Using IP as Collateral: Pitfalls and Practice Tips

(323 Ratings)

Produced on: October 25, 2017

Course Format On Demand Audio

Taught by

Categories:

Course Description

Time 64 minutes
Difficulty Intermediate

Intellectual Property (IP) is rapidly developing as a means for securing financing. Using IP as collateral presents a variety of challenges, especially where the U.C.C. and the federal IP statutes do not align in terminology or practice. Because IP is an intangible asset, it presents unique challenges and risks.

This course, presented by Barbara Goodstein, a partner in Mayer Brown’s finance practice, and Richard Assmus, a partner in Mayer Brown’s IP practice, reviews common issues that arise when IP is contemplated for use as collateral, and offers teaching points based on recent case law for IP and finance lawyers alike.


Learning Objectives:

  1. Assess the ways that businesses can use IP as collateral in financing deals, and the unique risks presented by this arrangement
  2. Discuss common issues that arise in the use of intangible assets as collateral
  3. Identify best practices for structuring deals with IP collateral agreements

Faculty

Barbara Goodstein

Mayer Brown LLP

Barbara M. Goodstein is a partner in the Global Finance practice of Mayer Brown's New York office.

Barbara’s experience consists of commercial and structured financing as well as restructuring of transactions for a wide range of asset types, including auto, trade, health care, timeshare and lease receivables, sports franchises, intellectual property, transportation equipment (including aircraft, aircraft engines, railcars and vessels), technology, medical, communications, office and construction equipment, and marine and inter-modal containers. She also has extensive debt workout and restructuring experience primarily representing senior creditors and syndicate groups, bondholders, and secured creditors both in and out of bankruptcy; foreclosures, DIP and exit financing; contested and consensual bankruptcy matters; and other financial and legal restructurings.

Barbara is recognized in Chambers USAChambers GlobalLegal 500and Super Lawyers as a leading lawyer. Chambers USA notes that she “is an expert in innovative restructuring and esoteric asset classes, such as timeshare, intellectual property and medical equipment.”

Barbara is a featured columnist for The New York Law Journal’s “Secured Transactions” section, a Regent and Fellow of the American College of Commercial Finance Lawyers, and a member of the Board of Editors of the Uniform Commercial Code Law Journal (published by Thomson Reuters/West in coordination with Penn State University Dickinson School of Law) and of LJN’s Equipment Leasing Newsletter(published by American Law Media). She previously served on the Board of Directors and Executive Committee of the Equipment Leasing and Finance Association (ELFA), the national trade association for the equipment finance industry, and is currently a member of ELFA’s Legal Committee Subcommittee on Air, Rail and Marine. Barbara has been recognized as an outstanding lawyer by ELFA, having received ELFA’s Legal Committee Edward A. Groobert Excellence in Leasing Award in 2015. Barbara also serves as a member of the Board of Trustees of the Port Chester-Rye Brook Public Library.

Barbara is a member of the Mayer Brown Women’s Leadership Committee, Co-Chair of the New York Women’s Forum and is Co-Chair of the Attorney Training Committee – Transactional Training.


Richard Assmus

Mayer Brown LLP

Richard Assmus has a balanced intellectual property litigation and transactional practice. He is also closely involved in intellectual property due diligence, trademark prosecution and monitoring, copyright counseling, and advertising counseling.  Richard utilizes his background in science and mathematics in connection with complex patent litigation and technology matters.

Richard’s dispute resolution experience includes patent litigation, trademark litigation in federal courts and before the US Trademark Trial and Appeal Board, copyright litigation in federal courts and before the Copyright Royalty Board, state court trade secrets litigation, and domain name litigation under the federal anti-cybersquatting act and the UDRP. He also has significant experience advising clients regarding trademark availability; procurement and protection; trademark watch services, including Internet enforcement strategies; copyright protection, registration and enforcement; and negotiating the purchase of domain names.  There is a strong proactive emphasis in Richard’s practice, as he helps clients anticipate contractual risks, protect trade secrets through confidentiality agreements, evaluate advertisements for potential liability for false or misleading representations, and prepare effective licensing and other technology transfer agreements. 

Richard also advises on professional responsibility matters, with a focus on legal conflict issues related to intellectual property matters in Mayer Brown’s offices worldwide. The 2016 edition of World Trademark Review (WTR) 1000 named Richard to their list of “The World's Leading Trademark Professionals.” He is recognized “for his contentious and transactional skills” and “his background in science and mathematics plays well on mixed hard and soft-IP portfolio mandates.”

Reviews

KF
Kelli F.

Effective back and forth by the speakers

CP
Christyann P.

good overview

RK
Richard K.

Great job on an area of practice where I have no background (or familiarity) but the takeaways and the analysis along the way show the value of these specialties.

WB
William B.

This is a great course. Highly recommended.

TS
Timothy S.

Good content; nice interaction between presenters.

MW
Marie W.

That was a very interesting CLE!!!!

AK
Afsaneh Lynne K.

I thought this course was very informative and interesting.

TB
Taylor B.

Great course!

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