We use this forum to continue the conversation. At the M:I MB this past Friday, 6 August, the program was titled You say IP. I say IPR. It featured Dr. Roya Ghafele, Lecturer at Oxford University and expert on IP perceptions, and formerly an economist at both the UN World Intellectual Property Organization and Organization for Economic Cooperation and Development; in conversation with Jim Singer, partner at the Pepper Hamilton law firm, a member of the firm's intellectual property practice group and publishes the IP Spotlight blog, and formerly an electrical engineer with an iconic oil firm. Over the hour, they discussed whether accounting rules and language hinder the monetization of intellectual property, or, in the alternative whether accounting -- due to its inability to measure intangible asset value -- is becoming progressively irrelevant. Here are the leftovers.
QUESTIONS: How have you handled the lumping of all IP and IPR into one set for common treatment in M&A transactions? I have been in-house IP counsel both on the selling side and buying side of private equity deals. I have consistently found the M&A folks to deem themselves as IP and IPR transfer experts who treated all types of assets (patents, TMs, copyright, trade secrets, know-how and collective company knowledge, etc.) as one and the same. Such treatment of intangible assets is highly detrimental and I was wondering how you counsel customers and clients against falling into such traps (for instance, pledging a security interest in all assets and representing absolutely clean title in those assets by a drop-dead date does not work for all types of IP and IPR in all countries). Does the switch to a more onerous term such as “tax liability” or “stamp duties” garner the requisite attention? Do you counsel a publicly traded company differently from a non-publicly traded company?
JIM SINGER: I find that it's important for IP counsel to be involved in the transaction early in the process, so that we can draft reps and warranties (and diligence questions) that make clear distinctions between the different types of IP needed. For example, attorneys with no IP background often ask for a common set of reps and warranties for "all IP owned or used in the business." Or, they want schedules listing "all IP used in the business." I find myself having to explain that (a) owned IP needs often needs to be analyzed in a manner that's different from licensed IP, and (b) it's not practical to list all IP, since every document that a company ever created is subject to copyright. So, in order to avoid last-minute changes, I try to get involved as early as possible so that the IP issues help drive the deal (rather than IP simply being an afterthought). Also, you raise a very good point about issues such as stamp duties and security interests in the international context. It's common that companies don't think of those concepts at all. It's important that the parties become educated about such issues so that they can consider how to address them as early as possible in the negotiations.
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