Practice Strengths

We perform all aspects of due diligence related to the transfer of intellectual property assets pursuant to stock and asset acquisitions, divestitures, mergers and licensing arrangements. We also handle negotiations with respect to such transfers of intellectual property (IP) and draft contractual language for inclusion in the sale agreement to protect the IP rights that our clients have in these transferred or acquired assets. We structure assignment documentation to transfer the IP assets involved in such transactions and record such documentation in the various patent and trademark offices world wide, the U.S. Copyright Office and other appropriate forums. We draft ancillary agreements in connection with the transfer of IP pursuant to an acquisition or divestiture, such as licenses, independent contractor agreements, joint development agreements and distribution agreements.

Leadership in Action

Due Diligence: IP-related due diligence for several multimillion-dollar acquisitions and a billion-dollar divestiture

Client: A multibillion-dollar global multi-industry company

Type of Matter: Intellectual property due diligence

Our Client's Challenge: Perform intellectual property-related due diligence, negotiate and draft transfer documents associated with several multimillion-dollar acquisitions and billion dollar divestitures in an efficient manner that would enable a seamless closing to occur simultaneously or consecutively in multiple transactions.

The Goal: Complete due diligence, draft related transactional documents and negotiate contentious topics in multiple acquisitions and divestitures and comply with targeted consecutive closing dates.

Our Strategy: Provide the client with listings of intellectual property assets to be acquired or divested, research and remedy chain of title issues with respect to such assets, review ancillary license and employment agreements, negotiate and draft appropriate representations and warranties for inclusion in the purchase agreements,  negotiate and draft licenses and transition agreements related to such transactions.

Results: Assisted the company in closing a billion-plus dollar divestiture and several multimillion-dollar acquisitions in 2005.

About our Intellectual Property Team

Our team of dedicated IP lawyers and patent agents has the diverse backgrounds and core strengths required to ensure that the full spectrum of domestic and international IP is considered in securing IP and formulating IP strategies. Members of our IP team have worked as engineers and in-house patent, trademark and copyright counsel for companies and agencies as diverse as Borg Warner, Capitol Records, DuPont, the United States Patent and Trademark Office (USPTO), the Justice Department (Civil Division, Intellectual Property) and the Federal Trade Commission (FTC).

Our team members also include adjunct IP law professors, columnists, the co-founder of the longest-running journal on computer technology and regular lecturers for the Zurich Institute of Technology, Georgetown University and George Mason University. In addition, our team members frequently speak and write for continuing legal education programs and industry events and are quoted in the press on emerging issues.

Baker Hostetler is a member of the International Trademark Association (INTA), American Intellectual Property Law Association (AIPLA), Intellectual Property Owners Association (IPO), Licensing Executive Society (LES), The International AntiCounterfeiting Coalition (IACC), International Licensing Industry and Merchandisers Association (LIMA), as well as numerous local and regional IP organizations.