국제 M&A 거래에 있어 지적재산권과 관련한 실무상의 주요 쟁점

Abstract

Recently, there are more and more cases where companies try to gain a competitiveedge in the international market by acquiring intellectual property rights, particularlythrough mergers and acquisitions of other companies which own valuable intellectualproperty rights. Therefore, a careful review of the legal issues relating to intellectualproperty rights becomes important in M&A transactions in order for the buyer tosecurely obtain the seller’s intellectual property rights and use them in the buyer’s businesswithout restriction following the conclusion of the M&A transaction. As the laws and regulations relating to intellectual property rights are subject to theprinciples of territoriality, IP issues in international M&A transactions are governed bythe laws and regulations of the specific country, and particularly those of the countrywhere the seller is domiciled. In this regard, this article examines the key legal issuesto be considered from a Korean IP law perspective in a typical M&A transaction involvingthe acquisition of a Korean target by a foreign buyer. First, the general concept andscope of M&A transactions and the subject of IP due diligence in M&A transactionswill be discussed. Further, this article categorizes the various types of IP-related legalissues in the context of a typical international M&A transaction, including such issuespertaining to patents (including employee inventions, national core technologies, strategicitems and national R&D projects), trademarks, copyrights, confidential information, IPrelatedcontracts and litigations, and examines the key aspects of each such categorizedlegal issue. Lastly, this article will examine the legal and contractual measures that can be utilizedto ensure that the buyer can securely obtain the intellectual property rights of the seller,with such measures to include, among others, the inclusion of the conditions precedentsto the closing of the M&A transaction and the representations and warranties clause inthe M&A agreements.