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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, October 5, 2008

[a business opportunity] Digest Number 43107

Messages In This Digest (25 Messages)

1.1.: OPEN TO MAKE YOUR WISHES COME TRUE BY CASUAL BROWSING From: Rajlakshmi S
1.2.: OPEN TO MAKE YOUR WISHES COME TRUE BY CASUAL BROWSING From: Rajlakshmi S

2a.: A Credit Card is a Must! Especially for Xmas Shopping! From: August Valcik

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13a.: Dpt duit tanpa kerja?Mimpi kale!Ini yg nyata, KERJA HANYA klik iklan From: serpent_wine87

14.: Have You Been Struck by the MindMovie Phenomenon? From: August Valcik

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Messages

1.1.: OPEN TO MAKE YOUR WISHES COME TRUE BY CASUAL BROWSING

Posted by: "Rajlakshmi S" sfirajalakshmi@yahoo.com sfirajalakshmi

Sun Oct 5, 2008 6:16 am (PDT)

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THINK TWICE BEFORE YOU CLOSE

NOTE: THIS MESSAGE IS SENT TO INTERESTED MEMBERS OF THE GROUP OTHERS
PLEASE IGNORE.

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1.2.: OPEN TO MAKE YOUR WISHES COME TRUE BY CASUAL BROWSING

Posted by: "Rajlakshmi S" sfirajalakshmi@yahoo.com sfirajalakshmi

Sun Oct 5, 2008 6:16 am (PDT)

OPEN TO MAKE YOUR WISHES COME TRUE BY CASUAL BROWSING

For more details please log on to
http://www.moreinfo247.com/9259864/CB

• YOU WILL BE PAID 1-10 US DOLLARS FOR EACH MEMBER JOINING UNDER YOU
• (they also should work)
•
• TO ENROLL MEMBERS YOU CAN USE YAHOO GROUPS OR FREE ADS.
•
• FOR INCOME PROOF MAIL ME AT sfiraji@yahoo.com
•
• 100% LEGAL. YOU SHOULD WORK OTHERWISE YOU CANNOT REAP THE FULL BENEFIT
•
• YOU CANNOT BECOME RICH OVERNIGHT. BUT FINANCIAL INDEPENDENCE CAN BE GAINED

THINK TWICE BEFORE YOU CLOSE

NOTE: THIS MESSAGE IS SENT TO INTERESTED MEMBERS OF THE GROUP OTHERS
PLEASE IGNORE.

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2a.: A Credit Card is a Must! Especially for Xmas Shopping!

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

Sun Oct 5, 2008 6:19 am (PDT)

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3a.: Your remove request has been successfully processed!

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Sun Oct 5, 2008 6:23 am (PDT)

We have processed your remove request successfully.

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4.1.: TOP 1,000 D-A-T-I-N-G SITES LIST

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Sun Oct 5, 2008 6:32 am (PDT)

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5.1.: Generate tons of traffic to your website !!!

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Sun Oct 5, 2008 6:46 am (PDT)

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6a.: Easy way to earn money on Internet like I did

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Sun Oct 5, 2008 6:59 am (PDT)

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7.1.: www.jobjobsjob.com DOMESTIC and INTERNATIONAL JOBS DIRECTORY

Posted by: "bru.nile" bru.nile@yahoo.com bru.nile

Sun Oct 5, 2008 6:59 am (PDT)

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9.1.: Unique Crafters Octoberfest - "The finest in online shopping"

Posted by: "The Ultimate Mall" theultimatemall@gmail.com ultimatemallads

Sun Oct 5, 2008 7:06 am (PDT)

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10a.: The Ultimate Mall & Ultimate Mall Christmas site - Listing special

Posted by: "The Ultimate Mall" theultimatemall@gmail.com ultimatemallads

Sun Oct 5, 2008 7:07 am (PDT)

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After you order a listing at our Christmas site, I will contact you for your
listing information to The Ultimate Mall.

Mary B
The Ultimate Mall
http://www.the-ultimate-mall.net/

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11.: Submit Your Articles Automatically

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

Sun Oct 5, 2008 7:17 am (PDT)

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12.1.: www.internetloanplace.com Home / Business Loans ( 70 ) Fin. Tools!

Posted by: "bru.nile" bru.nile@yahoo.com bru.nile

Sun Oct 5, 2008 7:27 am (PDT)

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13a.: Dpt duit tanpa kerja?Mimpi kale!Ini yg nyata, KERJA HANYA klik iklan

Posted by: "serpent_wine87" serpent_wine87@yahoo.com serpent_wine87

Sun Oct 5, 2008 7:39 am (PDT)

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14.: Have You Been Struck by the MindMovie Phenomenon?

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

Sun Oct 5, 2008 7:40 am (PDT)

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15.: I'll get your referrals - You make $434 a month, 10/5/2008, 8:00 am

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

Sun Oct 5, 2008 7:40 am (PDT)

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

I'll get your referrals - You make $434 a month
Sunday October 5, 2008
8:00 am - 9:00 am
(This event repeats every day.)
Location: http://splashpagemaker.com/splash/?rid=1234&id=1315

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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16.: Genuine Lifetime Income!! , 10/5/2008, 8:00 am

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

Sun Oct 5, 2008 7:41 am (PDT)

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All Rights Reserved
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17a.: I Will Give You Free 500,000 Traffic Exchange Credits Today!

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

Sun Oct 5, 2008 7:44 am (PDT)

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18.1.: Get Massive Website Exposure

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Sun Oct 5, 2008 7:52 am (PDT)

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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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19.1.: LIFE STYLE SPECIFIC = SINGLES = SITES !

Posted by: "bru.nile" bru.nile@yahoo.com bru.nile

Sun Oct 5, 2008 7:52 am (PDT)

Catagory Specific Dating Sites

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20.1.: Have you been promised the moon ?

Posted by: "preplugin01@yahoo.com" preplugin01@yahoo.com preplugin01

Sun Oct 5, 2008 8:00 am (PDT)

Have you been promised the moon but
nobody gave you the ticket to get there ?

Lets be honest - I am hearing it every day from people - "I have tried so many systems -
most do not work and others were just a scam.".
I promise, that if you do not make at least $100 per day with my personal
assistance, I will refund every single dime of your order!

Think you tried everything ? . . . maybe not!
It is so easy to get discouraged. You have been promised the moon,
but nobody gave you the ticket to get there. I am releasing exactly
the same method I am using to make $900 - $1500 per day!

And I will show you exactly how I am doing it - Although I can not guarantee you
will be making $1500 every day when you start using my System,
I can promise you will at least make $100 with my personal assistance
or I will refund every single dime of your order. You see, you can not loose!

From all my income systems this is by far the easiest!

for more information please visits : http://www.moneypuller.com

thankyou for your visits

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21.1.: I am a very romantic and affectionat lady

Posted by: "kattinakatina16" no_reply@yahoogroups.com kattinakatina16

Sun Oct 5, 2008 8:02 am (PDT)

Tell me your fantasy or fetish for naughty role play.Come and taste my
sweet wetness.Your satisfaction guaranteed!!!You can find me here...)

Free WILD:-------http://linkzip.net/F/1Tn

Free MILF:-------http://linkzip.net/F/250

Free SWINGERS:---http://linkzip.net/F/2vu

Free HARDCORE:---http://linkzip.net/F/258

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22.1.: 100% FULL FREE EBOOKS FOR RESELL PROFIT!

Posted by: "bru.nile" bru.nile@yahoo.com bru.nile

Sun Oct 5, 2008 8:21 am (PDT)

100% FREE TO DOWNLOAD NO REGISTRATION!
RESELL FOR PROFIT!
MANY TOPICS!

http://www.g-lks.com

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23.: Make money from 22 sources.»»05.10.2008

Posted by: "Elisabete Lima" lisaxico@yahoo.com.br lisaxico

Sun Oct 5, 2008 8:21 am (PDT)

Make money from 22 sources.»»05.10.2008

Find out how a new program is making thousands of dollars for people all
across the globe.
Tap into a wellspring of financial resources, making real income from up to
12 different sources.
This system will give you the increase income you've been seeking.
• Excellent training and support
• Reliable, plentiful income
• Make money from 22 sources
• Become a member for free
• Yes, it's totally free
• Find out how.
http://www.thespiderwebsystem.com/lisalima

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24.: Get your - 12+ Streams of Passive income.»»05.10.2008

Posted by: "Elisabete Lima" lisaxico@yahoo.com.br lisaxico

Sun Oct 5, 2008 8:23 am (PDT)

Get your - 12+ Streams of Passive income.»»05.10.2008

FREE: SpiderWeb Marketing System
Learn to spin you Own World Wide Web &
Generate Endless Leads & Cash Flow Today
Get your – 22+ Exclusive traffic Capturing
Secrets Revealed in 22+ Step-by-Step Videos
Get your - 12+ Streams of Passive income
Without Ever talking to a Single Prospect
Get your - Once in a lifetime Opportunity
To Have My Team do All The Work for You

http://thespiderwebsystem.com/lisalima

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Sunday, October 5, 2008

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Posted by: "Rajlakshmi S" sfirajalakshmi@yahoo.com sfirajalakshmi

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Sun Oct 5, 2008 8:02 am (PDT)

Posted by: "bru.nile" bru.nile@yahoo.com bru.nile

Sun Oct 5, 2008 8:21 am (PDT)

Posted by: "Elisabete Lima" lisaxico@yahoo.com.br lisaxico

Sun Oct 5, 2008 8:21 am (PDT)

Posted by: "Elisabete Lima" lisaxico@yahoo.com.br lisaxico

Sun Oct 5, 2008 8:23 am (PDT)

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