Practice Areas & Industries: Baker & Hostetler LLP

Practice/Industry Group Overview

We perform all aspects of due diligence relating 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 United States 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, to 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 have 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 United States International Trade Commission (ITC), 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.

About Baker Hostetler

Baker Hostetler lawyers help clients establish, maintain and protect market-leading positions across the United States and around the world. We offer clients the strength of 600+ lawyers in a full range of practices, a unique geographic platform including both the coasts and the center of the country, a deep knowledge of industry issues, and a 90-year track record of excellence and achievement.

For more information on our Intellectual Property Due Diligence practice:

National Contact

John H. Weber
202.861.1526
jweber@bakerlaw.com

Cincinnati

William Appleton
513.929.3403
wappleton@bakerlaw.com

Cleveland

Thomas H. Shunk
216.861.7592
tshunk@bakerlaw.com

Deborah A.Wilcox
216.861.7864
dwilcox@bakerlaw.com

Columbus

Rosanne T. Yang
614.462.2684
ryang@bakerlaw.com

Costa Mesa

George T. Mooradian
714.966.8800
gmooradian@bakerlaw.com

Denver

Raymond L. Sutton
303.764.4103
rsutton@bakerlaw.com

Houston

Lisa H. Pennington
713.646.1303
lpennington@bakerlaw.com

Los Angeles

James E. Doroshow
310.442.8818
jdoroshow@bakerlaw.com

C. Dennis Loomis
310.442.8865
dloomis@bakerlaw.com

New York

Gerald J. Ferguson
212.589.4238
gferguson@bakerlaw.com

G. Thomas Ball
407.649.4004
tball@bakerlaw.com

Washington, DC

Gary J. Rinkerman
202.861.1699
grinkerman@bakerlaw.com

Kenneth J. Sheehan
202.861.1682
ksheehan@bakerlaw.com