US-Based Patent Due Diligence
IP due diligence plays a critical role in the value of a deal. These include mergers & acquisitions, joint ventures, private equity, licensing, spin-offs, and the like.
We can assist with patent-related aspects of a transaction. Each IP due diligence inquiry is unique, but it should achieve at least four objectives:
- assure the entity that it is receiving value for its investment,
- identify impediments to developing the intended business,
- provide the means to renegotiate terms if there exists less value than expected, and
- familiarize the acquiring company with the assets it is acquiring.
Patent due diligence starts with a review of each patent and its prosecution history. Preliminary issues investigated include ownership, inventorship, inequitable conduct, and maintenance fees.
Two critical components of a due diligence investigation are infringement and validity studies. These can alter the incentives for completing the deal. A suitor wants freedom to operate (FTO) with an acquired technology. They need to ensure that the acquired patent portfolio is valid and enforceable.
Finally, the strength and breadth of the claims of each patent is crucial. In other words, how easy would it be to design around this patent?
When there are hundreds of patents in a transaction, there is an enormous amount of work. We have experience with patent due diligence investigations and can help.