Intellectual property (IP) due diligence investigations are generally conducted in conjunction with an investment or acquisition. Depending on the nature of the transaction, our IP attorneys initially collaborate with the interested third party to develop a customized IP due diligence plan for our client that is consistent with the nature of the investigation.
Our attorneys can tailor our clients’ IP due diligence investigations depending on whether they are associated with, for example:
- Mergers and acquisition deals;
- Intellectual property (IP) licensing/cross-licensing agreements;
- IP portfolio management/audits;
- Business/IP valuation;
- Corporate financing/funding programs;
- Patent protection and counseling;
- Ownership and assignment issues;
- In-house IP policy reviews;
- Trademark protection and counseling;
- Executive compensation policies;
- Compliance policies;
- Non-compete agreements;
- Non-disclosure agreements;
- Non-solicitation agreements;
- Research and development agreements;
- Independent contractor agreements;
- Joint-venture agreements;
- SEC reporting;
- Copyright protection and licensing;
- Investment groups/forums; and
- IP litigation.
A typical IP due diligence plan may include an assessment of the copyrights, patents, trademarks, and trade secrets of the target company and an independent investigation of each property’s potential liabilities, potential weaknesses and strengths, logistical information (filing dates, expiration dates, maintenance fees, assignment records, etc.), prosecution history and related prior art, ownership information, and inventorship.
Other IP due diligence plans could include comprehensive reviews of related licensing agreements, security interests, liens, current and prior lawsuits, settlement agreements, bankruptcy filings and covenants not to compete. Our IP attorneys are also experienced in conducting an infringement analysis of the target company’s key IP assets, competitor products, competitor IP portfolios, and/or potential infringement suits.
The cost and scope for such investigations generally vary depending on the nature of the transaction involved. As a service to our clients, we typically attempt to negotiate a cost-sharing agreement between the two interested parties to lessen the burden.
Virtual IP CounselSM
Virtual IP Counsel℠ provides technology companies with an experienced IP lawyer to serve as outside general counsel. Many technology companies, particularly start ups and pre-first round of financing ventures, require intellectual property law guidance and counseling on how to acquire IP, maximize their assets, and leverage those IP assets to maximize market share. Virtual IP Counsel works by providing these companies with the experienced IP guidance they need at predictable billing increments.
Intellectual Property Audits
We can assist companies to conduct a comprehensive audit of their intellectual property, and to put a program in place to identify and monitor new intellectual property. Our IP attorneys provide comprehensive IP audit checklists, and can assist companies in registering their IP and protecting it.
For more information on our due diligence and other intellectual property, patent, trademark, and copyright related services, click any any of the links on the left.