiar with the registration process in all major jurisdictions and aim to carry out the required steps with a minimum of fuss and expense.
