Due Diligence Request List: IP and IT

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1 PLC Intellectual Property & Technology An intellectual property (IP) and information technology (IT) due diligence request list for use in connection with an M&A transaction. This request list is designed for IP specialists and is specific to IP and IT-related issues. This Standard Document has integrated notes with important explanations and drafting tips. This is just one example of the many online resources Practical Law Company offers. To access this resource and others, visit practicallaw.com. DRAFTING NOTE General Most due diligence investigations begin with the preparation of a due diligence request list that covers the entire scope of the anticipated transaction. Companies involved in corporate transactions may consult intellectual property (IP) specialists who focus on the IP and information technology (IT) issues relating to the transaction. This request list is specifically drafted to help specialists representing the buyer gather diligence about IP and IT issues that may arise in asset acquisitions, stock acquisitions and mergers. It may be modified and incorporated into a general due diligence request list or used as a stand-alone document. For examples of general due diligence request lists, see PLC Corporate & Securities, Standard Documents, Due Diligence Request List: Public Mergers & Acquisitions ( and Due Diligence Request List: Private Mergers & Acquisitions ( IP specialists should review any publicly available information on the target company or seller and tailor the requests to the extent possible before submitting the diligence request. The request list should be prepared and distributed to the target company or seller as early as possible in the timeline of the anticipated transaction. For a Checklist of common IP due diligence issues, see IP Due Diligence Issues in M&A Transactions Checklist ( For an overview of IP issues in M&A transactions, see Practice Notes, Intellectual Property: Stock Purchases and Mergers and Intellectual Property: Asset Purchases ( Tailoring Diligence Requests This due diligence request list is drafted to provide broad coverage of IP- and IT-related requests and should be customized in connection with a specific transaction. Learn more about Practical Law Company practicallaw.com

2 Regardless of any modifications, a buyer s requests should seek information sufficient to: Identify any impediments to the transaction. Identify significant liabilities. Understand impediments to continued business operations or planned changes following the closing. Some or all of the optional language presented in bracketed text can be used to: Tailor the requests to be more specific or to address particular concerns relating to the transaction. Limit the scope of the request to material items. Notify or remind the target company or seller of specific documents that may satisfy a particular, broader request. Common issues to consider include: The deal structure. For example, in a stock acquisition, the target company typically remains the same and the buyer generally steps into the seller s shoes, assuming responsibility for all of its contractual obligations and liabilities. In this case, the due diligence requests are typically broad in scope. In an asset acquisition, the buyer generally does not assume all of the seller s liabilities and the due diligence requests may focus on information relating to the specific assets being purchased. If the transaction is a carve-out transaction (the sale of a subsidiary, division or other part of a larger business enterprise), the buyer will want to ensure that the treatment of shared IP and IT assets is addressed (see optional language in Section 1(h) and Section 2(b)). The scope of the IP and IT due diligence review. For example, the diligence requests should be modified to reflect: the materiality threshold (meaning the buyer or corporate due diligence team do not want to know about liabilities unless they exceed this threshold amount); specific concerns or areas of focus relating to the particular transaction or target company; and time or budgeting restrictions. The target company s or seller s business. The diligence requests should be customized based on: the nature of the business; the industry in which it operates; and whether it is a private or public company. The target company s or seller s reliance on IP and IT. For example, the focus of the diligence requests may vary if the target company or seller: owns a certain key IP asset (such as an established brand) or a significant number of IP registrations (such as a patent or copyright portfolio); customarily licenses IP (such as software) in connection with its business; or operates in an industry where IP-related disputes are common. Regulated industries. Transactions involving a target company or seller in a regulated industry, such as pharmaceuticals, raise unique issues and often require additional input from regulatory specialists and a separate due diligence review. 2

3 Trade secrets. When requesting and responding to a request for trade secret information, the parties should consider whether disclosure is required and ensure confidentiality is maintained if trade secrets are identified in detail. Antitrust. The disclosure of information in certain documents by the target company or seller to the buyer may raise antitrust considerations, in particular if the buyer is a direct competitor and the information involves pricing or financial information. In some cases it may be appropriate for disclosure and access to be limited to the buyer s counsel or specific buyer personnel. Antitrust specialists should be consulted if the transaction raises these issues. In addition, IP and IT diligence requests may overlap with general corporate diligence requests, in particular relating to the target company s or seller s material agreements. Although attorneys in these two areas of law may review some of the same diligence materials, they should coordinate to ensure that the diligence requests are not duplicative. It is also typical for IP specialists to coordinate requests with the buyer s internal IP and IT teams, as well as external consultants. This can be particularly important where the buyer wants the diligence investigation to focus on its ability to use certain key IP assets after the transaction or has concerns regarding the target company s or seller s IT platform and its integration with the buyer s own systems. Specifying Materiality It is sometimes useful to qualify certain IP or IT requests by materiality. For example, requesting all IP-related agreements may be onerous and time-consuming for both the buyer and the target company or seller. The request list can provide a definition of materiality upfront or indicate individual thresholds relevant to particular items. The determination of what constitutes materiality depends on the size of the target company or seller, the nature of the business and custom in the industry. It can be defined with a dollar amount (for example, $250,000) or as a percentage of revenues or assets. IP specialists should make these determinations with the members of the corporate due diligence team and the buyer. INTELLECTUAL PROPERTY AND INFORMATION TECHNOLOGY DUE DILIGENCE REQUEST LIST In connection with the potential acquisition of [assets from] [NAME OF TARGET] (together with all of its subsidiaries and any predecessors, collectively, the Company ), please provide us with the following materials. If certain materials have already been provided or are unavailable or inapplicable, please indicate this in your response. Please note that because we are not yet familiar with the business and operations of the Company, the requests below are specifically broad in nature and may include items that are not applicable to the Company. As our diligence proceeds and we learn more about the Company, we may submit supplemental due diligence requests as necessary. Unless otherwise indicated, documents should be made available for all periods subsequent to [DATE] and should include all amendments, supplements and other ancillary documents. [Unless otherwise indicated, the word material means an item involving payments (to or from the Company) in excess of $[DOLLAR AMOUNT].] Please do not hesitate to contact us at [CONTACT INFORMATION] with any questions or concerns regarding this request. 3

4 DRAFTING NOTE Instructions The defined term Company or individual diligence requests should be drafted to capture all entities that may have relevant documents. For example, if the target company s or seller s IP is owned by the parent company or an affiliate company, the diligence requests should cover relevant agreements (including licenses), even if those agreements were entered into by a different corporate entity. The introductory language should be modified with the bracketed language if the requests are being submitted as part of an asset acquisition. In addition, the introductory language makes clear that the diligence requests cover a specific period. IP specialists should modify individual diligence requests if documents outside that period are necessary or relevant to the diligence review. 1. Intellectual Property. (a) List of all US and foreign patents and patent applications owned or held for use by the Company[, indicating in each case, as applicable, the record owner, the dates of invention, application, issue, reexamination and reissue, the patent number or application serial number[, and copies of all related prosecution files]]. (b) List of all US and foreign copyright [(and mask work)] registrations and applications owned or held for use by the Company [and material unregistered copyrights][, indicating in each case, as applicable, the record owner, the dates of authorship, publication, application, registration and renewal, registration number[, and copies of all related documents and files]]. (c) List of all US and foreign trademark, service mark and trade name registrations and applications and [material] unregistered trademarks, service marks and tradenames owned or held for use by the Company[, indicating in each case, as applicable, the record owner, the date of first use, application, registration and renewal, registration number or application serial number[, and copies of all related prosecution files]]. (d) List of all domain names owned or held for use by the Company[, indicating in each case, the record owner, the registrar, registration and renewal date]. (e) List describing all proprietary technology and computer software owned, held for use by or being developed by or for the Company. (f) List describing all: (i) [material] third-party computer software used by the Company or incorporated into any software or product of the Company[, including, without limitation, all software used in connection with the development, creation and distribution of any proprietary software]; and (ii) open source, freeware or other software having similar licensing or distribution models used by the Company or incorporated into any software or product of the Company. (g) List describing all [material] trade secrets and other proprietary know-how or processes owned or held for use by the Company[, including, without limitation, any patentable inventions and the inventors thereof for which the Company has not filed a patent application]. (h) [Details of all intellectual property shared by the Company with the Company s affiliates[, including intellectual property owned by such affiliates,] and how the Company proposes to handle such intellectual property in connection with the transaction.] (i) Copies of all [material] agreements, proposed agreements or arrangements pursuant to which any 4

5 third-party intellectual property[, including software listed in response to Section [1(f)(i)], is assigned or licensed to the Company by any third party[, including, without limitation, agreements with present and former employees, non-employee consultants and contractors involved in creating any intellectual property on the Company s behalf] [,excluding any license agreements for commercially available software available through shrink-wrap or click-through agreements with a total cumulative value of less than [AMOUNT]]. (j) Copies of all [material] agreements and proposed agreements pursuant to which any intellectual property is assigned, sold or otherwise transferred, or licensed by the Company to any party or subject to a covenant not to sue. (k) Copies of all research and development, joint venture or other agreements relating to product, process or technical research, development and testing to which the Company is a party. (l) [Descriptions of all intellectual property developed by or on behalf of the Company using university or government funding.] (m) Copies of all current and historical documents, policies and procedures relating to the development and protection of the Company s intellectual property[, including, without limitation, [invention disclosure policies,] [non-competition agreements,] [[form] invention and proprietary rights agreements,] [and confidential information policies and [form] agreements]. (n) Copies of all [nondisclosure agreements,] settlement agreements, administrative or judicial decisions or orders, consent orders, releases, covenants not to sue, security agreements and other agreements or decisions restricting or encumbering the intellectual property of the Company. (o) Copies of all freedom-of-use advice, validity or infringement analyses, and legal opinions of counsel regarding the intellectual property of the Company. (p) Copies of all correspondence from third parties regarding alleged or potential infringement or other violation by the Company of intellectual property rights of others[, including, without limitation, any offers to take a license agreement]. (q) Descriptions of, and copies of all communications relating to, all: (i) pending or threatened claims, judicial or administrative proceedings, or litigation brought against [or involving] the Company alleging the infringement or other violation of any third party s intellectual property or challenging the ownership, validity or enforceability of the Company s intellectual property [or any intellectual property exclusively licensed to the Company] or (ii) past disputes of such nature [active in the last [6] years]. (r) Descriptions of, and copies of all communications relating to, all: (i) potential, pending or threatened claims, judicial or administrative proceedings, or litigation brought or contemplated by the Company alleging the infringement or other violation of intellectual property of the Company [or any intellectual property exclusively licensed to the Company] by a third party or challenging the ownership, validity or enforceability of a third party s intellectual property or (ii) past disputes of such nature [active in the last [6] years]. (s) [Copies of any [material] agreements relating to intellectual property that have not been provided in response to any of the foregoing requests.] 2. IT Systems and Networks. (a) Copies of all agreements relating to the provision of IT, data or internet-related products or services to or by the Company[, including, without limitation, [outsourcing,] [internet service provider,] [maintenance and support,] [hosting,] [source code escrow and disaster recovery agreements,] [[material] software licences] and any other [material] agreements or arrangements relating to the Company s use or possession of IT systems and services]. 5

6 (b) A description of all computer systems, software packages, networks and service bureaus ( Computer Systems ) in use by the Company, by location. [For any systems and services shared by the Company and its affiliates[, including any assets or services provided to the Company by an affiliate], please indicate whether shared access is required or necessary and how the Company proposes to handle such assets and services in connection with the transaction.] [Include: (i) [Operational/Commercial Systems] (ii) [Communications systems including data collection.] (iii) [Server systems.] (iv) [Last upgrade and maintenance schedule.] (v) [Full description of all databases including number of records, underlying technology, and maintenance strategy.] (c) Copies of the most recent strategic plans for the Company s Computer Systems. (d) A description of any back-up and disaster recovery arrangements, facilities management and ongoing support arrangements, including details of service levels and charges. (e) A description of and copies of documents relating to whether the Company has access, or rights of access, to the source code of material licensed software in order to ensure adequate maintenance and updating of that software. (f) A description of any Company procedures to monitor compliance with the terms of software licenses, including whether these procedures monitor the use of software by the Company to ensure that multiple copies of any software are not used in breach of the relevant license terms]. (g) A description of and copies of the Company s website and web services security policies and procedures. (h) Confirm whether the Company owns all intellectual property in the design and content of its websites. (i) A description of any insurance coverage for business losses related to the Company s Computer Systems. (j) A Description of any [material] interruptions of the Company s Computer Systems in the past [NUMBER] years. 3. Privacy and Data Security. (a) Copies of all current and historical privacy and data security policies and practice manuals of the Company[, including, without limitation, [all [posted and internal] privacy policies and policy documents, including website privacy policies] [and procedures for the Company s use and disclosure of customer or personal information[, including the intracompany sharing of personal information]]. (b) Copies of all policies, procedures and written information security programs for compliance with data protection and privacy legislation, including each program for compliance with specific customer contracts in the event the Company is acting in a service provider capacity. (c) Copies of all reports or audits (internal or external, including any SAS 70 and SSAE 16 audits) that have been performed on the Company s information security program(s) or any other reports prepared by or for the Company concerning the implementation of information security program(s). (d) Copies of any other documentation and information regarding the Company s collection, use, storage or disposal of customer or personal information (whether the Company s or a third party s), including compliance analysis with respect to any such information used, managed or accessed by the Company. (e) Copies of all agreements that the Company has with any third parties that act as the Company s agents or contractors and receive from or on behalf of the Company customer or personal information that is subject to any statutory or regulatory data privacy or security requirement. Please provide copies 6

7 any reports or audits (internal or external, and including any SAS 70 and SSAE 16 audits) that have been performed on the information security program(s) of such third parties. (f) Details of any actual or potential data and information security breaches, unauthorized use or access of the Company s Computer Systems or data, or data and information security issues impacting the Company that have been identified in the past [NUMBER] years. For more information, search for the following resources on our website. Topics IP and IT in Corporate Transactions ( Practice Notes Intellectual Property: Asset Purchases ( Intellectual Property: Stock Purchases and Mergers ( What's Market: M&A Agreements in the Software Industry ( Standard Documents Due Diligence Request List: Private Mergers & Acquisitions ( Due Diligence Request List: Public Mergers & Acquisitions ( Due Diligence Summary Template: License Agreements ( Standard Clauses IP Representations: Stock Purchase (Auction Form) ( IP Representations: Stock Purchase (Pro-buyer) ( Checklist IP Due Diligence Issues in M&A Transactions Checklist ( For the links to the documents referenced in this note, please visit our online version at Practical Law Company provides practical legal know-how for law firms, law departments and law schools. Our online resources help lawyers practice efficiently, get up to speed quickly and spend more time on the work that matters most. This resource is just one example of the many resources Practical Law Company offers. Discover for yourself what the world s leading law firms and law departments use to enhance their practices. To request a complimentary trial of Practical Law Company s online services, visit practicallaw.com or call Use of PLC websites and services is subject to the Terms of Use ( and Privacy Policy (