Our IP solicitors and patent attorneys specialise in providing IP due diligence services tailored for the professional services industry.
Intellectual Property (IP) due diligence is a critical element of a growing range of business transactions including investments, M&As, financing arrangements, partnerships and collaborations, and joint ventures.
In fact, a substantial proportion of the businesses involved in these transactions rely on IP assets to protect their market share and competitive advantage.
WHAT SHOULD IP DUE DILIGENCE COVER?
The scope of the IP due diligence you should undertake will vary depending on the transaction, the purpose of the due diligence and your priorities. However, in general terms, it should involve:
- The identification of the IP assets relevant to the transaction itself (which may be multiple rights, or a single right being licensed for example) and verifying the ownership of such rights.
- A review of the relevant IP Portfolio Review to ensure either that those rights are appropriately registered, or you understand the status of any pending applications, and that rights are being properly maintained and renewal fees paid.
- An examination of the related contracts (licensing agreements, assignment agreements, joint venture and collaboration agreements, NDAs) required to understand the ownership position (or rights to use those rights) and how the rights are currently being exploited.
- An investigation of any ongoing or past legal proceedings involving the IP assets.
- Confirmation the IP maps to the business plan of the company, particularly with regards to territorial scope, protection provided by the relevant rights (e.g. claim scope of the patent(s)) and that it is being licensed or exploited consistently with this.
- The identification and evaluation of any potential IP disputes, challenges to validity, or issues with enforceability.
- An evaluation of any relevant third-party rights and limitations on use of licensed-in IP.
The only problem is that historically traditional IP due diligence has not focussed on the commercially relevant points above. Instead it consisted of little more than a long list of IP rights that offers little indication as to the value these rights really contribute to the business.
HOW CAN POTTER CLARKSON MAKE IP DUE DILIGENCE EASIER FOR YOU?
Potter Clarkson has over 70 highly specialist patent attorneys who are technical experts in their relevant field. By combining that unparalleled technical excellence with a team of IP solicitors with substantial experience in undertaking due diligence exercises in the context of large M&A transactions or investments, we are able to ensure our due diligence approach is commercial and focussed on the utility of the rights themselves and how these are being deployed by the target.
Having conducted IP due diligence for investors, insurers, financial institutions, corporate financiers, and other law firms for decades, we have employed all our skills and expertise to build our own proven IPDD model, VerifyiP.
Regardless of the nature of your engagement with an IP-rich target company, VerifyiP will provide you with the insight and confirmation you need to make the IP related decisions your transactions depend upon.
