mARCH 2012 80 Legal Focus

IP issues in M&A Costa Rica

As part of Lawyer Monthly’s Legal Focus on Intellectual Issues within M&A, we speak to María del Pilar López, Director of the Intellectual Property Department at Costa Rican firm, Zürcher Odio & Raven. This firm is one of the largest organized law firms in the region with a full range portfolio of legal services and seeking to fulfill the demanding needs of their growing clientele. As director of the department, María is responsible for overseeing IP operations, strategies for and protection of intellectual property. She is also responsible for IP protection and enforcement strategies and actions; and in the event of judicial litigation, she collaborates with the litigation department. The firm’s operation has been characterized by integrated teamwork and by their long term commitment with clients. Its members, presently 37 lawyers lead by 7 partners, have achieved recognition both for their very high quality of legal advice and for their strict adherence to ethical and professional standards.

Q

what are the most common IP-related challenges to arise within mergers and acquisitions in your experience?

The most common IP-related challenges to arise within M&A are the following:

• To establish and to obtain an accurate list of all the intellectual property assets to be acquired from the transaction;

• To have the seller and buyer to check schedules for unregistered intellectual property;

• Ownership searches must be carried out to confirm list of IP assets provided by the and also checks as to whether the seller possesses the corresponding foreign intellectual property rights;

• Licenses must be checked;

• It must be checked whether there are any impending lawsuits or potential claims that the buyer may be acquiring and it would be necessary to evaluate their seriousness;

• It must be checked whether there are any non-disclosure and/or non- competition agreements in place between the seller and current employees;

• It must be checked whether there are any assets that are especially important to the company and, if so, whether they need to be protected.

IP laws differ from country to country and so it depends on the national framework governing the transaction, for example whether the country in question is governed by civil or common law. Furthermore, employees’ rights with regard to IP can differ greatly, depending on the jurisdiction.

In Costa Rica, IP-related litigation is still in its early stages. Up to date, the majority of IP-related cases ruled by the local authorities include trademark and patent infringement and consumer-related issues. However, there is no specific information on IP judicial cases arising from M&A transactions.

Q Q Q

Have there been any significant legislative changes recently? Do you see the need for any?

As a consequence of the enforcement of CAFTA (Free Trade Agreement between

Are there many cases of IP-related litigation that arise with the M&A market?

How do these challenges alter when a deal is cross-border?

the Dominican Republic, Central America and United States), Costa Rica acceded to a number of obligations that resulted in the modification of its IP laws and therefore, the legal system was even more strengthened and modified to comply with international standards. There is a well-defined and harmonized legal scenario with a broad understanding of the owner’s requirements.

However, the system has not completely

developed and the administrative and judicial authorities have not fully embraced the same. Therefore, this is the current challenge of the legal scenario for IP owners in Costa Rica. LM

Contact Details: www.lawyer-monthly.com

María del Pilar López Email: plopez@zurcherip.com