Transactional IP

Overview

Working closely with lawyers from Gibson Dunn’s other transactional practices, we provide critical insight into the complex IP issues that are often the driving factor behind corporate deals powering the modern information economy, including in connection with mergers, acquisitions, financings, strategic alliances, joint ventures and initial public offerings.

Our lawyers have extensive experience drafting and negotiating IP representations, warranties and covenants as well as licensing, cross-licensing and grant-back arrangements.  Members of the group work closely with our clients’ internal business teams to analyze and provide critical thinking and advice with respect to the intellectual property owned or licensed by target companies.  This serves to reveal and address material issues potentially affecting value propositions or other critical drivers of an underlying transaction, including:

• IP due diligence
• Licensing in and licensing out of IP rights
• Open-source licensing reviews
• Software audits
• Post-closing assignment filings

Gibson Dunn has extensive experience in all types of transactions involving intellectual property, including:

• Negotiation of IP transfer and licensing provisions
• IP representations and warranties and due diligence as part of M&A transactions, IPOs, and investment and financing transactions
• Purchase and sale of IP assets including domain names, trademarks, copyrights and patents
• Acquisition of IP assets in bankruptcy proceedings
• Licensing in and licensing out of intellectual property both within and without litigation

The Intellectual Property group has guided and counseled our clients through:

• Development and implementation of patent acquisition programs
• Formation of and participation in patent pools and research consortiums
• Protection of IP assets
• Evaluation of membership in patent defense funds and groups to purchase patent assets
• Evaluation of potential declarations of IP rights to standards-setting organizations
• The offsetting of risk through the sale of portions of potential collections pending appeal of patent damages awards
• Software audits from the Software and Information Industry Alliance (SIIA) and the Business Software Alliance (BSA), as well as from individual software providers
• Joint development and research collaboration agreements