Are Your Corporate Transactional Attorneys Harming Your Future IP Strategy?

By Raymond Millien on January 24, 2014

Entering into a corporate transaction without a careful review of the intellectual property (IP) involved can have negative consequences on an enterprise’s future IP strategy. This is especially true when IP owners do not adequately supervise the corporate attorneys who are preparing the “customary” documents for a merger, acquisition, joint venture formation, equity investment, bridge loan or any other type of corporate transaction.   Such adequate supervision involves a careful review of the “deal docs” for IP issues.  Why?  Because the corporate attorneys may often not appreciate or be aware of the unintended consequences of the language typically employed in such corporate transactional agreements, an IP-focused review is prudent to avoid such unintended consequences.

Invariably, a part of drafting (and negotiating) the deal docs involves preparing one or more IP-related schedules.  That is, the specific patents, trademarks, copyrights, trade secrets, know-how and/or software involved in a transaction will be listed in one or more schedules.  These schedules are then referred to in the transaction (i.e., “main”) agreement as the IP being licensed, acquired, divested, pledged, contributed or exempted – depending, of course, on the particular transaction.

Thus, the potential dangers are at least four-fold:

  1. Being over-inclusive in listing certain IP assets in a schedule;
  2. Being under-inclusive in the listing of certain IP assets in a schedule;
  3. Being imprecise in the definition of certain IP assets in the main agreement or a schedule; and
  4. Being imprecise, in the main agreement, as to what occurs (post-closing) to the certain IP assets listed in a schedule.

Of the many cases that illustrate the above concerns, one in particular decided by the U.S. Court of Appeals for the Federal Circuit[1] is especially illuminating.  The fact pattern of the case was as follows:

  • Company A enters into a limited partnership with Company B
  • As part of the transaction, Company A transfers tangible and intangible assets to Company B via a “Contribution Agreement”
  • The Contribution Agreement defined the transferred assets as including patents, except “any and all patents and patent applications related to any pending litigations involving Company A.”
  • Section 4.21 of the Contribution Agreement then stated that “there are no actions pending or threatened by or against, or involving Company A except as set forth in Schedule 4.21.
  • Five years later, Company B sought to enforce certain patents they assumed were obtained from Company A (purportedly via the Contribution Agreement) against Company C.

In the lawsuit, Company C used the defense that Company B did not own the patents-in-suit and thus could not properly enforce them!  Therefore, Company B was forced to prove that the patents-in-suit they sought to enforce were indeed transferred by the Contribution Agreement, and were not part of the exception (i.e., the patents=in-suit did not fall within the exception of “any and all patents and patent applications related to any pending litigations involving Company A”).  Seems easy, right?  Wrong!

It turns out that Schedule 4.21 was never completed and there was no record of what actual litigations Company A was involved in five years earlier when the Contribution Agreement was executed!  Even if there was a record of what litigations were active five years earlier, the phrase “related to” was not precisely defined in the Contribution Agreement!  Given these facts, the trial court was forced to dismiss the lawsuit.  The Federal Circuit affirmed that decision on appeal.

Moral of the story: there are no routine IP provisions in corporate transactional documents!  Care must be taken to make sure that the IP that is being licensed, acquired, divested, pledged, contributed or exempted is clearly identified, and the deal doc’s language creates no unintended consequences that may negatively affect the involved parties’ future IP strategy.


[1] Tyco Healthcare Group v. Ethicon Endo-Surgery, 2008-1269, – 1270 (Dec. 7, 2009).

The Author

Raymond Millien

Raymond Millien is a prominent intellectual property attorney who holds a BS from Columbia University and a JD from George Washington University School of Law.

In 2009, 2011 and 2012 Mr. Millien was recognized as one of the World’s 300 Leading IP Strategists by IAM Magazine.

Mr. Millien currently serves as chief IP counsel for General Electric’s $18B Oil & Gas business (@ge_oilandgas), which has 45,000 employees in over 100 countries and 7 global R&D centers. He is responsible for driving the global IP strategy and managing a team of professionals dedicated to intellectual property mining, protection and licensing.

Previously, Mr. Millien was General Counsel of Ocean Tomo, LLC, and Vice President and IP Counsel at The American Express Company. Mr. Millien has also practiced law in the Washington, DC offices of: PCT Law Group, PLLC; DLA Piper US LLP; and Sterne, Kessler, Goldstein & Fox PLLC.

Connect with Mr. Millien:

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PLEASE NOTE: Mr. Millien’s articles reflect his current views as of the time the article was written. His personal views should not be necessarily attributed to his former, current or future employers, or their clients.

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There are currently 1 Comment comments.

  1. Anon January 24, 2014 10:39 am

    Great advice.

    I would extend it to any type of ‘joint venture’ or even informal workshare agreements. I personally had experience in a previous life in which a business unit manager negotiated completely on his own the giving away of engineering ownership rights to the client.

    He was most unhappy that I quashed that in my role as the centralized engineering manager. Even before I embarked on my legal career, I recognized the importance of IP and in particular the ownership of my centralized engineers’ IP rights were not ‘owned’ by the business unit manager. I was fortunate in my case to have been alerted to the attempt in time to stop it, thus avoiding any future legal battles.