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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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Sunday, March 23, 2008

[87hotrod] Digest Number 34926

Messages In This Digest (25 Messages)

1a.: Would You Like 500 Bucks, From The Best In The World? From: wealthpromoter101

2a.: 100% Free Opportunity - Get Paid Every time Your Site is Viewed! From: John Corbett

3.: I'll get your referrals - You make $434 a month, 3/23/2008, 9:00 am From: 87hotrod@yahoogroups.com

4a.: You could be earning $1000 to $3,500 a day in just days! From: jdias.euro

5.: Genuine Lifetime Income!! , 3/23/2008, 9:00 am From: 87hotrod@yahoogroups.com

6a.: 600 Emails Per Minute From: Ron Liss

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13.1.: Earn $18,000 Next Month with ADSENSE! From: yusuf

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23.: Genuine Lifetime Income!! , 3/23/2008, 10:00 am From: 87hotrod@yahoogroups.com

24a.: 12,000 Affiliates Are Getting Their Debts ELIMINATED With This Plan. From: 87hotrod@yahoogroups.com

25a.: 12,000 Affiliates Are Getting Their Debts ELIMINATED With This Plan. From: 87hotrod@yahoogroups.com

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Messages

1a.: Would You Like 500 Bucks, From The Best In The World?

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Sun Mar 23, 2008 5:25 am (PDT)

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2a.: 100% Free Opportunity - Get Paid Every time Your Site is Viewed!

Posted by: "John Corbett" novastargroup5@yahoo.com novastargroup5

Sun Mar 23, 2008 5:33 am (PDT)

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3.: I'll get your referrals - You make $434 a month, 3/23/2008, 9:00 am

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

Sun Mar 23, 2008 5:40 am (PDT)

Reminder from: 87hotrod Yahoo! Group
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Sunday March 23, 2008
9:00 am - 10:00 am
(This event repeats every day.)
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All Rights Reserved
Copyright © 2008
Yahoo! Inc.
http://www.yahoo.com

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

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4a.: You could be earning $1000 to $3,500 a day in just days!

Posted by: "jdias.euro" jcalberto@gmail.com jdias.euro

Sun Mar 23, 2008 5:40 am (PDT)

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5.: Genuine Lifetime Income!! , 3/23/2008, 9:00 am

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

Sun Mar 23, 2008 5:40 am (PDT)

Reminder from: 87hotrod Yahoo! Group
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All Rights Reserved
Copyright © 2008
Yahoo! Inc.
http://www.yahoo.com

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

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

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6a.: 600 Emails Per Minute

Posted by: "Ron Liss" rondepot@gmail.com bingoron2

Sun Mar 23, 2008 5:43 am (PDT)

100 or 1 Million Subscribers

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Thats It!

Proceed Here:

==>> http://tinyurl.com/38mrcv

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7.1.: Post FRE*E TEXT ADS EARN CASH!

Posted by: "etraffic systems" yg5@emarketingsystems.biz emarketingsystems

Sun Mar 23, 2008 5:56 am (PDT)

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

Posted by: "zerda" ayse_marketing_003@yahoo.com ayse_marketing_003

Sun Mar 23, 2008 5:58 am (PDT)

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

Posted by: "zerda" ayse_marketing_003@yahoo.com ayse_marketing_003

Sun Mar 23, 2008 5:59 am (PDT)

Photographers Needed Worldwide For a Great Paying Job!
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Earn $250 A Day with Genuine Home-Based Photography System!
Lots & Lots of Money - With Your Digital Camera!
Become a Freelance Digital Photographer!
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"Genuine home-based photography system lets you earn
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Discover How to Make Money
- Lots & Lots of Money -
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*
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10.1.: EARN BIG $$$$$$ FOR FREE - NO BUYING OR SELLING EVER!!!!!!!!!

Posted by: "KATHLEEN FENTON" freehomebusinesses@yahoo.com freehomebusinesses

Sun Mar 23, 2008 6:02 am (PDT)

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Thank You For Your Time,
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11.1.: The InternetGURU is back

Posted by: "Hermann Jahrmann" office@globalpartners.cc hermannjahrmann

Sun Mar 23, 2008 6:05 am (PDT)

Wow, In the last 3 days, we have over 2,000
copies of The Home Income Builder Sold.

This is a true InternetGURU recommendation:

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12a.: What Can You Get For Ten Dollars?

Posted by: "Donna Gain" groupsmailer_74@yahoo.ca groupsmailer_74

Sun Mar 23, 2008 6:06 am (PDT)

A small pizza, a fast food meal, maybe a single admission to a movie or

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See you on the other side of FREEDOM

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13.1.: Earn $18,000 Next Month with ADSENSE!

Posted by: "yusuf" ayse_marketing_004@yahoo.com ayse_marketing_004

Sun Mar 23, 2008 6:07 am (PDT)

Earn $18,000 Next Month with ADSENSE!
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14a.: Greatest Software For Anyone Who Needs Traffic!

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

Sun Mar 23, 2008 6:07 am (PDT)

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15a.: Make $100 over and over with NO advertising

Posted by: "Paul Fowell" paulfow1@yahoo.co.uk paulfow1

Sun Mar 23, 2008 6:13 am (PDT)

Get Paid Guaranteed! Earn $100 per referall! Get paid even in you dont refer anyone through revenue share!
http://www.benpals.com/?535

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16.1.: Get Your Own FR*EE Shopping Mall

Posted by: "Merle Shelbourn" andyshelbourn@yahoo.com

Sun Mar 23, 2008 6:13 am (PDT)

Hello (Friend OR Your AutoResponder Coding),
Could buying the things you purchase everyday - clothes, electronics, books, toys, meals, travel and so much more - really create financial freedom? It can if youre buying through your very own F*REE Power Mall! Let me hit the highlights:
- MY POWER MALL really is FR*EE. There's no cost to you – EVER.
- There's nothing to SELL. All you have to do is shop in any one of 1000 stores on your own personal Mall and buy whatever you and your family need and want.
- There is no qualifying to receive your income. When you make it, it's yours. Pretty simple.
- There are no meetings. People already know how to shop!
- All tools are FR*EE. Youre given everything you need.
My Power Mall has created the perfect system that will harness the Power of Online Spending to Change Lives. In fact, that's their motto. Harnessing the Power of Online Spending to Change Lives!
If youre intrigued and want to know more, please visit my website at: http://www.mypowermall.com/mall/5619 Youll be able to view a great video and have every question answered. And, if you would like a live person to talk to, please contact me at
1-605-720-6490.
I look forward to working with you!
Sincerely,
Merle A. Shelbourn
Masshelb@excite.com

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17.: Easy Way To Make Money,

Posted by: "Michelle's Advertising Service" michellesadbusiness@michellesadvertisingservice adservice1009

Sun Mar 23, 2008 6:29 am (PDT)

Easy Way To Make Money,
Step by step guide you to making money,

www.onlinemoneyincomes.com

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18.1.: Put Your Business in THE GEM SPOTLIGHT for FREE!!!

Posted by: "41 Marketing" megaads@41marketing.com megaads03

Sun Mar 23, 2008 6:37 am (PDT)

Join the Global Business Alliance Network and get your business
featured in The GEM Spotlight for 2 whole days for FREE !!!

GBAN... What is it?

The Global Business Alliance Network is a GEM sponsored group of
international businesses and business people who are willing to work
together in order for all members to benefit through education,
international relationship building, and increased sales!

Why Join?

· Forming Strategic Alliances is an important part of any marketing
plan.

· Increase your potential customer base through networking

· Create mutually beneficial relationships with other companies.
This can happen many ways, such as through the referral process, word-
of-mouth, and advertisement exchange.

· Learning from others by sharing knowledge, experiences, and
gaining new perspectives.

· With GBAN there is no cost or obligation like some other similar
groups.

Here is what you'll get for joining NOW!

· Your business featured in THE GEM SPOTLIGHT for two days.

· Your Link and business info in our directory published on our GBAN
webpage.

· Your business will also be featured (one time) in our weekly
newsletter.

Just click HERE now and Join Us TODAY to get you're business in
THE GEM SPOTLIGHT! http://www.globalextrememarketing.com

Its absolutely FREE!!!

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19a.: Get Started Making Money Right Now!

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

Sun Mar 23, 2008 6:38 am (PDT)

Don't just sit back and watch while everyone else prospers. Jump
right in and start now!

Here is the site:

http://www.wapurl.co.uk/?5OE5FV6

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20a.: 12,000 Affiliates Are Getting Their Debts ELIMINATED With This Plan.

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

Sun Mar 23, 2008 6:41 am (PDT)

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

12,000 Affiliates Are Getting Their Debts ELIMINATED With This Plan...Join Us!
Sunday March 23, 2008
10:00 am - 11:00 am
(This event repeats every day.)
Location: http://www.we-pay-your-debts.biz/mar08

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21a.: 12,000 Affiliates Are Getting Their Debts ELIMINATED With This Plan.

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

Sun Mar 23, 2008 6:41 am (PDT)

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

12,000 Affiliates Are Getting Their Debts ELIMINATED With This Plan...Join Us!
Sunday March 23, 2008
10:00 am - 11:00 am
(This event repeats every day.)
Location: http://www.we-pay-your-debts.biz/mar08

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22a.: 12,000 Affiliates Are Getting Their Debts ELIMINATED With This Plan.

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

Sun Mar 23, 2008 6:41 am (PDT)

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

12,000 Affiliates Are Getting Their Debts ELIMINATED With This Plan...Join Us!
Sunday March 23, 2008
10:00 am - 11:00 am
(This event repeats every day.)
Location: http://www.we-pay-your-debts.biz/mar08

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23.: Genuine Lifetime Income!! , 3/23/2008, 10:00 am

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

Sun Mar 23, 2008 6:41 am (PDT)

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

Genuine Lifetime Income!!
Sunday March 23, 2008
10:00 am - 11:00 am
(This event repeats every day.)

Notes:
Genuine Lifetime Income!!
http://www.moreinfo247.com/9674877/CB
Earn!! 5000 US Dollars per month without Investment

By working only one hour per day from the cyber cafe or PC

Guaranteed Earnings for Lifetime!!

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For more details visit :
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Check Your Mail ID - Inbox Immediately after logging in

Note : If u want to make genuine and handsome Income, please login immediately otherwise please ignore.

Notice; u r receiving this message because u r the member of yahoo groups

Thank You

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24a.: 12,000 Affiliates Are Getting Their Debts ELIMINATED With This Plan.

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

Sun Mar 23, 2008 6:41 am (PDT)

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

12,000 Affiliates Are Getting Their Debts ELIMINATED With This Plan...Join Us!
Sunday March 23, 2008
10:00 am - 11:00 am
(This event repeats every day.)
Location: http://www.we-pay-your-debts.biz/mar08

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25a.: 12,000 Affiliates Are Getting Their Debts ELIMINATED With This Plan.

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

Sun Mar 23, 2008 6:42 am (PDT)

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

12,000 Affiliates Are Getting Their Debts ELIMINATED With This Plan...Join Us!
Sunday March 23, 2008
10:00 am - 11:00 am
(This event repeats every day.)
Location: http://www.we-pay-your-debts.biz/mar08

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Sunday, March 23, 2008

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Posted by: "wealthpromoter101" wealthpromoter101@yahoo.com wealthpromoter101

Sun Mar 23, 2008 5:25 am (PDT)

Posted by: "John Corbett" novastargroup5@yahoo.com novastargroup5

Sun Mar 23, 2008 5:33 am (PDT)

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

Sun Mar 23, 2008 5:40 am (PDT)

Posted by: "jdias.euro" jcalberto@gmail.com jdias.euro

Sun Mar 23, 2008 5:40 am (PDT)

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

Sun Mar 23, 2008 5:40 am (PDT)

Posted by: "Ron Liss" rondepot@gmail.com bingoron2

Sun Mar 23, 2008 5:43 am (PDT)

Posted by: "etraffic systems" yg5@emarketingsystems.biz emarketingsystems

Sun Mar 23, 2008 5:56 am (PDT)

Posted by: "zerda" ayse_marketing_003@yahoo.com ayse_marketing_003

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Posted by: "zerda" ayse_marketing_003@yahoo.com ayse_marketing_003

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Posted by: "KATHLEEN FENTON" freehomebusinesses@yahoo.com freehomebusinesses

Sun Mar 23, 2008 6:02 am (PDT)

Posted by: "Hermann Jahrmann" office@globalpartners.cc hermannjahrmann

Sun Mar 23, 2008 6:05 am (PDT)

Posted by: "Donna Gain" groupsmailer_74@yahoo.ca groupsmailer_74

Sun Mar 23, 2008 6:06 am (PDT)

Posted by: "yusuf" ayse_marketing_004@yahoo.com ayse_marketing_004

Sun Mar 23, 2008 6:07 am (PDT)

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

Sun Mar 23, 2008 6:07 am (PDT)

Posted by: "Paul Fowell" paulfow1@yahoo.co.uk paulfow1

Sun Mar 23, 2008 6:13 am (PDT)

Posted by: "Merle Shelbourn" andyshelbourn@yahoo.com

Sun Mar 23, 2008 6:13 am (PDT)

Posted by: "Michelle's Advertising Service" michellesadbusiness@michellesadvertisingservice adservice1009

Sun Mar 23, 2008 6:29 am (PDT)

Posted by: "41 Marketing" megaads@41marketing.com megaads03

Sun Mar 23, 2008 6:37 am (PDT)

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

Sun Mar 23, 2008 6:38 am (PDT)

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

Sun Mar 23, 2008 6:41 am (PDT)

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

Sun Mar 23, 2008 6:41 am (PDT)

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

Sun Mar 23, 2008 6:41 am (PDT)

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

Sun Mar 23, 2008 6:41 am (PDT)

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

Sun Mar 23, 2008 6:41 am (PDT)

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

Sun Mar 23, 2008 6:42 am (PDT)

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