Serving the
Creative and Legal Communities
Closing and Post Closing IPConsiderations
Presented by: Randi L. Karpinia
Director, Intellectual Property Law
Motorola Solutions Inc.
M&A Year in a Deal Lecture Series
1 February 22, 2017
The challenge for the responsible intellectualproperty attorney once the merger oracquisition is completed is the seamlessintegration of the new and existing patentportfolios.
Closing and Post Closing IP Considerations
The Aftermath
2
It’s All About the People
Ownership Matters
Portfolio Integration and Portfolio Separation
Data Management, Documentation andRecordkeeping
Licensing
Brand Management
Closing and Post Closing IP Considerations
Overview
3
It’s All Aboutthe People
4
Closing and Post Closing IP Considerations
Each and every person you deal with is a potentialcustomer – happy or unhappy.
Each and every person in the acquired company has moreinformation than you do on how the existing business isactually run.
Honest and respectful communications are more likely tocreate smoother pathways for the exchange ofinformation.
Relationships matter: legal staff, inventing community,other party
Develop an integration plan for acquired outside counseland foreign agents
Closing and Post Closing IP Considerations
In a Nutshell - People
5
The Patent Attorney as a Teacher andMentor
Developing the Attorney/Client Relationship
Employee Retention
Reconciling Inventor Awards
Closing and Post Closing IP Considerations
Newly Acquired Inventing Community
6
Intellectual property basics
inventorship, public disclosure, documentcontrol and retention, export control, disclosurewriting
Corporation’s patent tools and processes
patent evaluation process and criteria, patentaward systems, patent tools and websites
Closing and Post Closing IP Considerations
Teacher & Mentor
7
Trust, understanding, shared goals
Listen, review, respond to all concerns,complaints, or questions
Professionalism
Build confidence
Enhances portfolio value
Closing and Post Closing IP Considerations
Attorney/Client Relationship
8
Document inventor contact info
Retention agreements and incentives
Cooperation from ex-employees
Closing and Post Closing IP Considerations
Employee Retention
9
Pre-acquisition vs. corporation
Employment Agreements
Financial Leveling
Pre-acquisition pays later
Pre-acquisition pays earlier
Benchmark awards
Ex-employee policies
Closing and Post Closing IP Considerations
Reconciling Inventor Awards
10
“New” Outside Counsel/Client Relationship
Internal Integration of Patent Portfolio
Transition plan
Status reports
Accurate database information
Documentation
Study previous work and practices
Closing and Post Closing IP Considerations
Newly Acquired Outside Counsel
11
Correspondence changes notices to:
All foreign counsel
Patent offices including PCT, USPTO
Provide firms with corporation policies andprocedures
Train and integrate firms into:
Billing systems
Docketing systems
Patent management databases
File sharing systems
Closing and Post Closing IP Considerations
Newly Acquired Outside Counsel
12
Practices of previous counsel
Check language used in assignments, oathsand declarations, claims, and specifications
Review practices used for reference citing andprior art submission methods
Review pre-acquisition foreign filing strategiesand techniques
Closing and Post Closing IP Considerations
Newly Acquired Outside Counsel
13
Ownership Matters
14
Closing and Post Closing IP Considerations
Coordinate closely with attorneys managing change incorporate entities for domestic and international entities
Allot time and money for resolution of these key issues
Check for impacts to ownership from non-traditionaltransactions including litigation judgments, securityinterests, corporate entity changes
Closing and Post Closing IP Considerations
In a Nutshell - Ownership Matters
15
Missing assignments
Incomplete chain of title
Security interests
Litigation judgments
Company buy-outs, name changes, ownership changesetc
Double conveyances – later one being moot
Closing and Post Closing IP Considerations
Ownership Considerations
16
Portfolio Integration andPortfolio Separation
17
Closing and Post Closing IP Considerations
Determine how acquired assets complement, extend, orreinforce existing assets
Utilize multiple patent valuation methods for most accurateassessment of portfolio
Don’t forget about unidentified acquired inventions
Conduct freedom to operate clearances
Closing and Post Closing IP Considerations
In a Nutshell - Portfolio
18
Understanding the Integrated Technology Portfolio
Valuation of Integrated Technology Portfolio
Acting on Unidentified Inventions
Patent prosecution evaluation and strategy
Competitors
Licensed or Jointly Owned Patent Assets
Closing and Post Closing IP Considerations
Portfolio Integration & Separation
19
Identify patent assets within technology
Determine how acquired assets complement, extend, orreinforce existing assets
Basis for:
future enforcement
new product development
standards participation
next generation research
Closing and Post Closing IP Considerations
Integrated Technology Portfolio
20
Patent valuation methods
Patent usage
Claim breadth and detectability
Patent quality
Uniqueness
Competing or existing technologies
Commercial value
Ability to protect
Closing and Post Closing IP Considerations
Valuation of Integrated Portfolio
21
Valuable additional patent application candidates
Review all invention disclosures for which a patentapplication was not filed pre-acquisition
Integrate un-reviewed invention disclosures within existingreview process
Integrate into patent committees
Product scrubs & advanced inventing sessions
Closing and Post Closing IP Considerations
Acting on Unidentified Inventions
22
Data Management,Documentation and
Recordkeeping
23
Closing and Post Closing IP Considerations
Get IT folks involved early as data management systemsmay not ‘talk’ effectively, resulting in garbled or misplacedrecords
Allocate some time and resources for active caseverification
Procedures and processes are not likely to have beenfollowed
Document clean-up will need the support of many existingemployees
Record retention periods between companies may be verydifferent
Document preservation notices for litigation matters mustbe verified quickly
Closing and Post Closing IP Considerations
In a Nutshell - Records
24
Docket Numbers
Paper Files
Electronic Documentation
Active Case Verification
Defective Documentation
Correspondence Management
Powers of Attorney
Annuity Management
Closing and Post Closing IP Considerations
Data Management,Documentation & Recordkeeping
25
Invention disclosure
References submitted
Related cases identified and references submitted
Executed assignment recorded
Oath/declaration - statutory
Formal drawings
Electronic copies of case documents
Closing and Post Closing IP Considerations
Active Case Verification
26
Drawings
Reconciliation of claim sets
Mapping multiple family members
Quality reviews
Prior art analysis
Prosecution history estoppel
Filing strategies
Closing and Post Closing IP Considerations
Prosecution
27
Licensing
28
Closing and Post Closing IP Considerations
Be aware of license termination dates
Be aware of restrictions on transfers
Question current personnel about possible conflictingownership claims
Closing and Post Closing IP Considerations
In a Nutshell - Licensing
29
Brand Management
30
Closing and Post Closing IP Considerations
Not all brands purchased will be retained
Right to use and sub-licensing must be clarified
Evaluate potential dilution through extended dual-uselicenses
Product marking matters
Closing and Post Closing IP Considerations
In a Nutshell - Brand Management
31