5th Annual Summit Life Sciences IP Due Diligence

Cooley is a proud sponsor of the ACI Life Sciences Due Diligence Conference. The conference is a one-of-a-kind, interactive forum where top diligence leaders will discuss best practices and help you develop strategies for preparing for, conducting, and applying the results of the IP due diligence process. 

Feautured agenda items

9:30 am

One Size Does Not Fit All: Tailoring Life Sciences IP Due Diligence to the Transaction

Cooley Partner Chen Chen, PhD spoke during this session, to explain how mergers, acquisitions, and joint ventures are some of the most lucrative transactions in the life sciences space. Licensing and collaborating with other companies or universities can be profitable, assuming that you have properly conducted your IP due diligence and are using those results strategically when entering into the licensing deal or collaboration. The same due diligence checklist cannot be used for these transactions, and this session taught the unique diligence considerations for each.

Research and Research Grants, Collaboration and Licenses

• Exhaustive pre-due diligence intelligence that must be gathered before preparing to in-license or acquire a target
• Spotting the red flags in collaboration agreements and CROs
• Updated due diligence checklists for transactions involving government research grants
• Thoroughly reviewing and negotiating licensing considerations: exclusive or non-exclusive; field of use restrictions; terminal disclaimers; ownership of improvements; royalties; and termination provisions
• Determining inventorship and ownership with multiple inventors and assessing the risk of correlated litigation
• Considering the Bayh Doyle Act and recent march-in petitions

M&As and Joint Ventures

• Due Diligence leadership during the long and complicated merger and acquisitions process
• Analyzing potential trade secrets and avoiding contamination of your team
• Seeking anti-trust opinions, and knowing when and why
• Searching copyright, trademark, and other databases
• Considering the different acquisition, formation and contribution models and identifying the model best suited for each company’s goals
• Reviewing the next steps following the IP due diligence opinion

12:00 pm

The Freedom to Operate Opinion: Practical Advice and Winning Strategies for Innovation and Negotiation

Cooley Partner Sanya Sukduang spoke during this session on the importance of Integrating the Freedom to Operate (FTO) analysis in the product development cycle. Companies should make every effort to ensure that the commercialization of new products or services does not infringe any existing patents owned by third parties. The failure to do so could lead to dire, and expensive consequences. Topics of discussion included:

• Carefully defining the scope of the patent search strategies
• Understanding where and how patent infringement risks lie and how to manage those risks prior to commercialization
• Strategizing where the problematic claims support both broad and narrow constructions regarding their scope
• Assessing the strength of third-party blocking patents and drafting the necessary litigation opinion
• Triaging the essentials that outside counsel should present to in-house

For more information, please email Laura McAllister.