IP Transactions

Achour Law Firm advise clients on the full range of commercial contracts relating to the exploitation of Intellectual Property (IP) rights and IP transactions.

More than ever before, Intellectual Property rights take center stage in many corporate transactions. IP is a key asset not only for technology companies, but also for most corporations in traditional industries such as beverages, fashion, and cosmetics. IP identification, evaluation, and proper allocation are essential to the success of commercial IP transactions. A thorough due diligence as part of Mergers & Acquisitions (M&A), private equity investments, financings, strategic alliances, joint ventures, and other commercial transactions is essential to understanding the scope of the rights protecting products, services and brands, and the underlying Patents, copyrights, Trademarks, design rights, confidential processes, and ideas. Inadequate due diligence can result in overlooked and incorrectly valued IP and can leave undiscovered disputes over ownership or provenance of IP that is of critical importance to a transaction. 

We help you evaluate IP portfolios and allocate them properly between the parties in order to contribute to the success of your IP transactions. We can conduct due diligence of national and multinational IP portfolios during the compressed time frames of major transactions and can assist with appropriate allocation of IP between the parties. Precise IP allocation is essential in complex transactions in which both parties must exercise rights in the same IP. We collaborate with colleagues in M&A, finance, dispute resolution, licensing and technology transfer to find comprehensive solutions to issues that arise in the course of a transaction. 

The particular commercial advice we can provide to clients in IP transactions includes the following:

• Licensing, joint venture and collaboration documentation.
• Sale and other forms of disposal of IP rights including warranty protection.
• Distribution, agency, contract manufacture, supply, sponsorship and other commercial agreements for IP transactions.
• IP backed asset financing and taking security interests over IP assets including royalty monetisation agreements.
• IP due diligence and verification including of related agreements before IP transactions. 
• Antitrust risks in licensing, joint venture and non-compete arrangements including those related to the settlement of patent disputes.
• What happens when one party wants to get out of the arrangement and/or one party becomes bankrupt or insolvent.
• Standard form agreements for IP transactions. 

Licensing & Transfer

Intellectual Property rights are of enormous value when properly exploited. At the same time, inadequate commercial arrangements in IP transactions can lead to a poor return on investment and sometimes even the invalidation of the Intellectual Property itself.

Our firm concentrates on the commercialisation and exploitation of Intellectual Property rights via IP transactions. 

The licensing arrangements on which we advise involve a wide variety of technology. We also advise clients on the clearance of background rights, including rights arising from framework programs.

We are positioned to structure, draft, and negotiate agreements for the acquisition and commercialisation of Intellectual Property and technology. 

We fully understand the value of clients’ Intellectual Property and technology assets. In appropriate cases we can carry out due diligence for the purpose of verifying rights in the Intellectual Property at the heart of these IP transactions.

Outsourcing

Our integrated approach to outsourcing and experience in a range of industry sectors enable us to deliver advice that meets your strategic objectives in IP transactions. 

As we represent both customers and service providers in IP transactions, we understand the goals and perspectives of each of the parties in an outsourcing transaction. This understanding enables us to propose solutions that accommodate the needs of both parties to the difficult issues that arise in outsourcing negotiations. Clients in sectors such as e-commerce, life sciences and health care, insurance, manufacturing and supply, pharmaceuticals, technology, media and  telecommunications can ask for our advice during the entire outsourcing process, from service-provider selection through to contract drafts and negotiations.

Our firm will guide you through the heavily negotiated aspects of transactions: service levels and service credits, Intellectual Property ownership allocations, termination rights and termination fees, cross-border data transfers, workforce reductions and employee transfers, indemnification obligations, and limitations of liability.

We are also positioned to advise clients on issues peculiar to offshore outsourcing arrangements, such as tax planning, export control compliance, and allocating currency-exchange risks. Our firm can also help you enhance the value of outsourcing through gain-sharing arrangements, and setting up ancillary agreements for commercialising new Intellectual Property. In addition, we are well positioned to handle legal claims in outsourcing projects that fail.

Portfolio development

At critical stages in the development of your business, it is important to step back and assess the extent to which your Intellectual Property (IP) is protected. An expansion of your product range, or inadequate policies governing IP management, may leave your business with unregistered IP rights exposed to potential misuse. Potential buyers, investors, or strategic licensees may consider the protection of your rights to be inadequate. Likewise, your brand could be weakened in some territories by competitors’ activities or simply through a failure to maintain appropriate protections. 

We are dedicated to the practice of IP and can offer you practical advice on how best to develop and exploit IP assets in IP transactions. We are in position to conduct IP audits to evaluate clients’ IP portfolios, recommending steps to bolster them or make them more cost-efficient. Advice on the strength and value of IP assets can be pivotal in the context of a merger, acquisition, IP asset sale, or strategic licensing. 

In addition to developing defensive strategies, we advise clients on an array of offensive measures, taking up licensing discussions with their competitors. 

Privacy management

The compliance challenges and business risks related to personal and other sensitive data are significant and growing. With advances in technology, personal information is increasingly collected, stored, used, and shared. At the same time, the regulation of data use and security is increasing worldwide.

We are specialising in Privacy and Information Management. We assist clients with all of their compliance challenges, creating transfer agreements, drafting policies and contracts, and providing advice.

We are conversant with local regulations, affecting data transfers and regulating sectors that collect sensitive personal information. We play an important role in the development of public policy regarding the future regulation of privacy.

Trade secrets

Among the many forms of Intellectual Property tied up in your company, the most valuable is likely to be information that must remain confidential for the business to thrive: the composition of products; business and industrial processes; and customer and supplier relationships.

Protecting such confidential information or other trade secrets is no simple matter. Procedures should be in place to identify commercially important proprietary information. Strategies are needed to protect it and to prevent its misuse by third parties. Care needs to be taken when licensing or selling a trade secret, just as with other forms of Intellectual Property.

We are well placed to advise you on all aspects of protecting confidential information. We can help you draft employee agreements covering confidentiality and nondisclosure. We can formulate policies and practices to help prevent the theft of trade secrets by former, current, and future employees.  We can prepare agreements for the license or sale of industrial secrets.

Should litigation be unavoidable, we command the experience and industry knowledge to handle the relevant proceedings, whether heard in court or in arbitration. If necessary, we can seek an injunction to prevent the misuse of information or to recover it from third parties.

We also offer expert advice on :

• Trademarks
• Patents
• Copyright
• IP & Technology