Minnesota IP Law Association (MIPLA) Virtual Stampede

Maximizing Value When Acquiring or Divesting Patents for Assertion

May 19, 2021


John K. Harting


Deputy Chair, IP and Technology Litigation Group

Robins Kaplan LLP is pleased to participate in the Minnesota IP Law Association (MIPLA) Virtual Stampede taking place May 17-20, 2021, in conjunction with the MIPLA Annual Meeting taking place on May 20, 2021. On Wednesday, May 19, 2021, Ryan Schultz, John Harting and Jessica Gutierrez presented in a session titled, “Maximizing Value When Acquiring or Divesting Patents for Assertion.”

For those who invest in or own intellectual property assets, there are practical considerations that should be kept in mind regarding licensing terms to include, or avoid, when either acquiring IP assets or spinning out new IP-driven entities. In this presentation, attendees will gain a litigator’s perspective on how to preserve and maximize value in these transactions. Presenters will discuss best practices for provisions related to topics such as 1) standing, including revenue sharing provisions, rights retained by prior IP holder, and scope of prior commitments; 2) damages, including prior offers and licenses; 3) participation by inventors; and 4) how the acquisition documents may be used in litigation, including concrete steps that can be taken to maximize the value of such documents through the use of prophylactic language.