IP Due Diligence

Maximizing the value and enforceability of IP assets

Industry leaders rely on Dechert to provide comprehensive strategic guidance for navigating the complexities of global asset protection and commercialization. Our integrated due diligence team works across jurisdictions, combining sophisticated IP expertise with a pragmatic commercial perspective to maximize and protect our clients’ intellectual property wherever they do business.

We recognize that our assessments are critical to our clients’ decisions on potential investments, acquisitions, mergers, joint ventures, co-developments and licensing agreements, so we are committed to providing all of the information required to make an informed decision while also being sensitive to cost considerations.

Our global team includes lawyers with advanced scientific degrees who have performed numerous IP diligence projects on behalf of U.S. and foreign companies. We investigate beyond the obvious IP issues to detect potential problems or business issues that could impact valuation.

Deal assessments

We perform IP due diligence assessments of deals for pre-public startups, large publicly traded companies, private equity and venture capital investors, issuers of commercial papers and underwriters. We counsel clients on choosing the deal structure that will maximize the value and enforceability of their IP assets. 

Our IP diligence includes assessing patent, trademark and trade secret portfolios, reviewing license agreements, confirming IP ownership, assessing the adequacy of IP disclosures under securities laws, evaluating the strength and value of lead programs and developed and clinical stage products, assessing trade secret protection programs and the management of privacy issues and appraising R&D programs.

Portfolio reviews

In conducting portfolio reviews for companies considering acquiring or investing in intellectual property, we identify potential problems concerning the targeted IP, using knowledge we then leverage to negotiate more favorable deals and to recommend value-enhancing solutions. We also assist clients in identifying, assessing and pursuing funding options.

Mergers and acquisitions

Working together with members of Dechert’s leading corporate and M&A practices, we provide comprehensive IP support for mergers and acquisitions and other corporate transactions, including deal structuring, IP due diligence, and negotiation of relevant IP terms and agreements.

  • Amkor Technology, Inc., a U.S.-headquartered, global supplier of outsourced semiconductor interconnect services, in its joint venture and license agreements with Toshiba Corporation to provide semiconductor assembly and final testing services in Japan.
  • Bicycle Therapeutics in its US$424 million collaboration with Bioverativ, a recent Biogen spin-off, covering potential treatments for hemophilia and sickle cell disease using Bicycle’s bicyclic peptide platform.
  • Ipsen, a global specialty-driven pharmaceutical group, in its US$1 billion acquisition of the global oncology assets from Merrimack Pharmaceuticals, including its key marketed product ONIVYDE® (irinotecan liposome injection) for the treatment of patients with metastatic adenocarcinoma of the pancreas after disease progression following gemcitabine-based therapy. Under the terms of the agreement, Ipsen will gain exclusive commercialization rights for the current and potential future ONIVYDE indications in the U.S., as well as the current licensing agreements with Shire for commercialization rights ex-U.S. and PharmaEngine for Taiwan. The transaction also includes Merrimack’s commercial and manufacturing infrastructure, and generic doxorubicin HCl liposome injection.
  • Kyn Therapeutics on patent strategy and diligence in its global strategic collaboration with Celgene Corporation. 
  • Merck KGaA in a licensing agreement with Vertex Pharmaceuticals for the worldwide development and commercialization of four research and development programs for the treatment of cancer. As part of the agreement, Merck KGaA will license two clinical-stage programs targeting DNA damage and repair, along with two additional novel pre-clinical programs. Vertex will receive an upfront payment of US$230 million, in addition to royalties on future net sales. Merck KGaA will assume full responsibility for the development and commercialization of all the programs.
  • Nimbus Therapeutics in devising and implementing a patent portfolio strategy resulting in a strategic immunology alliance with Celgene Corporation to develop programs for patients with autoimmune disorders.
  • Padlock Therapeutics in an IP due diligence and negotiations with GlaxoSmithKline resulting in exclusive license to GSK’s proprietary PAD4 inhibitors to kick off Padlocks’ novel approach to treating inflammatory disorders. After Dechert developed and implemented Padlock’s internal patent strategy, the company was acquired by Bristol-Myers Squibb for US$600 million.
  • Royalty Pharma in performing IP due diligence in the sale of Ligand Pharmaceutical’s Promacta®-related intellectual property rights licensed to Novartis, including the royalty stream on worldwide net sales of Promacta® to Royalty Pharma for US$827 million in cash.
  • Multiple venture firms in IP diligences resulting in the creation of numerous new pharmaceutical and biotech companies.