Practice Areas & Industries: Finnegan, Henderson, Farabow, Garrett & Dunner, L.L.P.

Practice/Industry Group Overview

Due diligence. Assess risks. Move forward with confidence.
In fast-moving, high-pressure mergers, acquisitions, partnering, and investment transactions, obtaining an accurate and comprehensive intellectual property evaluation is critical. The possible outcome of pending or potential litigation, the assignability of a company’s IP agreements, and the scope and ownership of IP rights are just some of the issues one must consider. This could mean assessing the strength of a single licensed patent or a thorough review of an entire portfolio.

Our deep understanding of varied technologies and mastery of IP law allow us to help companies react quickly to any issue that emerges during an IP transaction, to provide thoughtful and accurate answers to investors’ questions, and to craft contract terms that properly allocate risks. We deliver highly targeted and sophisticated analyses of the IP assets at issue that can help drive an equitable deal.

We have conducted successful due diligence on matters as complex as the Exxon–Mobil merger, and as focused as an analysis of in-license agreements of an innovative biotech start-up that was being considered for later round funding. Our size, technical background, and experience allow us to assemble and mobilize a well matched team that quickly identifies key issues, proposes options for mitigating risks, and outlines a strategy for strengthening our client’s bargaining position. Ideally, due diligence investigations are conducted at the onset of negotiations, allowing time for a reasoned analysis of the value of the IP portfolio and time for corrective action to address issues that may influence the deal.

Representative Engagements

Global patent analysis for renewable energy
A European company asked us to conduct IP due diligence on a technology it was looking to acquire. This renewable energy focused on the production of photovoltaic cells. In less than one month, we coordinated prior art searches in Europe and the United States, evaluated the search results containing over 500 U.S. and European patents, provided our opinion on freedom to operate with the target technology, and set up a system to monitor European and U.S. patents that may be granted in the future.

Protecting patents for a leader in medical devices
Finnegan has represented Boston Scientific in a variety of patent matters since 1995. The work has included prosecution of hundreds of U.S. and foreign patent applications in the medical device area. Finnegan has also represented Boston Scientific in interferences, due diligence investigations of target companies, product freedom-to-operate opinions, reissue applications, and European oppositions.