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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
Permanent Link:
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Friday, March 21, 2008

[a business opportunity] Digest Number 39330

Messages In This Digest (25 Messages)

1a.: First Aid Is On The Way! From: David Macneil

2.: A Worldwide Recession Is Coming: Let Us Payoff ALL Your Bills!, 3/21 From: abusinessopportunity@yahoogroups.com

3.: Genuine Lifetime Income!! , 3/21/2008, 1:00 pm From: abusinessopportunity@yahoogroups.com

4.: BEST FAQs | Interview Questions & Answers | JOBS | and much From: stattri2001

5.1.: Join Our Affiliate Program and Earn 70% on Every Sale From: Danette Ingemansen

6a.: Earn Up To $3,498.53 Every Week From Your Home PC From: stattri2001

7.1.: Do You Need Accounting Software For Your Small Business? From: Allen Lewis

8.: Exciting Opportunity. Don't miss out. From: stattri2001

9.1.: ARE YOU TIRED OF MONTHLY FEES? From: balisha agee

10.: U Can make Several million Dollars every year on the internet, From: stattri2001

11.1.: Email 81 Million Targeted Prospects Every Month From: stattri2001

12a.: Do you have Credit Blemishes?? From: Kim Findlay

13a.: I DONT Want Your Money Just A Few Minutes Of Your Time From: William Floyd

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15.1.: Drop 14 POUNDS in only 7 DAYS! From: pedra

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25.: Genuine Lifetime Income!! , 3/21/2008, 2:00 pm From: abusinessopportunity@yahoogroups.com

View All Topics | Create New Topic

Messages

1a.: First Aid Is On The Way!

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

Fri Mar 21, 2008 12:32 pm (PDT)

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2.: A Worldwide Recession Is Coming: Let Us Payoff ALL Your Bills!, 3/21

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

Fri Mar 21, 2008 12:40 pm (PDT)

Reminder from: abusinessopportunity Yahoo! Group
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Friday March 21, 2008
1:00 pm - 2:00 pm
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Notes:
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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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3.: Genuine Lifetime Income!! , 3/21/2008, 1:00 pm

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

Fri Mar 21, 2008 12:40 pm (PDT)

Reminder from: abusinessopportunity Yahoo! Group
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All Rights Reserved
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4.: BEST FAQs | Interview Questions & Answers | JOBS | and much

Posted by: "stattri2001" stattri2001@yahoo.com stattri2001

Fri Mar 21, 2008 12:41 pm (PDT)

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5.1.: Join Our Affiliate Program and Earn 70% on Every Sale

Posted by: "Danette Ingemansen" ingemansen_danette@yahoo.ca ingemansen_danette

Fri Mar 21, 2008 12:43 pm (PDT)

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6a.: Earn Up To $3,498.53 Every Week From Your Home PC

Posted by: "stattri2001" stattri2001@yahoo.com stattri2001

Fri Mar 21, 2008 12:43 pm (PDT)

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7.1.: Do You Need Accounting Software For Your Small Business?

Posted by: "Allen Lewis" hplour45@yahoo.com hplour45

Fri Mar 21, 2008 12:44 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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8.: Exciting Opportunity. Don't miss out.

Posted by: "stattri2001" stattri2001@yahoo.com stattri2001

Fri Mar 21, 2008 12:44 pm (PDT)

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9.1.: ARE YOU TIRED OF MONTHLY FEES?

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Fri Mar 21, 2008 12:44 pm (PDT)

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10.: U Can make Several million Dollars every year on the internet,

Posted by: "stattri2001" stattri2001@yahoo.com stattri2001

Fri Mar 21, 2008 12:45 pm (PDT)

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11.1.: Email 81 Million Targeted Prospects Every Month

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Fri Mar 21, 2008 12:46 pm (PDT)

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12a.: Do you have Credit Blemishes??

Posted by: "Kim Findlay" lovetostayhome04@yahoo.com lovetostayhome04

Fri Mar 21, 2008 12:58 pm (PDT)

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13a.: I DONT Want Your Money Just A Few Minutes Of Your Time

Posted by: "William Floyd" ultibiz08@yahoo.com ultibiz08

Fri Mar 21, 2008 1:02 pm (PDT)

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14.1.: REAL HOME BUSINESS OPPORTUNITIES THAT REALLY PAY

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Fri Mar 21, 2008 1:03 pm (PDT)

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15.1.: Drop 14 POUNDS in only 7 DAYS!

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Fri Mar 21, 2008 1:06 pm (PDT)

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16a.: FREE LEADS FREE Powerline Builder

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Fri Mar 21, 2008 1:10 pm (PDT)

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17a.: Profit-2-Prosperity 1,300% Profit - Ask for Evidence

Posted by: "Carlyle Kerr" promotion@hyip-portfolio.com hyipportfolio

Fri Mar 21, 2008 1:12 pm (PDT)

Greetings

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I have been examining P-2-P very carefully over the last 2-3 months - I have come to and incredible conclusion after digging and digging into the business of this program.

First an announcement....... there is a new newscast (done March 7th) presented by Kent owner of MyCash Forum. Nick Smirnow the CEO of P-2-P has done a 45 minute newscast on the program and future plans. This is an excellent way to learn a bit more about the man behind P-2-P. In this Interview Nick talks about the coming development of what is set to become one of the biggest online bank currency exchanges and debit card systems. This will bring some important benefits and opportunities to the program members.

Interview Link http://www.24surfmonitor.com/new/p2pint1.php

The end result of my studies of P-2-P is that I believe this is one of the best opportunities out there at the moment. Here is a summary of findings to date. P-2-P has passed every test.

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-I have spent hours in the forum and have uncovered many examples where program members have personal contact with Nick the CEO and key staff. They are accessible and accountable to the membership.
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-All signs point to this program being there long term and undergoing serious growth over the next year.

As you can see I am not sitting on any fence regarding P-2-P I am excited about its future. My advise is that if you are not involved at least start an account with the minimum $100 investment and just observe for awhile.
Follow this link to go to the P-2-P web site
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Please use this link when you sign-up to support the hyip-portfolio web site which has brought you this message.

Cheers Pacificinvest
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18.1.: Newbie s Guide To Online Fortunes

Posted by: "Ernest Brown" mrbrowncc7@yahoo.com mrbrowncc7

Fri Mar 21, 2008 1:16 pm (PDT)

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19a.: SHOP ONLINE AND GET PAID!

Posted by: "Anna Elliot" melliot_21@yahoo.com melliot_21

Fri Mar 21, 2008 1:27 pm (PDT)

My Power Mall is totally different! It's FREE, you
don't have to sell anything, there is no qualifying
for income, you don't have to train any downline
everyone knows how to shop, it is not MLM or Affiliate
programme and all your tools are free.

All you have to do is shop online on your own mall
with over 1000 stores including brand name stores and
hundreds of lesser known stores that pay higher
rebates and give away shopping malls for free.
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__________________________________________________________
Looking for last minute shopping deals?
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20a.: Check out: http://www.knowledge2freedom.com

Posted by: "Diane Cleak" syst77@yahoo.com syst77

Fri Mar 21, 2008 1:30 pm (PDT)

Hi Friend,

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Government is now the largest growth industry in Europe and America, with ever greater hordes of bureaucrats descending on the public, demanding and exacting their tolls, under threat of violence and loss of freedom. Are we truly free when you can be jailed for what they term tax evasion? We are now in more servitude than the lowest serfs of the Middle Ages who paid less than a twentieth of their income in tax. Combine Federal, State and local taxes and we now pay more than half of what we earn in tax! Is that progress? In the UK, we pay income tax, national insurance, council tax, water rates, stamp duty, the highest tariffs on fuel, alcohol and cigarettes in Europe, inheritance tax, road tax. And they are continually thinking of new ways to tax us. Is that progress? If so, for whom?

We are living in the richest times in history. We earn more than our parents could imagine, and yet we have the highest rate of personal debt the world has ever seen!

Best wishes

Diane

http://www.knowledge2freedom.com

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21a.: 100 or 1 million subscribers - 600 Emails Per Minute. Thats It

Posted by: "Stanlyn Major" getlotsamoney@yahoo.com getlotsamoney

Fri Mar 21, 2008 1:38 pm (PDT)

Casual *$2000 available for you.

You have to follow the steps exactly as said here below.

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3 - You will immediately receive the duplicate website with your paypal email in the payment area.

4 - Send an email to your email list regarding this new product with your website link in the email.

5 - Hundreds and thousands will purchase the same from your website in no time.

6 - The entire amount will reach your paypal account.

7 - Thus for every 1 visitor to your this new product website - you get *$?? (price of new product).

8 - Hurry and be fast, this is all new product, or otherwise others will start a*dvertising ahea*d of you and will be in much profit than you.

Click belo*w and purchase this all new product now

==>> http://www.clickaudit.com/goto/?102277

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22.: Mom's and Dad's......

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

Fri Mar 21, 2008 1:38 pm (PDT)

Mom's and Dad's......

Advertise your business for a life time!!! Chelle's Corner offers newsletter advertising, banner advertising and so much more!
Stop in today at: http://www.chellescorner.biz and get your business noticed today!

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23a.: Multiply Your Advertising Results By Thousands!

Posted by: "Juan Novielli" novatek2005@yahoo.ca computercampaign

Fri Mar 21, 2008 1:38 pm (PDT)

Multiply Your Advertising Results By Thousands!
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3 Simple Steps To Generate Traffic Income
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24.1.: -||- Get Paid Again and AGAIN Automatically !!! -||-

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

Fri Mar 21, 2008 1:40 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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25.: Genuine Lifetime Income!! , 3/21/2008, 2:00 pm

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

Fri Mar 21, 2008 1:40 pm (PDT)

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

Genuine Lifetime Income!!
Friday March 21, 2008
2:00 pm - 3:00 pm
(This event repeats every day.)
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Notes:
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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

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

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

Terms of Service:
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Friday, March 21, 2008

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

Fri Mar 21, 2008 12:32 pm (PDT)

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

Fri Mar 21, 2008 12:40 pm (PDT)

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

Fri Mar 21, 2008 12:40 pm (PDT)

Posted by: "stattri2001" stattri2001@yahoo.com stattri2001

Fri Mar 21, 2008 12:41 pm (PDT)

Posted by: "Danette Ingemansen" ingemansen_danette@yahoo.ca ingemansen_danette

Fri Mar 21, 2008 12:43 pm (PDT)

Posted by: "stattri2001" stattri2001@yahoo.com stattri2001

Fri Mar 21, 2008 12:43 pm (PDT)

Posted by: "Allen Lewis" hplour45@yahoo.com hplour45

Fri Mar 21, 2008 12:44 pm (PDT)

Posted by: "stattri2001" stattri2001@yahoo.com stattri2001

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Posted by: "balisha agee" mtownsbest@gmail.com sigmasuperman

Fri Mar 21, 2008 12:44 pm (PDT)

Posted by: "stattri2001" stattri2001@yahoo.com stattri2001

Fri Mar 21, 2008 12:45 pm (PDT)

Posted by: "stattri2001" stattri2001@yahoo.com stattri2001

Fri Mar 21, 2008 12:46 pm (PDT)

Posted by: "Kim Findlay" lovetostayhome04@yahoo.com lovetostayhome04

Fri Mar 21, 2008 12:58 pm (PDT)

Posted by: "William Floyd" ultibiz08@yahoo.com ultibiz08

Fri Mar 21, 2008 1:02 pm (PDT)

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

Fri Mar 21, 2008 1:03 pm (PDT)

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

Fri Mar 21, 2008 1:06 pm (PDT)

Posted by: "William Cheney" willcheney4@gmail.com

Fri Mar 21, 2008 1:10 pm (PDT)

Posted by: "Carlyle Kerr" promotion@hyip-portfolio.com hyipportfolio

Fri Mar 21, 2008 1:12 pm (PDT)

Posted by: "Ernest Brown" mrbrowncc7@yahoo.com mrbrowncc7

Fri Mar 21, 2008 1:16 pm (PDT)

Posted by: "Anna Elliot" melliot_21@yahoo.com melliot_21

Fri Mar 21, 2008 1:27 pm (PDT)

Posted by: "Diane Cleak" syst77@yahoo.com syst77

Fri Mar 21, 2008 1:30 pm (PDT)

Posted by: "Stanlyn Major" getlotsamoney@yahoo.com getlotsamoney

Fri Mar 21, 2008 1:38 pm (PDT)

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

Fri Mar 21, 2008 1:38 pm (PDT)

Posted by: "Juan Novielli" novatek2005@yahoo.ca computercampaign

Fri Mar 21, 2008 1:38 pm (PDT)

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

Fri Mar 21, 2008 1:40 pm (PDT)

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

Fri Mar 21, 2008 1:40 pm (PDT)

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