Intellectual property (IP) due diligence investigations are generally conducted in conjunction with an investment or acquisition, although sellers are wise to perform their own diligence before initiating any exit strategy.
Boulware & Valoir has extensive experience in due diligence in all intellectual property contexts, including hundred million dollar mergers, initial public offerings (IPO’s), venture capital (VC) investments, and pre-exit diligence reviews. We can even offer FDA diligence in the medical industry. Further, we realize that the level of patent diligence in acquiring a biotechnology company is significantly greater than what is needed in acquiring a consumer product company, and thus tailor our diligence as needed for each job. We don’t just provide a list of exceptions for the deal team, but also provide risk evaluations and solutions to identified problems.
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
- Patent protection and counseling
- Ownership and assignment issues
- In-house IP policy reviews
- Trademark protection and counseling
- Non-compete agreements
- Non-disclosure agreements
- Non-solicitation agreements
- Research and development agreements
- Independent contractor agreements
- Copyright protection and licensing
- 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. We 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, but diligence can be tailored for each client according to time and budget needs.