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.

Maximizing the value and enforceability of IP assets

AVEO Oncology on the patent strategy and IP diligence in its US$566 million definitive agreement with LG Chem to acquire AVEO for $15.00 per share. The combination of LG Chem’s Life Sciences division and AVEO is expected to create a global oncology organization with a robust portfolio of innovative products supported by full capabilities from discovery to clinical, biologics manufacturing and U.S. commercialization.
Bicycle Therapeutics, a clinical-stage biopharmaceutical company, in its up to US$1.7 billion strategic collaboration with Novartis to discover, develop and commercialized Bicycle® Radio-Conjugates for multiple oncology targets.
Brickell Biotech, a clinical-stage pharmaceutical company, on the IP diligence and negotiation of IP terms in its US$320 million acquisition of an autoimmune, inflammatory program from South Korean drug discovery company Voroni.
Kymera Therapeutics in its up-to-US$2 billion multi-program, strategic collaboration with French pharmaceutical company Sanofi to develop and commercialize first-in-class protein degrader therapies targeting IRAK4 in patients with immune-inflammatory diseases. Dechert negotiated and drafted the very complex IP terms of the deal, including patent strategy and due diligence.
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 on the patent strategy, implementation, and diligence in its US$125 million financing round. The funding supports ongoing Phase 2b clinical trials of NDI-034858 (allosteric TYK2 inhibitor) and initiation of Phase 3; ongoing Phase 1/2 clinical trials of NDI-101150 (HPK1 inhibitor); and advancement of multiple preclinical programs.
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.
Multiple venture firms in IP diligences resulting in the creation of numerous new pharmaceutical and biotech companies.