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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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All you do is join our company, purchase your monthly product (to qualify)
and use our system. Simply place some ads that we give you
AND THATS IT WE DO THE REST FOR YOU

we also have a superb range of beauty and wellness products
so if you do not need to slim, no problem, use our other products
and you can still use the system to make a life changing income

GET YOUR FREE SAMPLE OF THE PRODUCT TODAY
Please ensure you put in your correct telephone number,
as we will need to contact you for the address to send your sample to,
and to show you how you can earn $5,000 per month using our office and facilities.
USA AND CANADA ONLY

Heres the website to enrol http://weight-lossplus.com/freesample/?id=6245140

EARNINGS simply stunning. THE HIGHEST IN THE INDUSTRY
you can earn $21,300 per month. Plus a car bonus up to
$6,800 PER MONTH ON TOP OF THE $21,300

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18a.: New Company Advisory...2 years in development...coming this fall...b

Posted by: "Brett Gurney" brettgurney@yuhknow.com brett.gurney

Sun Sep 21, 2008 4:09 am (PDT)

Greetings

My name is Brett Gurney...full time work
from home entrepreneur and network marketer

I have just recently been offered, and have accepted,
one of 4 top positions with a new company that is
launching this fall...and will be putting together a core
group of founders before our general prelaunch in
early November

..and you are getting first notice

We know this company and the product will have a
dramatic impact on the nutritional MLM industry...we
have documented studies, science, and technology that
will put the product front and center in this catagory

Given the uniqueness of the product, with the science
and technology behind it, and the people involved with
the development and formulation of the company...it
could easily become the next nutritional giant

Nobody knows about this yet...there are no distributors,
there is no website, and the company have not announced
their name yet...they will announce themselves any day now
via press releases and various media outlets

...two years in the making

If you like ground floor it doesnt get any more ground
floor than this

I will be going through a pre-qualification process with
those who wish to get involved now...if you are a leader
in the industry, or someone who wants to get serious
about a business... please contact me...I have information
to share

Click on this link please for a brief overview of
who we are and what were doing
http://lgtmarketing.com/track/t.php?l=5521

Thanks,

Brett Gurney
770-838-0907
(c) 678-516-1927
brett.gurney@yahoo.com
Skype Address - brettgurney
Yahoo IM handle - gurnstyle

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19a.: IMPORTANT NEWS - 4 Anyone Using a Cell Phone!

Posted by: "tom staszewski" coldduck@safelist-mail.com coldduck24

Sun Sep 21, 2008 4:15 am (PDT)

Do you know anyone who has a wireless phone?

Do you think any of them would like to...
...get paid from their wireless bill?
...get paid from their friends wireless bill?

The wireless revolution is here!

Be a part of it

A slide show (best for dial up users) and 2 recorded calls at
http://www.duckwireless.info

Watch the opportunity video pesentations
http://www.duckwireless.com

Tom Staszewski
tom@duckwireless.com

p.s. $99.99 unlimited anytime minutes / unlimited nite weekend
Tired of being nicked and dimed by your wireless company?
View products at http://www.wirelessduck.com

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20.1.: SPEED UP YOUR PC NOW, FREE DOWNLOAD !!

Posted by: "Michel Labonte" fiftyplatinum@yahoo.com fiftyplatinum

Sun Sep 21, 2008 4:16 am (PDT)

SPEED UP YOUR PC NOW, FREE DOWNLOAD !!
REGISTRY CLEANER FREE SCAN !!
http://registrycleanersfreescan.com

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21.1.: LIFE STYLE SPECIFIC = SINGLES = SITES !

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

Sun Sep 21, 2008 4:19 am (PDT)

Catagory Specific Dating Sites

http://www.yourdatinglinks.com

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22a.: Cash Gifts Delivered to Your Front Door!

Posted by: "Robert Woodard" earl50@yuhknow.com earlwood8

Sun Sep 21, 2008 4:22 am (PDT)

Imagine Having Envelopes Stuffed With CASH GIFTS Of $100, $250, $500, $750 or $1000 Dollars Delivered To Your Front Door Several Times A Week or Several Times A Day! go to: http://www.GFL100Marketing.com/site/013.php?acc=080606104

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23.: A NEW TECHNOLOGY TO TURN YOUR LIFE AROUND!

Posted by: "August Valcik" ajvalcik@yahoo.com ajvalcik

Sun Sep 21, 2008 4:33 am (PDT)

I want to give you, absolutely free! Six life changing Mind Movie videos that will blow your socks off! There is no catch, they are free! If you've been wanting to turn your life around, attract friends, money, you name it, you now can do it with these movies:
#1 - Health
#2 - Spirituality
#3 - Money
#4 - Friends and Family
#5 - Attracting a Woman
#6 - Attracting a Man
Once you have them, just pick the one(s) that you want to make improvements in your life. Be sure to watch at least one every morning and night. With just 6 minutes day, you will feel and see the difference. This is a new and exciting technology that helps you create your future. This is one of the best self improvement visualization tools ever offered on the internet. Don't miss this opportunity, its Free!
Here is the link that will take you to an intro video explaining how Mind Movies work, and to the right of it, you can request your 6 free movies and get them today!
http://4u2bn.com/gi57

Success to you and all of your endeavors,
August

p.s. You can join my Mind Movies Network and share your experiences or questions with other members.
http://4u2bn.com/gk05

The above URL's are tracked using the Adtracker….get yours free for 30 days!

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Sunday, September 21, 2008

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