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What Makes a Life Sciences Deal Stack Up for Buyers?

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Matt Ferry shared his thoughts on IP considerations for life sciences transactions in Life Sciences IP Review. The article...

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<p>Matt Ferry shared his thoughts on IP considerations for life sciences transactions in <em>Life Sciences IP Review</em>. The article discusses how intellectual property can make or break life sciences acquisitions, particularly for development-stage biotech companies whose value often rests on their science and ability to keep competitors at bay.</p><p>Matt notes, "In life sciences, the IP oftentimes is the asset,” and explains that buyers assess a combination of market opportunity, scientific promise and legal protection, examining patent scope, remaining exclusivity, ownership, licensing arrangements and freedom-to-operate risks.</p><p>On patent volume, Matt adds, "Strength isn’t volume. Two hundred patents that don't read on the commercial embodiment might be worth less than three that do.”</p><p>The article also emphasizes early preparation by sellers. Thorough diligence of ownership, licenses and third-party rights allows companies to identify vulnerabilities before negotiations begin, preserve leverage and better control the narrative with potential buyers. Another consideration for life sciences companies is chain-of-title issues relating to unassigned inventors.</p><p>Read the <a href="https://www.lifesciencesipreview.com/regulation-and-industry/the-buyers-wishlist-what-makes-a-life-sciences-deal-stack-up" target="_blank">full article</a> (subscription required).</p>

<p>What Makes a Life Sciences Deal Stack Up for Buyers?</p>

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<p>Matt Ferry is a partner in the San Diego office and a member of the firm’s Technology Transactions Group, advising innovative and mission-driven life sciences and frontier technology companies.</p><p>Matt has more than a decade of experience in structuring, drafting, negotiating, and executing strategic transactions where intellectual property (IP), technology, data, and information assets drive the deal. Matt is passionate about advising innovative companies—from startups to large enterprises and nonprofits—that are developing technologies and solutions to improve peoples’ lives and address global challenges. His practice primarily focuses on clients across the life sciences and technology sectors, including:</p><ul><li>Pharmaceuticals and biotechnology (including small molecule pharmaceuticals, biologics, nanotherapeutics, drug discovery, antibodies, cell and gene therapy, CRISPR and other gene editing technologies, drug delivery, immunology, and oncology);</li><li>Medtech and healthtech (including medical devices, digital health, and other forms of software and hardware in diagnostic and therapeutic applications);</li><li>Food and agriculture (including in plants and crop sciences, agriculture and farming, alternative proteins, animal and plant production, food products and consumer goods, consumer packaged goods, and vitamins and supplements);</li><li>Cleantech (including renewable energy, biofuels, plastic recycling and carbon capture); and</li><li>Artificial intelligence/machine learning and their applications (including uses of generative AI, large language models, natural language processing, computer vision, predictive analytics, AI-enabled drug discovery, and AI applications in life sciences, agriculture, and clean technology).</li></ul><p>Matt’s clients value his responsiveness, his business-minded approach, and his ability to serve as a trusted advisor for strategic transactions. He leverages his previous experience in patent prosecution and IP litigation, as well as his deep interest in science and technology, to provide a holistic perspective and overall business strategy for his clients’ transactions.</p><p>He advises clients in connection with:</p><ul><li> Commercial contracts across all stages of technology and product life cycles, from early-stage research and development through commercialization and post-market, including strategic alliances and collaborations, and co-development, asset sale and purchase, research and development, supply, manufacturing, and distribution, clinical trial, data sharing and licensing, service, and material transfer agreements.</li><li>Patent and technology license agreements in industry-to-industry, academic-to-industry, and government-to-industry settings.</li><li>IP and commercial contract matters that arise in connection with larger corporate transactions, including mergers and acquisitions, venture capital investments, joint ventures, spin-offs, SPACs, IPOs, and strategic investments, with a focus on IP and technology diligence and the drafting and negotiation of IP-related ancillary agreements, such as transition services agreements, IP assignment agreements, and license-back arrangements.</li><li>Early-stage company IP counseling and hygiene, including invention assignment agreements and IP protection strategies.</li></ul><p>To assist his clients, Matt draws on his technical knowledge that he developed in his undergraduate work at University of California, Berkeley, his graduate work at the California Institute of Technology, and his hobbyist scientific pursuits, including in physics, software, microwave instrumentation, and optics.</p><h4>Representative Transactions</h4><h5><em>Pharmaceuticals and Biotechnology</em></h5><ul><li>A multinational investment firm in its joint venture with a large public pharmaceutical company to source, develop, and commercialize therapeutic candidates.</li><li>A large institutional life sciences investor in its royalty purchase agreements.</li><li>A venture-backed biotech startup in its cross-border license and option agreement for radiotherapy technology.</li><li>A non-profit medical research organization in its license and collaboration agreements with various partners, including universities and for-profit institutions. </li><li>Eton Pharmaceuticals, Inc. in its acquisition of Galzin®, a small molecule treatment for an ultra-rare disease from Teva Pharmaceuticals.</li><li>A multinational pharmaceutical company in its manufacturing agreements.</li><li>A public mRNA technology company in its patent licensing strategy and evaluation agreements.</li><li>Eton Pharmaceuticals, Inc. in connection with its asset sale of several of its branded and generic injectable products to Dr. Reddy’s Laboratories.</li><li>A public pharmaceutical company in its purchase of three product lines from a Fortune 500 public pharmaceutical company.</li><li>A public pharmaceutical company in its sale of three product lines to a private equity-backed purchaser.</li><li>A public pharmaceutical company in numerous patent and technology asset purchases and sales, exclusive licensing arrangements, commercial alliances, and co-promotion agreements.</li><li>A public pharmaceutical company in several patent and technology asset purchases and sales, including its sale of three product lines focused on rare neurological diseases and associated assets to a private purchaser.</li><li>A venture-backed pharmaceutical company focused on treating rare diseases in China in several exclusive license and supply agreements.</li><li>A U.S. academic institution in numerous patent and technology exclusive licensing agreements, sponsored research agreements, option agreements, and term sheet negotiations.</li><li>A nanotherapeutic company in numerous research and collaboration agreements and licensing agreements.</li><li>A CRISPR-based company in numerous evaluation agreements, material transfer agreements, and collaboration agreements.</li><li>A startup company in its gene modification research agreement templates.</li></ul><h5><em>Medical Devices and Health Technology</em></h5><ul><li>A neurotech startup in its license and commercialization agreement with a large, public medical device company.</li><li>A medical device startup in its several exclusive patent and technology license agreements with a leading academic institution and its clinical trial agreements.</li><li>A digital health company in its collaboration agreement with a global distributor.</li><li>A medical device company in its multisite clinical trial agreements.</li><li>A public medical device company in its exclusive license and distribution agreement with a global medical device distributor.</li><li>A medical device incubator in its form technology and service agreements, patent license agreement from an academic institution, and sublicense agreements.</li><li>A public medical device company in its patent purchase from an individual physician.</li><li>A medical device company in its multi-country distribution agreements.</li></ul><h5><em>Food + Ag and AgTech</em></h5><ul><li>A leading berry company in its complex cross-border settlement and license agreement.</li><li>A Brazilian trait company in its cross-border commercial and IP licensing agreements.</li><li>A university spinout in its renegotiation of its university license agreement, sublicense agreements, and commercial partnerships.</li><li>An innovative plant protein startup in all forms of its commercial contracts and licensing, including its university research agreements, grower agreements, evaluation agreements, and material transfer agreements.</li><li>A plant genomics and gene editing company in its strategic alliance with a leading commercial nursery.</li><li>A food storage company in evaluating outbound technology licensing models and its outbound license terms.</li><li>A botanical active ingredient producer in its research collaboration agreement with a botanical ingredient biotechnology company.</li><li>An agtech company in its outbound license of its proprietary gene design platform to a biotechnology company.</li><li>A public agency in its licensing agreements for proprietary fruit varieties.</li><li>An agtech company in all forms of its commercial contracts, including university research agreements, NDAs, material transfer agreements, and evaluation agreements.</li><li>A novel infant formula company in its dozens of supply and manufacturing agreements with its ingredient suppliers and formula manufacturers.</li></ul><h5><em>Consumer Products</em></h5><ul><li>Grüns in its Series B preferred stock financing, including a $10 million primary investment at a $500 million post-money valuation led by Headline Global Growth and a $25 million secondary tender offer, with conversion of outstanding SAFEs and convertible notes.</li><li>David Protein (aka Linus Technology, Inc.), a cutting-edge brand offering high-protein, low-calorie nutrition and redefining how we think about fat, in its Series A financing and its acquisition of the company behind EPG—a plant-based fat substitute that replicates the texture and mouthfeel of traditional fat.</li><li>An adaptogenic, nootropic, functional beverage, and other companies in their third-party logistics, supply, distribution, and licensing agreements.</li></ul><h5><em>Clean Technology</em></h5><ul><li>A large non-profit in its investment decisions. </li><li>A public carbon credit investing company in its collaboration agreement with air quality monitoring company.</li><li>A venture-backed clean technology startup in its international collaboration agreements.</li><li>A venture-backed clean technology startup in its technology license and service agreement with international public energy company and other licensees.</li></ul><h5><em>Artificial Intelligence and Machine Learning</em></h5><ul><li>A cybersecurity startup in all of its customer and vendor agreements.</li><li>A hardware/software combination company in its negotiation of customer POC agreements, evaluation agreements, and commercial deployments.</li><li>An alternative legal services provider in its suite of customer agreements.</li><li>A large consulting companies in their evaluation of AI terms for both vendors and customers.</li></ul>