If you are contemplating a business transaction that involves patents, trade secrets, copyrights, or trademarks, we can help establish an objective value for this intellectual property. Whether you are the IP owner or a party gaining access to the IP rights through a license, merger, or acquisition, our team of experts applies a variety of tests to evaluate:
Ownership
Our research may reveal that the owner of IP rights does not have complete rights (e.g., an inventor may not have signed an assignment to the business), or there may be limits or restrictions on the transfer of rights. When we can catch ownership issues early, the issues can often be fixed; when not identified until later in the process, ownership issues can be deal breakers.
Scope of the IP Coverage
In most cases, the IP in a business transaction is related to existing or anticipated products or services (e.g., existing products that are included in the deal or products that a buyer intends to include in a new business line). Rather than looking for generally broad coverage of the IP, our focus here is usually to determine how well the IP covers the desired products and services. In addition, we measure the quality of the IP according to litigation readiness, with an emphasis on the scope and clarity of patent claims.
Validity of the IP
For patents, we generally recommend assessing validity, at least for a representative subset of the patents under consideration. For software patents, subject matter eligibility under 35 U.S.C. ยง 101 can be problematic, so we carefully apply the current rules used by the USPTO. When appropriate, we also recommend prior-art searches for specific high-value patents. For trade secrets, we evaluate the protocols in place to guarantee secrecy and the ability to avoid reverse engineering or independent development by others.
Freedom to Operate
Even when a deal includes a good set of intellectual property rights, that alone does not guarantee the ability to sell the products or services intended in the deal. We recommend looking at the IP rights of others as part of a freedom-to-operate search. When there are any significant blockers, we recommend invalidity analysis for that blocking IP.
Litigation
For the IP involved in the proposed deal, we also research for previous, current, or anticipated litigation. Litigation can affect the value of the portfolio.
The due diligence we provide facilitates appropriate business decisions. Getting us involved early can establish a more accurate value for a deal or conclude that a given deal might not meet your objectives. We help you make informed decisions.
The extent of due diligence should be commensurate with the value of the proposed deal. Therefore, we can adapt the scope of our due diligence work to meet your budget and needs.