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Common structural issues in sector specific M&A transactions
1. BUYING THE BRAINS - COMMON
STRUCTURAL ISSUES IN SECTOR
SPECIFIC M&A TRANSACTIONS
AIJA TALLINN – 19 APRIL 2013AIJA TALLINN – 19 APRIL 2013
JEROME VERMEYLENJEROME VERMEYLEN
2. Overview
Structural issues specific to M&A
transactions in IP/IT intensive sectors
Five issues:
Due diligence
Share deal vs asset deal
Keeping the brains
Financing / debt push down
Data protection
4. Due diligence
IP is not limited to registered IP
Key questions are
Which IP is critical to the business:
trademarks, patents, copyrights
(including on software), domain
names, knowhow, trade secrets etc.
Who has rights regarding the IP:
clients, employees, self employed
contractors, joint venture partners, any
other third parties who may dispute
the rights / use by the target
5. Due diligence (2)
Which rights: ownership, right of use /
licensing right, economic / moral rights
(copyright only) etc.
Which scope: exclusivity, duration,
territory etc.
Who are the target’s brains and which
are their contractual arrangements:
employees, directors, self-employed
contractors, shareholders
6. Due diligence (3)
If target uses cloud computing, which
(contractual) protections are granted
by cloud computing/IT supplier: SLA,
data recovery measures, IP protection
(e.g. software developed by target),
confidentiality of data/information,
limitations of liability etc.
7. Due diligence (4)
Based on the result of the (IP/IT) due
diligence:
⇒ Structure the transaction
⇒ Determine reps & warranties and specific
indemnities
⇒ Remedy problems (conditions precedent or
post-closing)
8. Share deal - Asset deal
Share deal: all assets and liabilities of
the target remain with the target
No need to organise the transfer of IP
rights / agreements
No need to request new permits /
authorisations
Check IP agreements for change of
control clauses
9. Share deal - Asset deal (2)
Asset deal:
Transfer of non registered IP (except
copyrights): solo consensu
Transfer of registered IP and
copyright: writing required
Transfer of registered IP: formalities
for the enforceability of transfer
towards third parties
Transfer of agreements requires
approval of co-contracting party
10. Share deal - Asset deal (3)
Change of “data controller”
⇒ Registration with / notification to /
authorisation from local data protection
authorities
⇒ Notification to data subject
11. Keeping the brains
Registered IP: no big issue
Tangible and easily identified
Well-protected and reps & warranties
Non-registered IP: often key issue in
IP/IT intensive sector
Existence and value rests with people
Knowhow and skills
Often no tangible evidence (except
for copyrights but also evidence
issues)
12. Keeping the brains (2)
Keep the brains by using the carrot
and the stick:
Keep directors and key employees
incentivized through:
⇒ (Minority) shareholding
⇒ Stock options
⇒ Good leaver – bad leaver provisions
13. Keeping the brains (3)
Keep the sellers incentivized through:
⇒ (Minority) shareholding
⇒ Earnout
Non-compete clause for shareholders,
directors and key employees
⇒ With penalties / lump sum damages
14. Keeping the brains (4)
Protect the target’s IP
Contractual provisions with all relevant
employees and self-employed for the
transfer of IP to the fullest extent
⇒ Condition precedent to transaction
Non-disclosure clause for
shareholders, directors and key
employees
⇒ With penalties / lump sum damages
15. Keeping the brains (5)
Protect the unregistered IP:
⇒ Protect computers and databases
⇒ Protect clients lists (e.g. “mystery
records” and “intentional typos”)
⇒ Restrict access to IP sensitive
locations
⇒ Log network access, data transfer,
printing, e-mailing etc.
⇒ Introduce good practice guidelines in
the working rules for employees
16. Financing / debt push down
Can IP be used as collateral for
financing?
Floating charge on the business,
including IP: no problem
Pledge on IP rights? Requirement of
“dispossession” of the pledged assets
⇒ Possible for IP rights?
⇒ Current view: yes (at least for
registered IP)
17. Data protection
“Adequate protection” required if
personal data transferred or
accessible from outside the EU
Authorisation of data subject
Standard clauses of the EU
Commission to be signed between
data exporter and data importer
US safe harbour list of companies
Countries with adequate protection
No difference if asset or share deal
18. QUESTIONS?
ALTIUS Brussels
Tour & Taxis Building
Avenue du Port 86C/414
1000 Brussels
Belgium
jerome.vermeylen@altius.com
T +32 2 426 14 14
F +32 2 426 20 30