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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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18a.: Make Tons of Money On Autopilot By Blogging Part-Time!

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

Tue Mar 18, 2008 4:02 pm (PDT)

Did you know you can make thousands of dollars blogging part-time? If you want to start making passive income with the internet, read on!
"How You Can Make Tons of Money On Autopilot By Blogging Part-Time!"
The Step-By-Step Guide
http://clickst.GUFOO.hop.clickbank.net/

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19.1.: Start Earning NOW !!!! It's Quick and Easy!

Posted by: "Business-Mart" 41advertising@41marketing.com adby41marketing05

Tue Mar 18, 2008 4:07 pm (PDT)

Get paid to click on ads and visit websites.

Earnings Example

You click 10 ads per day = $0.10
20 referrals click 10 ads per day = $2.00
Your daily earnings = $2.10
Your weekly earnings = $14.70
Your monthly earnings = $63.00

The above example is based only on 20 referrals and 10 daily clicks.
Some days you will have more clicks available !!!

Start earning NOW! Click Here: http://bux.to/?r=maluisa

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20a.: Domain and WebSite vinatorul.ro for SALE

Posted by: "richard2001ro" richard2001ro@flash.ro richard2001ro

Tue Mar 18, 2008 4:11 pm (PDT)

Domeniu si WebSite vinatorul.ro de vanzare
Domain and WebSite vinatorul.ro for SALE

PORTAL SI DOMENIU DE VANZARE! RELATII LA TELEFON 0722.362.009

www.vinatorul.ro <http://www.vinatorul.ro>

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21.1.: Earn $300-$500 Every Day From Affiliate Programs!

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

Tue Mar 18, 2008 4:17 pm (PDT)

Incredible!
...A 33 Year-Old Ex-Grocery Store 'Slave' Discovers the REAL Secret of Earning $300-$500 Every Day From Affiliate Programs...While 99% of Affiliates Continue to FAIL Online!
http://clickst.WIZARD1973.hop.clickbank.net/

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22a.: Domain and WebSite vinatorul.ro for SALE

Posted by: "richard2001ro" richard2001ro@flash.ro richard2001ro

Tue Mar 18, 2008 4:18 pm (PDT)

Domeniu si WebSite vinatorul.ro de vanzare
Domainu and WebSite vinatorul.ro for SALE

PORTAL SI DOMENIU DE VANZARE! RELATII LA TELEFON 0722.362.009

www.vinatorul.ro

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23a.: Become a Google Pro Now!

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

Tue Mar 18, 2008 4:20 pm (PDT)

I Make Over $160,000.00 Online Every Single Month
without Owning a Website or A Product,
and All I Do is Advertise Websites with Google!
http://clickst.GOOGLEMP.hop.clickbank.net/

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24a.: Get A FEE Car Now!

Posted by: "ayse" berra_tuzcu61@yahoo.com berra_tuzcu61

Tue Mar 18, 2008 4:21 pm (PDT)

Get A FEE Car Now!
FREE Car Finder!
Get Your New Car and Get Your Cash!
Learn How to Get Paid to Drive!
Get a Brand New Car For Free!
Make $3000 A Month Driving Your Own Car!
A- Join
" Get instant access to all of our programs.
" Learn how to get a free car and get paid for driving it!
" You also get access to our directory to find sponsors in your area!
B- Apply! Choose the program of your choice and get started!
C- Get your new car and get your cash!
http://clickst.CARFINDER0.hop.clickbank.net/

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25.1.: Photographers Needed Worldwide For a Great Paying Job!

Posted by: "iklim" ayse_marketing_002@yahoo.com ayse_marketing_002

Tue Mar 18, 2008 4:22 pm (PDT)

Photographers Needed Worldwide For a Great Paying Job!
Get Paid to Use Your Digital Camera!
Earn $250 A Day with Genuine Home-Based Photography System!
Lots & Lots of Money - With Your Digital Camera!
Become a Freelance Digital Photographer!
Make Money With Your Digital Camera Today!
"Genuine home-based photography system lets you earn
up to $250 a day and also gives you the opportunity to earn
monthly residual income off every photo that you submitonline!"

Discover How to Make Money
- Lots & Lots of Money -
With Your Digital Camera!
http://clickst.CAMERA.hop.clickbank.net/

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Posted by: "Earn $3000 per week" finger00o@yahoo.com finger00o

Tue Mar 18, 2008 3:24 pm (PDT)

Posted by: "Free DVD movies Download" minnel00o@yahoo.com minnel00o

Tue Mar 18, 2008 3:24 pm (PDT)

Posted by: "Earn $3000 per week" minnel00o@yahoo.com minnel00o

Tue Mar 18, 2008 3:28 pm (PDT)

Posted by: "V. ferreira" vito_kari@yahoo.de vito_kari

Tue Mar 18, 2008 3:32 pm (PDT)

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

Tue Mar 18, 2008 3:33 pm (PDT)

Posted by: "free.ad_service" don91345@yahoo.com free.ad_service

Tue Mar 18, 2008 3:33 pm (PDT)

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

Tue Mar 18, 2008 3:39 pm (PDT)

Posted by: "Camilla Craig" camillacraig@gmail.com christina_carter123

Tue Mar 18, 2008 3:40 pm (PDT)

Posted by: "Dion" temp12@SAFe-mail.net homanilaopia

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

Tue Mar 18, 2008 3:42 pm (PDT)

Posted by: "Earn $3000 per week" horse00o@yahoo.com horse00o

Tue Mar 18, 2008 3:46 pm (PDT)

Posted by: "vale" berra_tuzcu61@yahoo.com berra_tuzcu61

Tue Mar 18, 2008 3:49 pm (PDT)

Posted by: "vale" berra_tuzcu61@yahoo.com berra_tuzcu61

Tue Mar 18, 2008 3:51 pm (PDT)

Posted by: "Betty Klay" bettyklay23@gmail.com bettyklay80

Tue Mar 18, 2008 3:53 pm (PDT)

Posted by: "a d" weefy1999@gmail.com adregallo

Tue Mar 18, 2008 3:57 pm (PDT)

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

Tue Mar 18, 2008 3:59 pm (PDT)

Posted by: "a d" weefy1999@gmail.com adregallo

Tue Mar 18, 2008 4:00 pm (PDT)

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

Tue Mar 18, 2008 4:02 pm (PDT)

Posted by: "Business-Mart" 41advertising@41marketing.com adby41marketing05

Tue Mar 18, 2008 4:07 pm (PDT)

Posted by: "richard2001ro" richard2001ro@flash.ro richard2001ro

Tue Mar 18, 2008 4:11 pm (PDT)

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

Tue Mar 18, 2008 4:17 pm (PDT)

Posted by: "richard2001ro" richard2001ro@flash.ro richard2001ro

Tue Mar 18, 2008 4:18 pm (PDT)

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

Tue Mar 18, 2008 4:20 pm (PDT)

Posted by: "ayse" berra_tuzcu61@yahoo.com berra_tuzcu61

Tue Mar 18, 2008 4:21 pm (PDT)

Posted by: "iklim" ayse_marketing_002@yahoo.com ayse_marketing_002

Tue Mar 18, 2008 4:22 pm (PDT)

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