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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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Friday, March 21, 2008

[a business opportunity] Digest Number 39326

Messages In This Digest (25 Messages)

1.: Starting Your Own Home Daycare Business From: ehmsubqpnvmg

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View All Topics | Create New Topic

Messages

1.: Starting Your Own Home Daycare Business

Posted by: "ehmsubqpnvmg" no_reply@yahoogroups.com ehmsubqpnvmg

Fri Mar 21, 2008 7:05 am (PDT)

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2a.: Our Home Business PROGRAM Makes Sure You RECEIVE MONEY!

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3.: The Guy Who Sold 3 BILLION Is Out To Make YOU R.I.C.H.

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

Fri Mar 21, 2008 7:06 am (PDT)

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4a.: Want an ATM set up to spit cash out to you monthly? If this sounds l

Posted by: "Michelle's Advertising Service" adservice1008@yahoo.com adservice1008

Fri Mar 21, 2008 7:07 am (PDT)

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5.: Free Lead Capture page

Posted by: "Eric" milestones808@yahoo.com milestones808

Fri Mar 21, 2008 7:08 am (PDT)

<A href="http://www.simplerefer.com/milestones">

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6a.: Our Home Business PROGRAM BRINGS MONEY Right Into Your POCKET!

Posted by: "AFFILIATE GROUP" bonnze16@gmail.com

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Posted by: "Lucky Charm" luckycharm1608@gmail.com

Fri Mar 21, 2008 7:10 am (PDT)

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8a.: SOLUTIONS for Your Future INCOME

Posted by: "LUCKY CHARM" luckycharm1608@gmail.com

Fri Mar 21, 2008 7:11 am (PDT)

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9a.: I'm so Sure this Work from Home Business Works, I'll Let You try it

Posted by: "Michelle's Advertising Service" adservice1008@yahoo.com adservice1008

Fri Mar 21, 2008 7:16 am (PDT)

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10.: the right place. I have made 4 months salary from my old job in jus

Posted by: "Michelle's Advertising Service" adservice1008@yahoo.com adservice1008

Fri Mar 21, 2008 7:19 am (PDT)

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11.1.: www.jobjobsjob.com DOMESTIC and INTERNATIONAL JOBS DIRECTORY

Posted by: "lindaharris24" lindaharris24@yahoo.com lindaharris24

Fri Mar 21, 2008 7:21 am (PDT)

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12.1.: Join a REAL Home Based Business FREE.....Great for the whole family!

Posted by: "Michelle's Advertising Service" adservice1008@yahoo.com adservice1008

Fri Mar 21, 2008 7:22 am (PDT)

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13.: financial freedom along with me. www.HugeCashSystem.com

Posted by: "Michelle's Advertising Service" adservice1008@yahoo.com adservice1008

Fri Mar 21, 2008 7:24 am (PDT)

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Proven skin care/nutritional products by
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Blog:http://www.facebeauty.TV *I have samples*
Advertise your home business with car decals http://www.webdecal.com/at.cgi/457777

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14.1.: Systems work, People fail....It's that simple!

Posted by: "Michelle's Advertising Service" adservice1008@yahoo.com adservice1008

Fri Mar 21, 2008 7:28 am (PDT)

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15.1.: MY POWER MALL really is FR*EE. There is no cost to you. EVER.

Posted by: "Michelle's Advertising Service" adservice1008@yahoo.com adservice1008

Fri Mar 21, 2008 7:30 am (PDT)

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- All tools are FRE*E. You are given everything you need.
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16.1.: Make Money from Deregulated Electricity and Natural Gas in all 50 St

Posted by: "Michelle's Advertising Service" adservice1008@yahoo.com adservice1008

Fri Mar 21, 2008 7:32 am (PDT)

Systems work, People fail....It's that simple!

No sales calls, No selling yourself, No Having to read or learn any new skills!

I will show you how to generate cash at Lightning speed or your money back triple the guarantee!! It's fast, It's easy and you can't lose! People from all walks of life are experiencing returns of $5,000 and more per week! Incomes from $200,000 to $400,000 or more are realistic results from ordinary people just like you!

Unlike "traditional" businesses such as franchises costing $50,000 to $500,000 with no guarantee of income and requiring work levels of 60-80 hours a week this business system has the potential of generating CASH FAST! See results in about 1-15 days! Some individuals have put cash in their pocket within their first few hours of working!

If you are:
Tired & Over worked MLM's &Networkers
Hard working,driven jobbers who are looking to break into the entrepreneur game
Overwhelmed e-book Marketers
Burnt out business owner
Then you Qualify to take the next step. Stop in today and receive full information on this exciting system and learn how you can generate cash within 5 to 6 hours or triple your money back! http://www.thousanddollarprofits.com/61983

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17a.: Just Take Your FIRST STEP to MAKE MONEY!

Posted by: "AFFILIATE GROUP" bonnze16@gmail.com

Fri Mar 21, 2008 7:32 am (PDT)

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And You Will See the Difference!

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Just Take Your First Step to Home Business Solutions
<http://www.quickinfo247.com/9918067/FREE>

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18a.: WORK AT HOME & GET PAID DAILY!

Posted by: "Michelle's Advertising Service" adservice1008@yahoo.com adservice1008

Fri Mar 21, 2008 7:34 am (PDT)

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*Call 888-286-1123 for more information if needed

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19a.: Live The Good Life, Stay at 4 & 5 Star Resorts, Make Money.

Posted by: "Michelle's Advertising Service" adservice1008@yahoo.com adservice1008

Fri Mar 21, 2008 7:36 am (PDT)

Live The Good Life, Stay at 4 & 5 Star Resorts, Make Money.

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20a.: Home Business Program You Can TRUST!

Posted by: "LUCKY CHARM" luckycharm1608@gmail.com

Fri Mar 21, 2008 7:38 am (PDT)

Need More INCOME? But Less TIME?

Since 1985, We've Helped Tens of Thousands of Men and Women
WORLDWIDE build Sucessfull Home Business

INTERESTED? Click Here <http://www.quickinfo247.com/9918067/CB>
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And You Will See the Difference!

START MAKING MONEY NOW!

Just Take Your First Step to Home Business Solutions
<http://www.quickinfo247.com/9918067/FREE>

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21.: Genuine Lifetime Income!! , 3/21/2008, 8:00 am

Posted by: "abusinessopportunity@yahoogroups.com" abusinessopportunity@yahoogroups.com

Fri Mar 21, 2008 7:40 am (PDT)

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22.: I'll get your referrals - You make $434 a month, 3/21/2008, 8:00 am

Posted by: "abusinessopportunity@yahoogroups.com" abusinessopportunity@yahoogroups.com

Fri Mar 21, 2008 7:40 am (PDT)

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

I'll get your referrals - You make $434 a month
Friday March 21, 2008
8:00 am - 9:00 am
(This event repeats every day.)
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23.1.: REAL HOME BUSINESS OPPORTUNITIES THAT REALLY PAY

Posted by: "lindaharris24" lindaharris24@yahoo.com lindaharris24

Fri Mar 21, 2008 7:53 am (PDT)

REAL HOME BUSINESSES WHICH EARN REAL MONEY

http://www.globefetch.com/X2aG9tZS1idXNpbmVzcw.html

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24a.: <== ALL Private Sales (FREE) ==>

Posted by: "pouriif freigigi" frepour@yahoo.co.id frepour

Fri Mar 21, 2008 8:01 am (PDT)

http://PRIVATE-SALES.isfun.net

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25a.: Hot MEETINGS between ADULTS : 21.661.105 Members ! >>>

Posted by: "pouriif freigigi" frepour@yahoo.co.id frepour

Fri Mar 21, 2008 8:01 am (PDT)

http://Hot-Meetings.iscool.net The World's Largest Sex & Swinger Personals Community

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Friday, March 21, 2008

Messages In This Digest (25 Messages)

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Posted by: "ehmsubqpnvmg" no_reply@yahoogroups.com ehmsubqpnvmg

Fri Mar 21, 2008 7:05 am (PDT)

Posted by: "AFFILIATE GROUP" bonnze16@gmail.com

Fri Mar 21, 2008 7:06 am (PDT)

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

Fri Mar 21, 2008 7:06 am (PDT)

Posted by: "Michelle's Advertising Service" adservice1008@yahoo.com adservice1008

Fri Mar 21, 2008 7:07 am (PDT)

Posted by: "Eric" milestones808@yahoo.com milestones808

Fri Mar 21, 2008 7:08 am (PDT)

Posted by: "AFFILIATE GROUP" bonnze16@gmail.com

Fri Mar 21, 2008 7:09 am (PDT)

Posted by: "Lucky Charm" luckycharm1608@gmail.com

Fri Mar 21, 2008 7:10 am (PDT)

Posted by: "LUCKY CHARM" luckycharm1608@gmail.com

Fri Mar 21, 2008 7:11 am (PDT)

Posted by: "Michelle's Advertising Service" adservice1008@yahoo.com adservice1008

Fri Mar 21, 2008 7:16 am (PDT)

Posted by: "Michelle's Advertising Service" adservice1008@yahoo.com adservice1008

Fri Mar 21, 2008 7:19 am (PDT)

Posted by: "lindaharris24" lindaharris24@yahoo.com lindaharris24

Fri Mar 21, 2008 7:21 am (PDT)

Posted by: "Michelle's Advertising Service" adservice1008@yahoo.com adservice1008

Fri Mar 21, 2008 7:22 am (PDT)

Posted by: "Michelle's Advertising Service" adservice1008@yahoo.com adservice1008

Fri Mar 21, 2008 7:24 am (PDT)

Posted by: "Michelle's Advertising Service" adservice1008@yahoo.com adservice1008

Fri Mar 21, 2008 7:28 am (PDT)

Posted by: "Michelle's Advertising Service" adservice1008@yahoo.com adservice1008

Fri Mar 21, 2008 7:30 am (PDT)

Posted by: "Michelle's Advertising Service" adservice1008@yahoo.com adservice1008

Fri Mar 21, 2008 7:32 am (PDT)

Posted by: "AFFILIATE GROUP" bonnze16@gmail.com

Fri Mar 21, 2008 7:32 am (PDT)

Posted by: "Michelle's Advertising Service" adservice1008@yahoo.com adservice1008

Fri Mar 21, 2008 7:34 am (PDT)

Posted by: "Michelle's Advertising Service" adservice1008@yahoo.com adservice1008

Fri Mar 21, 2008 7:36 am (PDT)

Posted by: "LUCKY CHARM" luckycharm1608@gmail.com

Fri Mar 21, 2008 7:38 am (PDT)

Posted by: "abusinessopportunity@yahoogroups.com" abusinessopportunity@yahoogroups.com

Fri Mar 21, 2008 7:40 am (PDT)

Posted by: "abusinessopportunity@yahoogroups.com" abusinessopportunity@yahoogroups.com

Fri Mar 21, 2008 7:40 am (PDT)

Posted by: "lindaharris24" lindaharris24@yahoo.com lindaharris24

Fri Mar 21, 2008 7:53 am (PDT)

Posted by: "pouriif freigigi" frepour@yahoo.co.id frepour

Fri Mar 21, 2008 8:01 am (PDT)

Posted by: "pouriif freigigi" frepour@yahoo.co.id frepour

Fri Mar 21, 2008 8:01 am (PDT)

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