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Serving the

Creative and Legal Communities

Closing and Post Closing IPConsiderations

Presented by: Randi L. Karpinia

Director, Intellectual Property Law

Motorola Solutions Inc.

M&A Year in a Deal Lecture Series

1 February 22, 2017

The challenge for the responsible intellectualproperty attorney once the merger oracquisition is completed is the seamlessintegration of the new and existing patentportfolios.

Closing and Post Closing IP Considerations

The Aftermath

2

It’s All About the People

Ownership Matters

Portfolio Integration and Portfolio Separation

Data Management, Documentation andRecordkeeping

Licensing

Brand Management


Overview

3

It’s All Aboutthe People

4


Each and every person you deal with is a potentialcustomer – happy or unhappy.

Each and every person in the acquired company has moreinformation than you do on how the existing business isactually run.

Honest and respectful communications are more likely tocreate smoother pathways for the exchange ofinformation.

Relationships matter: legal staff, inventing community,other party

Develop an integration plan for acquired outside counseland foreign agents


In a Nutshell - People

5

The Patent Attorney as a Teacher andMentor

Developing the Attorney/Client Relationship

Employee Retention

Reconciling Inventor Awards


Newly Acquired Inventing Community

6

Intellectual property basics

inventorship, public disclosure, documentcontrol and retention, export control, disclosurewriting

Corporation’s patent tools and processes

patent evaluation process and criteria, patentaward systems, patent tools and websites


Teacher & Mentor

7

Trust, understanding, shared goals

Listen, review, respond to all concerns,complaints, or questions

Professionalism

Build confidence

Enhances portfolio value


Attorney/Client Relationship

8

Document inventor contact info

Retention agreements and incentives

Cooperation from ex-employees


Employee Retention

9

Pre-acquisition vs. corporation

Employment Agreements

Financial Leveling

Pre-acquisition pays later

Pre-acquisition pays earlier

Benchmark awards

Ex-employee policies


Reconciling Inventor Awards

10

“New” Outside Counsel/Client Relationship

Internal Integration of Patent Portfolio

Transition plan

Status reports

Accurate database information

Documentation

Study previous work and practices


Newly Acquired Outside Counsel

11

Correspondence changes notices to:

All foreign counsel

Patent offices including PCT, USPTO

Provide firms with corporation policies andprocedures

Train and integrate firms into:

Billing systems

Docketing systems

Patent management databases

File sharing systems



12

Practices of previous counsel

Check language used in assignments, oathsand declarations, claims, and specifications

Review practices used for reference citing andprior art submission methods

Review pre-acquisition foreign filing strategiesand techniques



13

Ownership Matters

14


Coordinate closely with attorneys managing change incorporate entities for domestic and international entities

Allot time and money for resolution of these key issues

Check for impacts to ownership from non-traditionaltransactions including litigation judgments, securityinterests, corporate entity changes


In a Nutshell - Ownership Matters

15

Missing assignments

Incomplete chain of title

Security interests

Litigation judgments

Company buy-outs, name changes, ownership changesetc

Double conveyances – later one being moot


Ownership Considerations

16

Portfolio Integration andPortfolio Separation

17


Determine how acquired assets complement, extend, orreinforce existing assets

Utilize multiple patent valuation methods for most accurateassessment of portfolio

Don’t forget about unidentified acquired inventions

Conduct freedom to operate clearances


In a Nutshell - Portfolio

18

Understanding the Integrated Technology Portfolio

Valuation of Integrated Technology Portfolio

Acting on Unidentified Inventions

Patent prosecution evaluation and strategy

Competitors

Licensed or Jointly Owned Patent Assets


Portfolio Integration & Separation

19

Identify patent assets within technology

Determine how acquired assets complement, extend, orreinforce existing assets

Basis for:

future enforcement

new product development

standards participation

next generation research


Integrated Technology Portfolio

20

Patent valuation methods

Patent usage

Claim breadth and detectability

Patent quality

Uniqueness

Competing or existing technologies

Commercial value

Ability to protect


Valuation of Integrated Portfolio

21

Valuable additional patent application candidates

Review all invention disclosures for which a patentapplication was not filed pre-acquisition

Integrate un-reviewed invention disclosures within existingreview process

Integrate into patent committees

Product scrubs & advanced inventing sessions


Acting on Unidentified Inventions

22

Data Management,Documentation and

Recordkeeping

23


Get IT folks involved early as data management systemsmay not ‘talk’ effectively, resulting in garbled or misplacedrecords

Allocate some time and resources for active caseverification

Procedures and processes are not likely to have beenfollowed

Document clean-up will need the support of many existingemployees

Record retention periods between companies may be verydifferent

Document preservation notices for litigation matters mustbe verified quickly


In a Nutshell - Records

24

Docket Numbers

Paper Files

Electronic Documentation

Active Case Verification

Defective Documentation

Correspondence Management

Powers of Attorney

Annuity Management


Data Management,Documentation & Recordkeeping

25

Invention disclosure

References submitted

Related cases identified and references submitted

Executed assignment recorded

Oath/declaration - statutory

Formal drawings

Electronic copies of case documents


Active Case Verification

26

Drawings

Reconciliation of claim sets

Mapping multiple family members

Quality reviews

Prior art analysis

Prosecution history estoppel

Filing strategies


Prosecution

27

Licensing

28


Be aware of license termination dates

Be aware of restrictions on transfers

Question current personnel about possible conflictingownership claims


In a Nutshell - Licensing

29

Brand Management

30


Not all brands purchased will be retained

Right to use and sub-licensing must be clarified

Evaluate potential dilution through extended dual-uselicenses

Product marking matters


In a Nutshell - Brand Management

31

THANK YOU!!!

Contact: [email protected]

32


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