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

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7.: Prosperity From Purpose Marketing

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

Mon Mar 10, 2008 6:42 pm (PDT)

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Mon Mar 10, 2008 6:43 pm (PDT)

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Messages in this topic (1515)

9a.: You CAN retire in one Year

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Mon Mar 10, 2008 6:44 pm (PDT)

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Messages in this topic (11)

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Mon Mar 10, 2008 6:45 pm (PDT)

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11.: (no subject)

Posted by: "HY" info2@myaltos.info ygmailer987

Mon Mar 10, 2008 6:51 pm (PDT)

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

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

Mon Mar 10, 2008 7:06 pm (PDT)

Allow your business to stack additional sales (and additional incomes)

on top of the primary purchase and MAKE MORE MONEY WITHOUT DOING ANY
ADDITIONAL WORK!

Find out how NOW! http://simurl.com/uuu-gg-VV

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17.1.: REAL HOME BUSINESS OPPORTUNITIES THAT REALLY PAY

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

Mon Mar 10, 2008 7:10 pm (PDT)

REAL HOME BUSINESSES WHICH EARN REAL MONEY

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

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17.2.: REAL HOME BUSINESS OPPORTUNITIES THAT REALLY PAY

Posted by: "don_vincent_01" don_vincent_01@yahoo.com don_vincent_01

Mon Mar 10, 2008 7:23 pm (PDT)

REAL HOME BUSINESSES WHICH EARN REAL MONEY

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

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18a.: Create $100s Over Over ....

Posted by: "Heather Turnbow" millionairemommy@gmail.com millionairefromhome

Mon Mar 10, 2008 7:18 pm (PDT)

Create Hundreds Again Again ...

Its Working SO AWESOME for me ...

I will show you EXACTLY HOW ...

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Heather Turnbow

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19.: The Best 2 -tier Affiliate Program

Posted by: "Online news 2008" tawesomedeals@yahoo.com tawesomedeals

Mon Mar 10, 2008 7:19 pm (PDT)

The Best 2 -tier Affiliate Program

I just wanted to let you in on a brand new affiliate
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creating some incredible buzz!
First: It's run my Nick Marks - a name you can trust -
(Internet Marketer Of The Year 07)
Here's the link to sign up: http://www.superaffiliatelab.com/index.php?a_aid=6ce62210&a_bid=3a30978d
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=> These offers are converting a very respectable 4.5% of general traffic.
=> And converting an incredible 55%+ of sales on thank you pages!
And... When it comes to how much they're going to pay you,
it get's even better!
=> They'll pay you $10 To Give Away A Free-DVD!
=> And $70 To Give Away A Free-Website!
(No limit on how many you can give away)
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This is brand new... So you highly recommend you join right now...
Go here and sign up now:
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To your success,

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20a.: Are YOU telling these 7 network marketing Lies? , 3/10/2008, 8:00 pm

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

Mon Mar 10, 2008 7:25 pm (PDT)

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

Are YOU telling these 7 network marketing Lies?
Monday March 10, 2008
8:00 pm - 9:00 pm
(This event repeats every day.)
(The next reminder for this event will be sent in 19 minutes.)
Location: http://steps2profits.com
Street: 2614 Harvey Road
City State Zip: Beaufort, S.C. 29902
Phone: 843-278-5289

Notes:
When you've been involved in network marketing for as long as I
Have you think you've "seen it all".

But lately I've become more and more concerned with some of the
Misinformation, misleading claims and downright LIES that are
Being told in our industry. (Often by people who should know
Better...)

Prospects and distributors are being promised everything under
The sun to get them to join and build the business. They are
told that success will be easy and anyone can do it.
The problem is...

Once these people join and discover that it DOES take a bit of
Work and skill to build a successful business, most of them feel
like they have been lied to and realize that they are not going
To just get "something for nothing".

This leaves a bad taste in their mouth about the entire industry
And makes the job more difficult for all of us.

This is why I was so excited when I read a brand new report from
My friend and well-known mlm'er Ann Sieg titled, "The 7 Great Lies
Of Network Marketing".

http://steps2profits.com

After reading this hard hitting 35 page report, I can guarantee
You one thing...

This thing is going to shake up the entire industry! It's even
Going to make some people angry. Very angry!

Some (those TELLING these lies) will be angry because she is
Exposing them for what they really are.

Other (those who have been lied to) will be angry when they
Discover the REAL truth that their uplines have been hiding from
Them all along.

This is the most honest and insightful report on our industry
I've ever read.

And the best part is Ann is giving this report away at no cost.
Personally, I think she should be charging for this
Information... It's just too powerful.

Go right now to the website below and grab your
Free Copy of "The 7 Great Lies of Network Marketing".

http://steps2profits.com

June Giusto
eagle1@steps2freedom.com
843-278-5289

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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Messages in this topic (2)
20b.: Are YOU telling these 7 network marketing Lies? , 3/10/2008, 8:00 pm

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

Mon Mar 10, 2008 7:40 pm (PDT)

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

Are YOU telling these 7 network marketing Lies?
Monday March 10, 2008
8:00 pm - 9:00 pm
(This event repeats every day.)
Location: http://steps2profits.com
Street: 2614 Harvey Road
City State Zip: Beaufort, S.C. 29902
Phone: 843-278-5289

Notes:
When you've been involved in network marketing for as long as I
Have you think you've "seen it all".

But lately I've become more and more concerned with some of the
Misinformation, misleading claims and downright LIES that are
Being told in our industry. (Often by people who should know
Better...)

Prospects and distributors are being promised everything under
The sun to get them to join and build the business. They are
told that success will be easy and anyone can do it.
The problem is...

Once these people join and discover that it DOES take a bit of
Work and skill to build a successful business, most of them feel
like they have been lied to and realize that they are not going
To just get "something for nothing".

This leaves a bad taste in their mouth about the entire industry
And makes the job more difficult for all of us.

This is why I was so excited when I read a brand new report from
My friend and well-known mlm'er Ann Sieg titled, "The 7 Great Lies
Of Network Marketing".

http://steps2profits.com

After reading this hard hitting 35 page report, I can guarantee
You one thing...

This thing is going to shake up the entire industry! It's even
Going to make some people angry. Very angry!

Some (those TELLING these lies) will be angry because she is
Exposing them for what they really are.

Other (those who have been lied to) will be angry when they
Discover the REAL truth that their uplines have been hiding from
Them all along.

This is the most honest and insightful report on our industry
I've ever read.

And the best part is Ann is giving this report away at no cost.
Personally, I think she should be charging for this
Information... It's just too powerful.

Go right now to the website below and grab your
Free Copy of "The 7 Great Lies of Network Marketing".

http://steps2profits.com

June Giusto
eagle1@steps2freedom.com
843-278-5289

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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21a.: Lets Face It Together...You Are Behind On Your Bills...Let Us Pay Th

Posted by: "Curtis Frierson" therocgroup4@yahoo.com therocgroup4

Mon Mar 10, 2008 7:28 pm (PDT)

www.we-pay-your-debts.biz

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22.: How can you Earn Money On The Web?

Posted by: "earnnotes45" earnnotes45@yahoo.com earnnotes45

Mon Mar 10, 2008 7:29 pm (PDT)

The Great Opportunity for Earn Money On line With the help of Affiliate
programes, A home Based Business And Internet marketing.

More Details:- http://www.freewebs.com/easycashcosmos2007/index.htm

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23a.: TAX FREUD - NEVER FEAR the IRS AGAIN!

Posted by: "Michael Carr" i.am@contrarytoordinary.com iamcontrarytoordinary

Mon Mar 10, 2008 7:38 pm (PDT)

Just in time for the upcoming 2008 Tax Season - the *updated* release of the popular ebook Tax Freud!

Full of insightful insider information, Tax Freud will teach you everything you need to know about the Psychology of the IRS and How to Use It Against Them.

Once you read this ebook you will never fear the IRS (ever) again!

----- Get Your Copy TODAY

by going to:

http://contrarytoordinary.com/taxfreud.html

WHY?

Because you never know when YOU might get a letter from the IRS...

----------

Enjoy the day and seize it,

The CTO Society

Contrary To Ordinary

Conventional Wisdom for Unconventional People

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Posted by: "sam srey" comworld778@yahoo.com comworld778

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Mon Mar 10, 2008 6:23 pm (PDT)

Posted by: "etraffic systems" yg1@emarketingsystems.biz

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

Mon Mar 10, 2008 6:34 pm (PDT)

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

Mon Mar 10, 2008 6:38 pm (PDT)

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

Mon Mar 10, 2008 6:38 pm (PDT)

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

Mon Mar 10, 2008 6:42 pm (PDT)

Posted by: "41 Marketing" megaads@41marketing.com megaads02

Mon Mar 10, 2008 6:43 pm (PDT)

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

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

Mon Mar 10, 2008 6:45 pm (PDT)

Posted by: "HY" info2@myaltos.info ygmailer987

Mon Mar 10, 2008 6:51 pm (PDT)

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

Mon Mar 10, 2008 6:56 pm (PDT)

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

Mon Mar 10, 2008 6:59 pm (PDT)

Posted by: "Ashley Davison" akt@yuhknow.com rocka9

Mon Mar 10, 2008 7:01 pm (PDT)

Posted by: "ffreefree30" ffreefree30@yahoo.com ffreefree30

Mon Mar 10, 2008 7:04 pm (PDT)

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

Mon Mar 10, 2008 7:06 pm (PDT)

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

Mon Mar 10, 2008 7:10 pm (PDT)

Posted by: "don_vincent_01" don_vincent_01@yahoo.com don_vincent_01

Mon Mar 10, 2008 7:23 pm (PDT)

Posted by: "Heather Turnbow" millionairemommy@gmail.com millionairefromhome

Mon Mar 10, 2008 7:18 pm (PDT)

Posted by: "Online news 2008" tawesomedeals@yahoo.com tawesomedeals

Mon Mar 10, 2008 7:19 pm (PDT)

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

Mon Mar 10, 2008 7:25 pm (PDT)

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

Mon Mar 10, 2008 7:40 pm (PDT)

Posted by: "Curtis Frierson" therocgroup4@yahoo.com therocgroup4

Mon Mar 10, 2008 7:28 pm (PDT)

Posted by: "earnnotes45" earnnotes45@yahoo.com earnnotes45

Mon Mar 10, 2008 7:29 pm (PDT)

Posted by: "Michael Carr" i.am@contrarytoordinary.com iamcontrarytoordinary

Mon Mar 10, 2008 7:38 pm (PDT)

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