For most Chief IP Counsel, a merger or acquisition can come out of left field and demand critical attention. Without the right internal structure to manage the processes required around Intellectual Property protection, it is critical for the IP department to employ the use of outside counsel to help manage these spikes.
Counsels must be sure to get all the facts and paint complete picture before bringing patent issues or concerns for M&A projects to the business team. Setting off alarm bells early can lead to reduced trust between leadership, and will reduce an IP Counsel’s ability to convey other concerns down the road.
On day one of an M&A project it is essential to do your due diligence and identify the necessary components you need to delegate. It is rare to find in-house IP Counsel who have the resources and time to tackle the M&A process. Knowing what you can and cannot handle in-house before getting started will reduce cost in the long run and allow you to identify concerns and problem areas ahead of time.
A great way to identify potential patent risks during an M&A process is having outside business units evaluate the acquisition or merger target. Outside counsel, research & development teams, and executive leaders can offer an objective review on patent risks and competing patents. Additionally, engaging expertise when you do not know the technology is a must.
“Work done in connection with an M&A deal, whether it’s understanding the acquired portfolio or any FTO issues, will be guided by the business drivers of the deal,” James Murtha, Associate Chief Intellectual Property Counsel, Becton Dickinson.