March 29, 2019

The Nuts & Bolts of IP in Business Transactions

Intellectual Property (IP) is becoming more and more important in today’s business world.  There’s hardly an aspect of modern business that doesn’t involve IP, whether it be in a real property transaction, a bankruptcy, due diligence for a merger or acquisition or financing.  In some cases, the most important part of a “deal” is the IP involved. 

There are four key forms of intellectual property – patents, trademarks, copyrights and trade secrets, all of which afford certain rights and protections to the holder. Patents are property rights in designs or processes granted and formally recognized by the government to the inventor for a limited period of time. A patent can provide opportunities for revenue by licensing rights in and to a patent, but can also act as a shield against other inventors or would-be thieves of designs or processes.  As such, patents can be valuable assets, especially for individuals or organizations whose business is derived from or formed around the patented subject matter (like a toy).  Trademarks are the names, words, pictures, descriptions, logos, taglines, etc. that designate a product, idea, organization or other source for goods and services.  Such marks can be formally registered or acquired at common law through first usage. Trademarks are central to branding for companies and for products/product lines alike.  As leading branding tool a company’s reputation is often associated with or triggered by trademarks.  Copyrights are the protected modes of expressing ideas, rather than the ideas themselves. Copyrights may be registered, but registration is not required to assert a copyright.  Copyrights are also everywhere and apply to everyday aspects of our lives – the code of the software that enables programs to run on our laptops, the books we read, the web pages we visit, the videos we watch on the internet – all are subject to copyright protections.  Trade secrets are the confidential, proprietary information that maintain their value by remaining confidential, known only to its owner.  While not formally or publicly registered, trade secrets are statutorily protected intellectual property.  While trade secrets remain unknown, they often are at the core of an organization’s most valuable intellectual property.  The rights and protections created in the intellectual property described above can both enable and hinder, but certainly always complicate business transaction.  

Seemingly simple or straightforward transactions can be complicated by IP issues, often times issues raised by third parties.  This CLE panel will explore the IP issues raised in four (4) common business settings.  First, we will examine what type of IP issues arise when financing the purchase or license of software.  Second, we will explore the best tips and procedures for conducting IP due diligence, whether it be in a merger or acquisition or other transaction.  Third, we will delve into the complicated world of IP and bankruptcy.  Finally, we will learn about the often overlooked, but sometimes critically important, IP rights associated with real property transactions.