Due Diligence & IP Valuation
Businesses interested in licensing or acquiring intellectual property assets or participating in mergers and acquisitions often turn to our firm to conduct IP due diligence prior to the transaction. We tailor our IP due diligence review of the asset to meet your needs, depending on the nature of the transaction. Often, our IP due diligence investigation is carried out in two steps.
The first step is a quick review to identify glaring problems within a specific transaction or IP portfolio. This inexpensive review points out potential risk areas such as infringement of third party patents and weaknesses of the IP portfolio. Such weaknesses will include any defense that another party may raise against the patents.
After we report our initial evaluation, you may or may not be interested in moving forward with the transaction. If you do decide to more forward, the second step is to carry out a more in-depth investigation. We may continue to identify third party patents that may create infringement liability, and evaluate the validity/enforceability of the third party patents. In addition, we may carry out a detailed evaluation of the prior art and prosecution history of the IP in question in order to identify patentability/validity/enforcement issues that may give rise to a defense by a third party. We may also carry out a detailed review of the ownership of the IP portfolio and attempt to identify other issues such as inventorship disputes, potential interferences, and interests of the U.S. government.
In conducting our due diligence investigation, we view our role as identifying and putting into proper context all potential risks to each business transaction.
Intellectual Property Valuation
A key factor in the valuation of a target company, for example, in connection with a merger or acquisition, is intellectual property valuation, or the value of any intellectual property owned by the target company. Intellectual property (including inventions, patent applications, patents, trade secrets, trademarks, copyrights, licensed-in technology, licensed-out technology, and the like) can account for a large percentage of a target company's value. Conversely, exposure to claims of patent infringement, trademark infringement, or assertions of trade secret misappropriation can detract from the value of a target company.
As an intellectual property law firm, we assist clients with intellectual property valuation to determine whether a target company has intellectual property assets and to what extent the assets are protected. We also assist in determining whether the target company has actual or potential intellectual property liabilities or impediments to marketing its products or services. In this role, we work closely with securities and corporate lawyers to put together a complete due diligence package for clients.