IP Due Diligence Reports

Why IP Due Diligence?

Due diligence is the process to verfiy, validate and certify that the stated representations and all related information provided by the seller in a proposed corporate transaction, and establish the originality of the patents. The due diligence provides understanding to the buyer on accuracy and reflect a thorough understanding of the intellectual property and relevant market conditions.

Due diligence is an important step, whether you are acquiring a whole company or just a single patent. It applies to other IP elements such as copyrights, trademarks and trade secrets, and it encompasses a wider scope extending to all aspects of a targeted company’s operations, not just its IP portfolio. IP Due Diligence reports will focus on due diligence in assessing the patent portfolio of the seller company. Other aspects of due diligence are not scoped in.

Who can use the Due Diligence Reports?

Intellectual Property Due Diligence Reports are utilized by:

Companies buying or selling patents
Investment firms and banks conducting transaction due diligence
IP law firms conducting patent screenings for clients

What IP Transactions require Due Diligence?

IP due Diligence is required in these IP transactions:

Mergers and Acquisitions
Partnership
Joint Ventures & Collaborations
Strategic Alliance
Portfolio Assessments
Spin-offs
Acquisition IP Due Diligence
Patent Portfolio Due Diligence
OEM Procurement

Patent Portfolio Due Diligence:

Patent ownership is complex and it is critical to have an accurate inventory of what the acquisition target owns. Innography reduces the complexity in analyzing patent ownership, allowing you to identify potentially millions of dollars of lost value. Innography can be utilized to create a patent due diligence report on an organization's IP portfolio to identify:

Areas of IP risk in a company's portfolio due to chain-of-title issues
Which patents a company currently owns or doesn't own (taking acquisitions and divestitures into account)
Which patents are still active (taking abandonments into account)
If the company has patent coverage in key geographic markets you are targeting

IP Due Diligence Report - Addressing the Basic Questions

Three basic questions with regard to any patent sought for acquisition, whether by buying the patent-holding corporation or buying single patent include:

Is the patent valid?
Does the seller have sufficient ownership to pass complete title to the buyer?
Are there limitations on the rights the patents extend, either to practice the invention or to exclude others from doing so?

IP Due Diligence Report addresses all these basic questions and other items as per IP Due Diligence Checklist.

What does IP Due Diligence Report include?

Pintels Patent Intelligence solutions helps in expediting the investigations. Based on the scope and objectives of Due Diligence - for Offensive or Defensive perspectives, the Analysis & Findings in IP Due Diligence Report include:

Patent Portfolio Analysis
Patent Ownership - Assignee (Title) Analysis
Technology Analysis
Inventor Analysis
Patent Prosecution History Analysis
Evaluate Potential Patent Infringements

The details in the report include - Analyze the Scope, Validity and Enforceability of patents, Checking the prior Art, Failures of Specification, Earlier use, Earlier filed foreign counterpart(s), Patent Terms Expiration, verification of on time Patent Renewals and any failures to pay maintenance fees, Any Post Grant Opposition or re-examination and checking enforceability of patent. The report also includes analysis and IP trends in the technology area.