Intellectual Property Assets in Mergers and Acquisitions

459 Pages·2001·1.27 MB·English

by  Lanning Bryer

INTELLECTUAL PROPERTY
ASSETS IN MERGERS
AND ACQUISITIONS
Editors
Lanning Bryer
Ladas & Parry
New York, New York
Melvin Simensky
Visiting Scholar in Intellectual Property Law
New York Law School
JOHN WILEY & SONS, INC.

INTELLECTUAL PROPERTY
ASSETS IN MERGERS
AND ACQUISITIONS
Dedication
To Stuart, who has the best business instincts but also the largest heart; to Nicole and Joseph,
who are always fun and wise; and to Van, who is the true academic of the family.
—Lanning G. Bryer
For my beautiful wife for being there for me.
—Melvin Simensky
Wiley Intellectual Property Series
Early-Stage Technologies:Valuation and Pricingby Richard Razgaitis
Edison in the Boardroom:How Leading Companies Realize Value from Their Intellectual Assetsby
Julie L. Davis and Suzanne S. Harrison
From Ideas to Assets:Investing Wisely in Intellectual Propertyby Bruce Berman
Intellectual Property Assets in Mergers and Acquisitionsby Lanning Bryer and Melvin Simensky
Intellectual Property in the Global Marketplace,Volume 1:Valuation,Protection,Exploitation,and
Electronic Commerce,Second Editionby Melvin Simensky,Lanning Bryer,and Neil J. Wilkof
Intellectual Property in the Global Marketplace,Volume 2:Country-by-Country Profiles,Second
Editionby Melvin Simensky,Lanning Bryer,and Neil J. Wilkof
Intellectual Property Infringement Damages:A Litigation Support Handbook,Second Editionby
Russell L. Parr
Intellectual Property:Licensing and Joint Venture Profit Strategies,Second Editionby Gordon V.
Smith and Russell L. Parr
Licensing Intellectual Property:Legal,Business,and Market Dynamicsby John W. Schlicher
Patent Strategy:The Manager’s Guide to Profiting from Patent Portfoliosby Anthony L. Miele
Profiting from Intellectual Capital:Extracting Value from Innovationby Patrick H. Sullivan
Technology Licensing:Corporate Strategies for Maximizing Valueby Russell L. Parr and Patrick H.
Sullivan
Technology Management:Developing and Impelementing Effective Technology Licensing Programs
by Robert C. Megantz
Trademark Valuationby Gordon V. Smith
Valuation of Intellectual Property and Intangible Assets,Third Editionby Gordon V. Smith,Russell
L. Parr
Value-Driven Intellectual Capital:How to Convert Intangible Corporate Assets Into Market Value
by Patrick H. Sullivan
Technology Management:Developing and Implementing Effective Technology Licensing Programs
by Robert C. Megantz
INTELLECTUAL PROPERTY
ASSETS IN MERGERS
AND ACQUISITIONS
Editors
Lanning Bryer
Ladas & Parry
New York, New York
Melvin Simensky
Visiting Scholar in Intellectual Property Law
New York Law School
JOHN WILEY & SONS, INC.
Copyright ©2002 by Lanning G. Bryer and Melvin Simensky. All rights reserved.
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ABOUT THE EDITORS
LANNING G. BRYER
Lanning G. Bryer is a Partner in the New York office of Ladas & Parry and is Director of
the firm’s Mergers,Acquisitions,and Licensing Group. Mr. Bryer is an active committee
member of several intellectual property organizations,including the Trademark Licensing
Committee of Licensing Executive Society (United States and Canada) and the Editorial
Board of The Trademark Reporter. He recently served on the International Editorial Board
of The International Trademark Association (formerly the U.S. Trademark Association)
and currently serves as co-chairman of The International Annual Review. Mr. Bryer has
written and lectured extensively on foreign trademark practice and commercial transac-
tions involving the acquisition,financing,and licensing of intellectual property. Mr. Bryer
is coauthor and coeditor of a treatise titled Worldwide Trademark Transfersand the two-
volume John Wiley & Sons treatise titled Intellectual Property in the Global Marketplace.
He is a graduate of Johns Hopkins University and Hofstra University School of Law.
MELVIN SIMENSKY
Melvin Simensky is Visiting Scholar in Intellectual Property Law at New York Law
School. Prior to this engagement,he was a partner at several law firms where he both
counseled and litigated trademark,copyright,advertising,and entertainment law mat-
ters. Mr. Simensky specializes in the intellectual property aspects of commercial trans-
actions involving both mergers and acquisitions and financings. Mr. Simensky was
previously adjunct professor of law at New York University School of Law,where he
taught a graduate school seminar on the intellectual property aspects of the entertain-
ment business. He is formerly a columnist on entertainment and intellectual property
law issues for the New York Law Journal. Mr. Simensky has been on the Board of Edi-
tors of The Trademark ReporterandCopyright Worldand has been an expert witness
on U.S. intellectual property law in numerous domestic and foreign court proceedings.
Mr. Simensky is coauthor of both a five-volume treatise titled Entertainment Law as
well as a casebook of the same name. Mr. Simensky has published many articles and
has lectured at numerous conferences on intellectual property and entertainment law.
He is a graduate of Yale University and New York University School of Law.
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ABOUT THE CONTRIBUTORS
Benedict BirdandAnna Carboniare partners and Deborah Lincolnis a consultant in the international
law firm of Linklaters & Alliance. They are all based in its Intellectual Property and Technology
Department in London. They have been assisted in writing this chapter by Steven Altham and Brian
Sher,both associates in the EU/Competition Department of Linklaters & Alliance,and by their conti-
nental colleagues,Patrick Rignell based in Paris and Markus Deck and Jiri Philippi based in Cologne.
Sheldon Burshteinis a partner of Blake,Cassels & Graydon LLP,and practices in the Intellectual
Property Group in the Toronto,Canada,office. He is a member of the Bar of Ontario and is registered
as a professional engineer in Ontario. He is also a patent agent and a trademark agent,and he has an
engineering degree as well as civil law and common law degrees from McGill. He is certified as a
Specialist in Intellectual Property (Patent,Trade-mark and Copyright) Law by the Law Society of
Upper Canada.
Andrew W. Carteris a managing director of InteCap,Inc.,the largest consulting firm in the coun-
try that focuses on the economic,strategic,and valuation issues surrounding intellectual property. He
assists clients with their intellectual property licensing programs and is frequently a damages expert
witness in patent infringement lawsuits. He is a licensed CPA and holds an MBA in Business Policy
and a BS in Chemical Engineering.
Marie-Eve Coteis a lawyer with Leger Robic Richard,Lawyers,and Robic,Patent & Trademark
Agents, Business Law. Her practice is mainly focused in commercial and corporate law, which
includes the negotiating and drafting of commercial agreements,namely mergers and acquisitions,
reorganizations,and shareholder and partnership agreements. She is also developing an expertise in
due diligence. She also practices in the commercial fields of intellectual property, particularly the
negotiation and drafting of license agreements,distribution agreements,transfer of technology,and
related agreements.
Christian Danisis a lawyer with Leger Robic Richard,Lawyers,and Robic,Patent & Trademark
Agents,Commercial and Corporate Law. His practice focuses mainly on the negotiating and drafting
of commercial agreements, including mergers and acquisitions, reorganizations, and shareholder
agreements,as well as the commercial aspects of intellectual property,with an emphasis on licensing,
transfers of technology,and research and development agreements.
Patrick A. Gaughanis president of Economatrix Research Associates,Inc.,an economic and finan-
cial consulting firm,located on Wall Street,that analyzes damages and conducts valuations for liti-
gation purposes. He is a professor of economics and finance at Fairleigh Dickinson University and has
authored numerous publications,including Mergers,Acquisitions and Corporate Restructurings.
Louis-Pierre Gravelle,is a patent agent and lawyer with Leger Robic Richard,Lawyers,and Robic,
Patent & Trademark Agents,Intellectual Property Law. His practice focuses on patent law,specifi-
cally on drafting and prosecuting patent applications,particularly in the telecommunications field. He
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ABOUT THE CONTRIBUTORS vii
also handles infringement,validity,and patentability opinion and is involved in technology transfer,
particularly in due diligence matters. He is a member of the Quebec Bar Association as well as of the
Intellectual Property Institute of Canada.
Tira Greeneis an international lawyer specializing in intellectual property law as well as legislative
reform and the drafting of intellectual property law for developing countries. She currently works as
an independent consultant and also undertakes projects on behalf of the World Intellectual Property
Organization.
Glenn Gundersenis a partner at Dechert in Philadelphia,where he has practiced since graduating
from the University of Virginia School of Law in 1980. He is the author of the book Trademark
Searching:A Practical and Strategic Guide to the Clearance of New Marks,the second edition of
which was published by the International Trademark Association in 2000. He is a frequent speaker on
trademark,copyright,and other intellectual property issues for the major organizations in the IP field,
including the American Bar Association,International Trademark Association,American Intellectual
Property Law Association,and Practicing Law Institute,and has written numerous articles for the
National Law Journaland other publications.
William M. Hebereris an attorney with Hall Dickler Kent Goldstein & Wood LLP in New York. He
practices in the areas of intellectual property,advertising,marketing,and entertainment law.
Thomas G. Jacksonis a partner in the law firm of Phillips Nizer Benjamin Krim & Ballon LLP. He
is a member of the Clayton Act,Section 7,Intellectual Property and Internet Committees of the Section
of Antitrust Law of the American Bar Association,a past member of the Antitrust and Trade Regula-
tions Committee of the Association of the Bar of the City of New York and past chair of the Technol-
ogy in the Courts subcommittee of the Federal Courts Committee of the Federal Bar Council.
Panagiota (Betty) Koutsogiannisis a lawyer with Leger Robic Richard,Lawyers,and Robic,Patent
& Trademark Agents,Business Law. Her practice focuses on commercial aspects of intellectual prop-
erty and technology transfers,license agreements,research and development agreements,and joint
ventures. She also practices in other fields of commercial and corporate law,such as mergers and
acquisitions,and has developed a particular expertise in due diligence and audits in the higher tech
sectors. She is a member of various organizations such as the Licensing Executives Society (USA and
Canada),Inc.,and the Information,Telecommunications and Intellectual Property Section (Quebec
Division) of the Executive Committee of the Canadian Bar Association.
Robert B. Lamb isa clinical full professor at New York University’s Stern School of Business. He
previously taught at Wharton and Columbia. He has published a number of books on corporate strat-
egy,mergers and acquisitions,and public finance. He has also published four chapters in Intellectual
Property in the Global Marketplace, dealing with Financial Valuations of Intellectual Property in
Financial Transactions. Professor Lamb is a consultant to major financial institutions,corporations
and to the US Government. He has often been quoted in the Wall Street Journal,and other business
media.
Michael Lasinskiis a managing director at InteCap,Inc.,a professional services firm focused on IP
management issues. His focus is on IP valuation and related issues in licensing,sale,merger,acqui-
sition,and tax-related transactions. Prior to joining InteCap,Inc.,he was with Coopers & Lybrand
(now PricewaterhouseCoopers) and Ford Motor Company. He holds both an MBA and BSEE from
the University of Michigan,is a licensed CPA in the state of Illinois,and is co-chairman of the Valu-
ation and Taxation Committee of the Licensing Executives Society.