IP Transactions

Frequently, clients acquire a company or a technology from another company, where the true value of the acquisition derives from the revenue and market share attributable to products that are protected by intellectual property. A proper IP due diligence analysis will reveal potential minor or much more serious defects in the property rights that you are buying or selling, as well as threats from intellectual property held by competitors. Monetization questions regarding intellectual property are often at the core of these transactions: What are you really buying (or selling)? Do you really want to make this investment in the face of a competitor’s existing IP portfolio? Regardless of the magnitude, the answers to these questions can and typically should be leveraged in the negotiation, whether to procure a reduction in price or some other concession.

Sometimes the analysis will reveal problems that can and should be fixed — right away. Our attorneys offer diverse scientific and engineering backgrounds and decades of expertise in performing due diligence risk assessments. A number of our partners have served in prominent in-house positions, so we understand the decision process that you’re going through. We are able to match attorneys with the appropriate scientific or engineering background to the challenge confronting you and your organization. We are also known for exceptional negotiation tactics that often result in favorable and relationship affirming results for our client.

Any issues that we identify allow you to reconsider the transaction, negotiate into the transaction contingency provisions to ensure the protection of your investment, and/or seek a better deal. We see many instances, particularly in deals for which we were not involved and unfortunately after the deal was inked, that the IP due diligence assessment was carried out only superficially and was limited, creating serious and expensive problems going forward.

At Harness IP, we have partners who focus primarily on IP due diligence assessments. They spend substantial amounts of their time performing such analyses and have developed tools to assess IP portfolios. This approach enables us to perform more thorough and effective assessments for our clients. Moreover, our substantial experience in this area fosters better efficiency throughout the process, which often saves both time and money. In addition, we often work with general practice firms that handle the non-intellectual property aspects of a deal, and we are greatly appreciated for our ability to work constructively as a seamless team.

IP agreements take various forms. They are often directed to patents, but also routinely involve trademarks, copyrights and trade secrets. Typical agreements include licenses, purchase agreements, research agreements, or joint venture/joint development or cooperation agreements. While these types of agreements have some similar contractual provisions, there are important differences that require consideration of niche or specialized provisions to fully safeguard your interests.

Harness IP lawyers possess considerable knowledge regarding each type of agreement. We understand the nuances and subtleties of different types of IP transactions, and we are prepared to negotiate them to your advantage. Beyond a mere understanding of the terms and concepts involved, we also know how to communicate with parties on the other side of the transaction in order to effectively negotiate the deal.  And we understand the business realities behind the deal. We understand that a successful business relationship is not simply words on paper — it is the result of a thoughtful and well-designed relationship for which the agreement is simply a road map.

There is an art to negotiating favorable deals without offending the other side. Harness IP is known for lawyers who are immediately likeable, establish instant credibility and foster a cooperative atmosphere from the start. Our attorneys understand both negotiation and diplomacy, and we seek to leverage our client’s position to gain the advantage. Simply, we do the job right.

We deliver practical guidance pertaining to IP transactions in Europe, Asia, South America and beyond. Whether we are negotiating the terms of the deal or addressing the legal or business risks inherent in such transactions, our hands-on experience in executing a broad array of international agreements illustrates our unique ability to overcome the hurdles and complexities of global commercial initiatives. We not only understand the laws, we understand the realities of business environments that may be much different than you are accustomed to.

We know how to do business in Hong Kong and the People’s Republic of China (PRC). Our attorneys are frequently involved in advising U.S. based companies buying assets from PRC businesses. We have advised on transactions ranging from licensing agreements to transferring technology in or out of the PRC. Doing business in the PRC is significantly different from commerce in Europe or even other parts of Asia. We understand how the court system works in China, and how it affects the deal at hand. We work with our clients on potential infringement risks at the border and possible importer/exporter rate violations, as well as address ITC matters as needed.

Our practical experience with the Chinese allows us to advise on what works and does not work when doing business in the PRC. We understand the customs, habits and business practices in China. We know how to “pressure test” your deal by including insights that may not be considered by inexperienced counsel. We make sure that all of the assets and deal participants are identified up front and included within the scope of the transaction.