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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, September 14, 2008

[87hotrod] Digest Number 37815

business associates and friends exchange ideas and information

Messages In This Digest (8 Messages)

1.: Free Lifetime Pro Membership Runs Out... From: vdhbiz@yahoo.de

2a.: Blast your ad once per day to over 3.1 million targeted prospects From: landin

3.: CLUB 30 AND ENERGY SUPREME AWESOME!!!!!!!!!!! From: ezeewealth@yahoo.co.uk

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5.: ANDA DIKEJAR DOLAR, 9/14/2008, 4:00 am From: 87hotrod@yahoogroups.com

6.: Economic Worries. This will help, 9/14/2008, 4:00 am From: 87hotrod@yahoogroups.com

7a.: It Couldn't Be EasierJust Point and Click! From: Lisa

8.1.: HOT LEADS _You Need Leads, Tools, Traffic, Breath Life into your Bus From: Dan Moraru

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Messages

1.: Free Lifetime Pro Membership Runs Out...

Posted by: "vdhbiz@yahoo.de" vdhbiz@yahoo.de vdhbiz

Sat Sep 13, 2008 11:59 pm (PDT)

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homework!

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2a.: Blast your ad once per day to over 3.1 million targeted prospects

Posted by: "landin" homanilaopia@yahoo.com homanilaopia

Sun Sep 14, 2008 12:02 am (PDT)

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3.: CLUB 30 AND ENERGY SUPREME AWESOME!!!!!!!!!!!

Posted by: "ezeewealth@yahoo.co.uk" ezeewealth@yahoo.co.uk ezeewealth

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Please Note: MoneyDuplicity does not endorse nor
condone any email that goes out from our members.
We provide a way for our members to mail to Egroups
on the internet. Therefore you must always be prudent
when you visit any site to make sure that you are
dealing with people who are reputable and do your
homework!

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4.: Genuine Lifetime Income!! , 9/14/2008, 4:00 am

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

Sun Sep 14, 2008 12:40 am (PDT)

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

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4:00 am - 5:00 am
(This event repeats every day.)

Notes:
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5.: ANDA DIKEJAR DOLAR, 9/14/2008, 4:00 am

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

Sun Sep 14, 2008 12:40 am (PDT)

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

ANDA DIKEJAR DOLAR
Sunday September 14, 2008
4:00 am - 5:00 am
(This event repeats every day.)

Notes:

ALASAN Anda harus join pada paket program PTC yang saya tawarkan ?

1. Join Gratis.
2. Kerjanya Cuma klik iklan aja.
3. Anda tidak perlu cari DOWNLINE / REFERRAL. Tugas ini saya ambil alih

Berapa penghasilan yang akan Anda peroleh dari 1 PTC ?

Perhitungan Pendapatan:

» Click 10 iklan per hari = $0.10
» 20 referrals click 10 iklan per hari = $2.00
» Maka pendapatan harian = $2.10
» Pendapatan mingguan = $14.70
» Pendapatan bulanan = $63.00

Yah … itu pendapatan Anda hanya dari 1 PTC dengan 20 orang referral . Bagaimana kalau lebih dari 20 orang misalnya 1000 orang Anda dapat menghitung sendiri Dalam paket ini saya menawarkan 3 PTC yang harus Anda ikuti. Sehingga Anda lebih fokus dan tidak disibukkan oleh bisnis ini tapi hasilnya cukup buat hadiah orang-orang tersayang Anda.

Masalah utama dalam program PTC adalah mencari DOWNLINE/REFERRAL. Sebab pendapatan kita walaupun gratis sangat lama terkumpul kalau kita kerja sendiri, ini bisa membuat Anda bosan dan berhenti. Coba Anda perhatikan perhitungan di atas hanya dengan 20 refferral potensi pendapatan Anda $63/bulan.

Bagi Anda yang ingin menjadi salah satu dari 20 referral langsung saya, segeralah join di bawah ini:

• Bux.to
• 10bux.net
• Foxcash

Setelah join kirim link referral Anda ke : dewimantili@gmail.com. agar dengan segera saya promosikan buat Anda, jadi Anda hanya FOKUS dalam klik iklan saja. (MUDAHKAN ?)

Kata Pak Mario Teguh(motivator saya)"Apapun Jika Fokus Akan Tumbuh"

Untuk menampung dolar Anda harus mempunyai account Paypal atau Alertpay.ataupun E-gold Panduan membuat Paypal alertpay dan E-gold ada di http://nabungdollar.blogspot.com.

Sampai jumpa pada paket saya berikutnya.

Salam Super

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6.: Economic Worries. This will help, 9/14/2008, 4:00 am

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

Sun Sep 14, 2008 12:40 am (PDT)

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

Economic Worries. This will help
Sunday September 14, 2008
4:00 am - 5:00 am
(This event repeats every day.)
Location: Economic Worries. This will help

Notes:
Economic Worries. This will help

http://www.lhnprobuilder.com/sophia/

All Rights Reserved
Copyright © 2008
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http://privacy.yahoo.com/privacy/us

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7a.: It Couldn't Be EasierJust Point and Click!

Posted by: "Lisa" homanilaopia@yahoo.com homanilaopia

Sun Sep 14, 2008 12:50 am (PDT)

It Couldn't Be EasierJust Point and Click!

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-------------------------
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http://groups.yahoo.com/group/get-money-online
http://groups.yahoo.com/group/4_Internet_Marketing

This is not a spam. You receive this e-mail because we are in the same group. Please change your group message delivery setting to "Web Only" or choose "Leave Group" if you wish to be removed from future mailings. Or forward the whole e-mail to zonta43@hotmail.com with the subject "remove" if you don't know how to do it, and then wait for our instructions. If you are a group ADMIN and no longer wish to receive our post, please remove us from your group. We don't own or even know your e-mail address, so please let us know which group you are in when you write to us and, most importantly, DO read our reply. Thanks for your understanding.

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8.1.: HOT LEADS _You Need Leads, Tools, Traffic, Breath Life into your Bus

Posted by: "Dan Moraru" key2netadv@yahoo.com key2netadv

Sun Sep 14, 2008 1:07 am (PDT)

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You Got an iDea ? -- more TESTING ...

Article of related interest

Intellectual Property Due Diligence

LeTs see who will come up with the BesT idea for ...

iTs AbouT getting the sale, or getting MoRe SaLeS !

Sunday, September 14, 2008

[87hotrod] Digest Number 37815

Messages In This Digest (8 Messages)

Messages

Free Lifetime Pro Membership Runs Out...

Posted by: "vdhbiz@yahoo.de" vdhbiz@yahoo.de vdhbiz

Sat Sep 13, 2008 11:59 pm (PDT)

Blast your ad once per day to over 3.1 million targeted prospects

Posted by: "landin" homanilaopia@yahoo.com homanilaopia

Sun Sep 14, 2008 12:02 am (PDT)

CLUB 30 AND ENERGY SUPREME AWESOME!!!!!!!!!!!

Posted by: "ezeewealth@yahoo.co.uk" ezeewealth@yahoo.co.uk ezeewealth

Sun Sep 14, 2008 12:28 am (PDT)

Genuine Lifetime Income!! , 9/14/2008, 4:00 am

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

Sun Sep 14, 2008 12:40 am (PDT)

ANDA DIKEJAR DOLAR, 9/14/2008, 4:00 am

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

Sun Sep 14, 2008 12:40 am (PDT)

Economic Worries. This will help, 9/14/2008, 4:00 am

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

Sun Sep 14, 2008 12:40 am (PDT)

It Couldn't Be EasierJust Point and Click!

Posted by: "Lisa" homanilaopia@yahoo.com homanilaopia

Sun Sep 14, 2008 12:50 am (PDT)

HOT LEADS _You Need Leads, Tools, Traffic, Breath Life into your Bus

Posted by: "Dan Moraru" key2netadv@yahoo.com key2netadv

Sun Sep 14, 2008 1:07 am (PDT)

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