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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.

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Saturday, October 4, 2008

[87hotrod] Digest Number 38122

Messages In This Digest (25 Messages)

1.
Millions of Homes Are Falling Into Foreclosure:  This , 10/4/2008, 1 From: 87hotrod@yahoogroups.com
2a.
International Advertising Network Builds Massive Incomes!, 10/4/2008 From: 87hotrod@yahoogroups.com
3a.
International Advertising Network Builds Massive Incomes!, 10/4/2008 From: 87hotrod@yahoogroups.com
4.
Can Your Put On A Tee-Shirt...Then You Can Get PAID!, 10/4/2008, 12: From: 87hotrod@yahoogroups.com
5.
How Will You Afford To RETIRE With All Those Debts...Let Us Pay Them From: 87hotrod@yahoogroups.com
6a.
Get Paid To Drive Your Car!, 10/4/2008, 12:00 am From: 87hotrod@yahoogroups.com
7.
EliteGiftGroup presents you with a $500 gift card., 10/4/2008, 12:00 From: 87hotrod@yahoogroups.com
8a.
When Was The Last Time You Were DEBT FREE! , 10/4/2008, 12:00 am From: 87hotrod@yahoogroups.com
9.
When Was The Last Time You Were DEBT FREE!  , 10/4/2008, 12:00 am From: 87hotrod@yahoogroups.com
10a.
Professional Debt Busters Looking For Work!, 10/4/2008, 12:00 am From: 87hotrod@yahoogroups.com
11.
We want to Invest $30,000 in YOUR Solid Future Income (SFI) Business From: 87hotrod@yahoogroups.com
12a.
Millions of Homes Are Falling Into Foreclosure:  This Is A Plan To P From: 87hotrod@yahoogroups.com
13.
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14.
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15.
Can You Put On A Tee-Shirt...Then You Can Get PAID! , 10/4/2008, 12: From: 87hotrod@yahoogroups.com
16a.
Get Paid To Drive Your Car!, 10/4/2008, 12:00 am From: 87hotrod@yahoogroups.com
17a.
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1.

Millions of Homes Are Falling Into Foreclosure:  This , 10/4/2008, 1

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International Advertising Network Builds Massive Incomes!, 10/4/2008

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International Advertising Network Builds Massive Incomes!, 10/4/2008

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Can Your Put On A Tee-Shirt...Then You Can Get PAID!, 10/4/2008, 12:

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How Will You Afford To RETIRE With All Those Debts...Let Us Pay Them

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6a.

Get Paid To Drive Your Car!, 10/4/2008, 12:00 am

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EliteGiftGroup presents you with a $500 gift card., 10/4/2008, 12:00

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8a.

When Was The Last Time You Were DEBT FREE! , 10/4/2008, 12:00 am

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When Was The Last Time You Were DEBT FREE!  , 10/4/2008, 12:00 am

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Professional Debt Busters Looking For Work!, 10/4/2008, 12:00 am

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We want to Invest $30,000 in YOUR Solid Future Income (SFI) Business

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Millions of Homes Are Falling Into Foreclosure:  This Is A Plan To P

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When Was The Last Time You Were DEBT FREE!, 10/4/2008, 12:00 am

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Free Lifetime Income – Earn $100/Day – Don't Mi

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Can You Put On A Tee-Shirt...Then You Can Get PAID! , 10/4/2008, 12:

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16a.

Get Paid To Drive Your Car!, 10/4/2008, 12:00 am

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17a.

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Fri Oct 3, 2008 9:27 pm (PDT)

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18.1.

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Posted by: "classif2000@yahoo.com" classif2000@yahoo.com   classif2000

Fri Oct 3, 2008 9:28 pm (PDT)

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19a.

http://MindPowerVista.googlepages.com/

Posted by: "arvind kumar" arkumar181@yahoo.co.in   arkumar181

Fri Oct 3, 2008 10:12 pm (PDT)



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20.1.

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Fri Oct 3, 2008 10:18 pm (PDT)


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21a.

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Posted by: "arvind kumar" arkumar181@yahoo.co.in   arkumar181

Fri Oct 3, 2008 10:24 pm (PDT)

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22a.

no cost work at home solutions, free software, free ads, free seo &

Posted by: "Online Wealth" ariella_lev@yahoo.com   ariella_lev

Fri Oct 3, 2008 11:02 pm (PDT)


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Messages in this topic (25)
23.

Re: USA BREAKING VIEWS!!

Posted by: "Alexander LeGrand" alexanderlegrand@yahoo.com   alexanderlegrand

Fri Oct 3, 2008 11:46 pm (PDT)



http://clyde.buildlastingsuccess.com

Hello Opportunity seekers,

This opportunity is restricted to Canadians, and people in the USA only at this time. We hope to expand globally in the near future.

Oops! Here it is!

Thirty six year old New York Stock Exchange Corporation

No degrees necessary. Miniscule amounts of money required to get started.

Excellent training programs to get you going quickly.

No boss! No lay off worries! And you won't be fired as long as you follow the simply corporate rules.

You can't beat this Opportunity people!

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Messages in this topic (1)
24.

Start EARNING From Advertising NOW....

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

Sat Oct 4, 2008 12:16 am (PDT)

You pay much Money for Your Advertising - RIGHT ?
You reduce Your Earnings - RIGHT ?
Why not go the BETTER Way ?
Start Your Own Text Ad Exchange !
Let others pay YOU for their Advertising !
Sell to YOUR List Members !
Maximize YOUR Earnings instead of Reducing Them !

Read Here If You Are Still Not SURE:

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Webmasters Tools:

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A Member of the Money Duplicity Network
http://moneyduplicity.com

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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Messages in this topic (1)
25.1.

MASTER PSYCHIC READER~ ACCURATE & AMUSING

Posted by: "Fran Galton" thehair41@yahoo.com   thehair41

Sat Oct 4, 2008 12:18 am (PDT)

I am a psychic and writer who has helped thousands of people through my
readings. I am here to tell you the truth about your life. My words are
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Always remember to ASK FRAN if you want to hear the truth.

Your first 3 minutes are FREE talking live with me.

Please visit my website at: http://tinyurl.com/5kfp6t

Or, call me right now at: 1-800-ASK-KEEN x0160

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Posted by thedeb at 10/04/2008 03:18:00 AM

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iS iT WiN-abled ? so, everyone (minus cheaters & abusers) has equal opptions for reasonable revenue ?

:)

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