Immigration Law 1 © 2007, Tydings & Rosenberg LLP When There's an "I" and a "P" in "M&A" A. Lee Lundy, Jr. September 19, 2007

Topics To Be Covered Patents Trade Secrets Trademarks Copyrights

General Process Participants Documents

Patents Ownership Strength Challenges Markets

Ownership Issued Assignments Security Interests

Strength Other patents/workarounds Searches done Remaining life Product marking

Challenges Settlements Cross licensing Covenants not to sue

Markets Renewal Fees paid Patent “worked” where required Watch for other filings

Target as Licensee Other known licenses Exclusivity Economics Rights if licensor in financial trouble All of the above (ownership, strength, challenges, coverage)

Target as Licensor Right to terminate if insufficient exploitation Economics/right to audit Inappropriate overlaps of licenses Potential forced licensing Non-economic (academic) licenses

Infringement of other patents Policing Opinions

Trademark - Obtaining Ownership Strength Classes Markets

Trademarks - Maintenance Watch service Incontestability Abandonment Monitoring licensees Infringers Usage

Trade Secrets Patentability review Infringement review

Trade Secrets of Others Debriefing/assigning of new employees Purging files of acquiree information Isolate buyer reviewers from buyer users Post-transaction retention of employees

Trade Secrets - Maintenance Designation for secret materials Confidentiality agreements NDAs Non-compete agreements Physical, technical and administrative security Personnel turnover Publication/trade show restrictions

Other IP Copyright Domain names

Copyrights Work for hire/consultant agreements Fees/renewals Infringement/copying of others Moral rights issues Software on computers

Domain names Ownership Confusion Fees

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