Due Dilligence & Risk Assessments

The frequency with which IP moves between industry players can rival the evolution of the technology itself.  The acquisition of technology and related IP through purchase, licensing and development agreements frequently forms an integral part of a client’s overall business strategy.  ”Due diligence” is the process of investigating IP issues that may be associated with a transaction.  Acquisition, sale and licensing of IP may be among the largest and most important transactions a client ever undertakes.  Our depth in complex IP litigation and prosecution uniquely qualifies us to perform due diligence in connection with acquisition and licensing of third party IP, as well as joint development efforts with third parties.

The value of patents, trademarks and copyrights is directly related to whether they were properly prosecuted in the first place and whether they are of sufficient scope to protect or build a client’s market position.  Similarly, the value of third party IP is greatly reduced if that IP is dominated by the IP of other competitors.  It is therefore critical that all aspects of IP being considered for licensing or acquisition be carefully scrutinized as part of due diligence efforts.  We have both the legal and technical expertise to thoroughly evaluate ownership, enforceability, freedom to operate relative to third party IP, and the scope of protection offered by a targeted IP portfolio.  Due diligence investigations are almost always time sensitive.  Our experience allows us to get to the bottom of the critical issues quickly and provide our clients with timely advice.  

In addition, client-owned IP should be regularly evaluated to ensure its ongoing relevance and to make course corrections where necessary.  We carefully review the scope of existing IP, the potential for strategic expansion of that IP, and the potential of re-focusing or re-directing IP prosecution efforts.  Our lawyers have re-vitalized and re-structured IP portfolios through carefully executed strategies involving new and continuation applications, re-examinations and reissue applications. Our expertise and reputation with the examining corps of the Patent and Trademark Office allow us to refine, re-focus, and broaden our clients’ IP portfolios.