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Intellectual Property Due Diligence

Submitted By: David Dawsey | Word Count: 849 | Views: 134

The importance of due diligence in any investment, merger, or acquisition decision cannot be understated. Decisions can no longer be made based solely upon a good business plan. In today's knowledge based economy intellectual property (IP) is often a company's single most valuable asset. However, IP due diligence is typically an afterthought.

The Goals

The goals of IP due diligence should be collaboratively identified by the organization leading the general due diligence investigation and the IP due diligence team. The goals should then be reduced to an IP due diligence plan.

The IP due diligence team should consist of independent IP counsel. The target company's IP counsel should not be used as one can never fully critique their own work, in addition to the potential conflicts of interest.

Several factors must be considered in identifying the goals of the plan. First, the team should discuss the nature of the transaction. IP due diligence goals will differ for investments, mergers, and acquisitions. Secondly, the financial value of the transaction must be considered. There is no use in completing $1 million in due diligence for a $1 million dollar transaction. Third, the risk associated with the transaction must be analyzed. For instance, a $1 million venture capital (VC) investment in a high-tech start-up has a much higher probability of loss than a $100 million merger of established companies. Fourth, the underlying reason for the transaction should be discussed. For example, if a company is acquiring a target company for a particular product line or technology there should be a primary focus on the IP protecting that interest.

The Scope

The scope of IP due diligence investigations is limited by the goals identified above. The scope of IP due diligence should include investigations into the patents, trademarks, copyrights, and trade secrets of the target company to identify weaknesses, potential liabilities, and potential opportunities.

There are some general considerations applicable to all forms of IP. For instance, all of the target company's current IP should be identified and cataloged, including current patent and trademark applications. This process should identify the dates of application, issuance, expiration, required maintenance payments, and whether foreign IP protection has been obtained. Additionally, the true ownership of each piece of intellectual property must be identified. This is particularly true for IP that has been licensed or assigned to the target company. Ownership verification requires meticulously analyzing assignments and licensing agreements, as well as cross-referencing the Patent & Trademark Office files. A golden rule of IP due diligence is to independently verify everything!

There are several aspects of IP due diligence that are unique to situations wherein the target company possesses a patent portfolio. A complete investigation into a company's patent portfolio can be expensive, yet the cost is typically a drop in the bucket when compared to the cost of litigating a patent infringement claim. Carefully identifying the goals of the IP due diligence investigation will often eliminate the need to completely analyze over half of a company's patents. After all, there is no need to perform due diligence on outdated IP that the company no longer uses. Alternatively, IP that is essential to a company's operations should be afforded additional scrutiny.

An IP due diligence plan should include an infringement analysis of the company's key IP assets. Key patents should be analyzed first to determine if they sufficiently cover the product line of interest. It is not uncommon to find that a company's patent portfolio does not adequately protect their main product lines.

The analysis should then turn to competitor's products. It is essential to identify potential infringement lawsuits during the due diligence investigation. One must determine both whether competing products infringe the target company's patents and if the target company's products infringe patents owned by third parties. During this investigation the IP due diligence team can also identify whether the target company's patents are very broad and strong or narrow and weak. The strength of patents has a direct relationship to their value.

A target company may be willing to contribute to the cost of the infringement analysis portion of the IP due diligence. This is because a non-infringement opinion from counsel can protect a company from claims of willful patent infringement. When a company relies in good faith on a competent opinion of an attorney that the company's product does not infringe a third party's patent, the company will not be held to be a willful infringer. This is important because actual damages can be increased threefold in cases of willful infringement.

Comprehensive due diligence investigations into trademark, copyright, and trade secret matters are not nearly as involved as patent investigations. However, when mergers or acquisitions involve ownership transfer of valuable trademarks it is imperative to investigate the validity, ownership, and potential infringement claims of the mark.

Conclusion

IP due diligence is necessary to avoid costly mistakes and properly determine the value of business transactions involving IP. This is true for both traditional brick and mortar companies and high tech companies. The specialized nature of IP due diligence requires that an IP attorney be retained to properly perform the investigations.

Published At: Isnare Free Articles Directory
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Monday, March 17, 2008

[87hotrod] Digest Number 34845

business associates and friends exchange ideas and information

Messages In This Digest (25 Messages)

1.1.: Email 2.3 Million Tarteded Opt-In Prospects DAILY! From: zzzzzzz

2.1.: Do you have $1 in your E-Gold??? From: Raymond E Bess

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25.1.: Important Anouncement, Content nearly banned From: G Generalfoundation

View All Topics | Create New Topic

Messages

1.1.: Email 2.3 Million Tarteded Opt-In Prospects DAILY!

Posted by: "zzzzzzz" cucubeda@yahoo.com cucubeda

Mon Mar 17, 2008 5:28 pm (PDT)

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2.1.: Do you have $1 in your E-Gold???

Posted by: "Raymond E Bess" gbess@yahoo.com gbess

Mon Mar 17, 2008 5:30 pm (PDT)

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3a.: Let This System Work For You

Posted by: "Barb Kitzmann" success@safelist-mail.com bakitzmann

Mon Mar 17, 2008 5:33 pm (PDT)

Let This System Work For You

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4.1.: Google Top Listing Miracle!

Posted by: "bbbbbbb" zeynep_marketing_004@yahoo.com zeynep_marketing_004

Mon Mar 17, 2008 5:41 pm (PDT)

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5a.: Blast Your Ads to OVER 37 Million

Posted by: "C.S." raymondconduit@yahoo.com raymondconduit

Mon Mar 17, 2008 5:41 pm (PDT)

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Raymond Conduit

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6.: Get Paid $3/hr to Build Your Online Income, GUARANTEED!, 3/17/2008,

Posted by: "87hotrod@yahoogroups.com" 87hotrod@yahoogroups.com

Mon Mar 17, 2008 5:42 pm (PDT)

Reminder from: 87hotrod Yahoo! Group
http://groups.yahoo.com/group/87hotrod/cal

Get Paid $3/hr to Build Your Online Income, GUARANTEED!
Monday March 17, 2008
9:00 pm - 10:00 pm
(This event repeats every day.)
Location: www.freewebs.com/get-paid-3-dollars-hr-online

All Rights Reserved
Copyright © 2008
Yahoo! Inc.
http://www.yahoo.com

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http://privacy.yahoo.com/privacy/us

Terms of Service:
http://docs.yahoo.com/info/terms/

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7.: Genuine Lifetime Income!! , 3/17/2008, 9:00 pm

Posted by: "87hotrod@yahoogroups.com" 87hotrod@yahoogroups.com

Mon Mar 17, 2008 5:42 pm (PDT)

Reminder from: 87hotrod Yahoo! Group
http://groups.yahoo.com/group/87hotrod/cal

Genuine Lifetime Income!!
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(This event repeats every day.)

Notes:
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Copyright © 2008
Yahoo! Inc.
http://www.yahoo.com

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8a.: Is your Sponsor Really helping you? No!... lh

Posted by: "James Young" james123you@yahoo.com james123you

Mon Mar 17, 2008 5:47 pm (PDT)

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Regards,
Your Fellow Marketer
James Young.

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9.1.: -||- Get Paid Again and AGAIN Automatically !!! -||-

Posted by: "41 Marketing" qualityads@41marketing.com qualityads03

Mon Mar 17, 2008 5:48 pm (PDT)

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10.1.: Email 70 MILLION Targeted - Opt-In Prospects Every Month! That's 2.3

Posted by: "Send your ad TO 37,221,932 PEOPLE DAILY" safelistdb@gmail.com prowealthmom

Mon Mar 17, 2008 5:50 pm (PDT)

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11.1.: Highest Paid Surveys Online!

Posted by: "zzzzzzz" cucubeda@yahoo.com cucubeda

Mon Mar 17, 2008 5:51 pm (PDT)

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12.1.: Get Your Google Ads FREE Using This Secret

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Mon Mar 17, 2008 5:53 pm (PDT)

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This is not spam. You receive this mail because you are a member of this yahoo group. If you do not wish to receive any more mails from this yahoo group, please follow these 3 steps:
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By selecting this option, you will be stil member of this yahoo group but will not receive individual mails to your email. If you wish to totally remove this yahoo group, click on the "Leave Group" button in Edit Membership page which is located next to blue "Save Changes" buton.
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13.: Receive $397 Paid To You Immediately !

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Mon Mar 17, 2008 5:53 pm (PDT)

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14.1.: Your CHRISTMAS New YEAR GIFT !!

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Mon Mar 17, 2008 5:57 pm (PDT)

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15.1.: Email 81 Million Targeted Prospects Every Month

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Mon Mar 17, 2008 6:06 pm (PDT)

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Mon Mar 17, 2008 6:07 pm (PDT)

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17a.: EXPOSED: We Show You WHERE The Internet GOLD MINES Are & How To Make

Posted by: "swingcurrency" seksionebaby@gmail.com swingcurrency

Mon Mar 17, 2008 6:11 pm (PDT)

Internet classified websites are GOLD MINES!!!
We show you how to MILK MONEY from them.

http://www.shrinkm.com/bigmoney/

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18.1.: Used Furniture for Almost FREE!

Posted by: "zzzzzzz" cucubeda@yahoo.com cucubeda

Mon Mar 17, 2008 6:12 pm (PDT)

Click to Enter The Ultimate Source for Discount Used Furniture Nationwide
Where you can find used furniture ANYONE can afford!
http://clickst.FURNITURE.hop.clickbank.net/
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19.1.: Search & Download over 80 Million Movies Online!

Posted by: "bbbbbbb" zeynep_marketing_004@yahoo.com zeynep_marketing_004

Mon Mar 17, 2008 6:12 pm (PDT)

Play any downloaded movie on your computer, Home theatre or Television. Plus we provide software to easily burn your DVD Videos to CD or DVD!. Join now and find everything you need to share with millions of users all over the world!
http://clickst.THEMOVDWN.hop.clickbank.net/

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20.1.: Stop Being An Internet Marketing Failure!

Posted by: "David Macneil" dmacnei1_1@yahoo.com dmacnei1_1

Mon Mar 17, 2008 6:12 pm (PDT)

Still Looking for a Solid Money Making Program?

We have joined just about every program out
there. We have tried everything...We have
been promised the Moon...only to have
it pulled out from under us..

We were ready to give up until a good
friend Jane Mark from JPE Advertising
showed us her earnings from 1 simple
program...A Program run by people with
Integrity...A program that anyone can
do...A program that you can teach to
anyone so they can duplicate your success!

If you are tired of all the Crap, like we
were, then take a look at a Good, Honest,
Paying Program...It will take Work, but
nothing in Life is FREE..

Decide for yourself...Come visit us and
see if it is for you!!

http://secrets1.toolsuccess.com

Its not for everyone...because everyone
will not be successful....and everyone
does not want to work!

The program is there...Do You Have What It
Takes

http://secrets1.toolsuccess.com

Your Partner In Success-
Dave MacNeil
secrets@nycap.rr.com (yes my real addy)

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21.1.: Get Paid to Do Things You Love!

Posted by: "zzzzzzz" cucubeda@yahoo.com cucubeda

Mon Mar 17, 2008 6:14 pm (PDT)

What if I told you it was possible to get paid $10 to $90 an HOUR just to go to your favorite mall to shop, eat at your favorite restaurant, golf at your favorite course, or enjoy a movie at your local theater AND get it all for FREE! And, not only get everything for FREE and get a paycheck for it, but someone pays for the gas in your car.
People have made as much as $7,000 per month secret shopping for companies! You can be your own boss today!!!
http://clickst.GETPAID2.hop.clickbank.net/
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22.1.: Do You Need Accounting Software For Your Small Business?

Posted by: "Allen Lewis" hplour42@yahoo.com hplour42

Mon Mar 17, 2008 6:22 pm (PDT)

If you're anything like me then you dislike with a vengeance doing your accounts and taxes.

So how can you make this process easier, less painful and cut your accountancy fees?

Well buying an accounting software package is one way.

First of all you need to decide whether you are going to keep your accounting records manually, that is using pen and paper, or whether you are going to computerize the process.

If you decide that computerizing the process is the way to go then you need to decide whether to buy an accounting software package, for example Sage or Quicken, or whether a spreadsheet, such as Microsoft Excel will suit your needs better.

As a general rule if you are a cash business that just needs to record income and expenditure then you are better off using a spreadsheet.

So, should you choose an accounting software package? Yes if:

· You have customers to whom you extend credit and you buy goods in the same way

· You process in excess of 50 transactions per month

· Your business is an Incorporated Company (Limited Company in the UK)

and

· You are computer literate or are willing to learn!

For more of article go here:

http://mpoweryourself.com/accounting/do-you-need-accounting-software-for-your-small.html

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23.1.: Blast Your Ad To Over 3,000,000 Websites Daily!

Posted by: "bbbbbbb" zeynep_marketing_004@yahoo.com zeynep_marketing_004

Mon Mar 17, 2008 6:24 pm (PDT)

Blast your ad to over 3,000,000 websites daily. That's over 90,000,000 websites montly. Blast as often as you like and for all your products and services!
http://clickst.TANETWORK.hop.clickbank.net/

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24.1.: Turn $16 payments into potential millions!

Posted by: "ANN TATE" my.yg4.subscribe@gmail.com

Mon Mar 17, 2008 6:29 pm (PDT)

Turn $16 payments into potential millions!
This is your Private Personal Invitation to join one of the worlds most rewarding financial associations. Now you can collect $16 payments in a
matter of days.

The only qualification required is that you must be able to follow simple instructions carefully to set yourself up and collect all the money which is
available.

Go here and get started today! Your millions are waiting!

http://tinyurl.com/2wokte

Act quickly or your $5 million position may be taken by someone else.

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25.1.: Important Anouncement, Content nearly banned

Posted by: "G Generalfoundation" kevin_maverick05@yahoo.com kevin_maverick05

Mon Mar 17, 2008 6:36 pm (PDT)

Hello my Friend:

OK,
So youre looking for a way to generate a TON of cash
without ANY effort.

You need to make some FAST CASH and cant wait for MATRIX to FILL before you get paid.

You want an HONORABLE and LEGAL way to make MONEY online.

You want to pay OFF your CAR, HOUSE and CREDIT CARD bills
in the next 6 months.

You can join via Safe Pay, Alert Pay, E-Gold or money order.

Be willing to start TODAY and expect to make some cash
TOMORROW.

You want me to mail ads for you until you are QUALIFIED?
Then click now:

****************************************************************
http://www.secretpays.us.tc

****************************************************************

You will NOT get an autoresponder; you will get an email from ME
personally!

Hope to read from you soon!
Maria
<a href=http://www.secretpays.us.tc>http://www.secretpays.us.tc</a>

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Article of related interest

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Monday, March 17, 2008

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Posted by: "zzzzzzz" cucubeda@yahoo.com cucubeda

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Posted by: "41 Marketing" qualityads@41marketing.com qualityads03

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Posted by: "Send your ad TO 37,221,932 PEOPLE DAILY" safelistdb@gmail.com prowealthmom

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Posted by: "Michael J. Sullivan" sulli76@yuhknow.com micsul76

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Mon Mar 17, 2008 6:36 pm (PDT)

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