Emerging Trends in
M&A Practice
IP Reps, Warranties, and Insurance, Oh My!
Matthew Heinz, Aon Risk Services, Inc.
Greg Leibold, Merchant & Gould P.C.
Agenda
• General IP Reps & Warranties• Target Company • Third-party IP
• Open Source Reps & Warranties
• Data Security & Privacy Reps & Warranties
• General Considerations • Data and Laws
• Types of Data Security & Privacy Reps & Warranties
• Reps and Warranties Insurance
• Basics • Rationale • Case Study
General IP Reps & Warranties
• Target Company IP• Complete list of IP
• Ownership/assignment
• Present assignment language
• Assignments recorded, where appropriate
• Complete list of licenses/encumbrances of target IP • List of all registrations, maintenance, office action
General IP Reps & Warranties
• Third-Party IP• Existing/previous threats
• Current licenses from third parties • Assignability
• Non-infringement
• Knowledge qualifiers
• Knowledge of the IP vs. knowledge of the
General IP Reps & Warranties
Third Party IP Infringement Knowledge Qualifier Comparison: To the Knowledge of Company, neither (i) the Company’s use of Company Intellectual Property; nor (ii) the Company’s manufacture, use, sale, offer for sale, importation or other commercialization of present or proposed Company products or services infringes upon, misappropriates, conflicts with, or violates any rights of any other Person.
versus . . .
To the extent the Company has Knowledge of such rights, neither (i) the Company’s use of Company Intellectual Property; nor (ii) the Company’s
manufacture, use, sale, offer for sale, importation or other commercialization of present or proposed Company products or services infringes upon,
Open Source Reps & Warranties
• Open Source Software• List of all open source software files and associated
licenses
• Distinguish between internal use and distribution • Viral effect heightened if open source included in
distributed products/services
• Buyers resist knowledge qualifiers in rep/warranty • Management may legitimately not know
Data Security & Privacy Reps &
Warranties
• General Considerations for Data Security & Privacy Reps
& Warranties
• Understand the nature of the target business
• Understand the type of data collected, stored, or used
by the target business
Data Security & Privacy Reps &
Warranties
• General Considerations for Data Security & Privacy Reps
& Warranties (cont.)
• Understand the privacy and data security laws/issues
associated with that business and any associated data or information
• Understand the degree/extent of potential liability
based on the data or information collected and the applicable laws
Data Security & Privacy Reps &
Warranties
• Data and Laws
• Examples of potential sources of data • Special types of data
Data Security & Privacy Reps &
Warranties
• Types of Reps & Warranties
• Existence of and compliance with privacy and data
security programs
• General compliance with privacy and data security
laws and regulations
• Compliance with specific privacy and data security
Data Security & Privacy Reps &
Warranties
• Types of Reps & Warranties
• Absence of complaints, litigation or internal
investigations regarding data security, privacy or personal information
• Absence of data security breaches
• Security measures taken to protect systems, data, and
Reps & Warranties Insurance - Basics
• Reps & Warranties Insurance can insure either buyers or sellers in
M&A transactions for liability arising out of a breach of a rep or warranty about the target company or business
• Buyer-side policy pays the buyer directly for such losses and
can be used to supplement or replace the seller’s escrow / indemnification cap
• Seller-side policy reimburses the seller for such losses and can
be used to backstop the seller’s escrow / indemnification cap
• R&W Policies can cover all reps & warranties in Purchase
Agreement, including the Financial Statements
• Structure depends on objectives of parties
• Coverage is used strategically to enhance a buyer’s bid or to
Reps & Warranties Insurance -
Rationale
Sellers
Reduce or eliminate post-closing indemnity obligations for breach of R&W, including related escrows Reduce contingent liabilities
Distribute sale proceeds Protect passive sellers Expedite sale process
Attract best offers by maximizing ability to indemnify
Buyers
Increase maximum indemnity / extend survival period for
breaches of reps & warranties Distinguish bid in auction
Protect key relationships
(particularly in the context of a management rollover)
Ease collection concerns
Provide recourse when no seller indemnity possible (public
Reps & Warranties Insurance -
Case Study
$40M R&W Protection $40M Escrow (10% assumed) $360M (proceeds at closing) Hypothetical w/o Insurance ($400,000,000) $4M Premium $396M (proceeds at closing)Sale Price with Insurance ($400,000,000)
Situation
A US private equity firm was preparing to sell a $400M manufacturing company through an auction process The target was the last of 15 divestitures of a holding
company, and had numerous hanging indemnities from past sales, plus tax (NOLs) and environmental issues
Seller desired to effect the sale on an “as is” basis and have no surviving indemnities or escrow post-closing
Solution
Before the auction began, Aon structured and
obtained quotes for a package of reps and warranties, tax and environmental insurance in favor of Buyer Bidders were told to work with Aon and Seller made it
known that it would provide no indemnities
The R&W policy covered hanging liabilities from prior transactions and reps related to the current
transaction
The SPA had no survival and provided a credit against purchase price for the insurance cost (1% of
transaction value)
Seller achieved more bids and a better sale price than anticipated; the added benefit was that by the insurers’ vetting of these risks, the buyer side due diligence process was much smoother, simpler and contributed to the successful auction