If you’re investing in a company, you’ll want to understand its intellectual property portfolio and its position on the intellectual property landscape. Due diligence addresses both of these dimensions.
Looking inward, you’ll ask what IP the company possesses. Are these assets solid and secure? For a patent, has it been drafted and prosecuted well? For an application, is there good support for the claims, and are the claims well written? Is there art that might prevent the claims from getting allowed in their present form, or getting allowed at all? For trade secrets, has the company taken appropriate precautions to protect their confidentiality? And are there any other IP issues pertaining to copyrights, domains, or trademarks? Does the company own the IP that it claims to own? Are there important contracts that govern the use of the company’s IP, or the company’s right to use third-party IP?
Looking outward, what IP risks does the company face as it moves forward with its business plan? Are there issued patents that could prevent commercialization? Are there pending applications that could pose problems were they to issue as patents? Are there third party issues pertaining to branding or to the use of copyrighted materials?
We’ll work with you as the investor to ask the right questions and to understand the answers. That way, you can include IP risks and opportunities as part of your value equation. If your company is facing IP due diligence, we’ll work with you to gather your assets, present them to the investors and field their questions. With decades of in-house experience, our lawyers are intimately familiar with the due diligence process. Whether investor-side or company-side, we’ll work with you to navigate this process efficiently and productively.
Due diligence asks questions about what IP a company possesses and whether that IP is useful for the company’s business goals. If your company asks these questions of itself, this exercise is portfolio management. You’ll want to know where your IP assets lie. Are you obtaining patent protection that covers the company products? Are there holes in your coverage that you might want to plug? Are you aware of competitors whose progress you might want to block by your own patent filings? And have you dotted the i’s and crossed the t’s? Is your paperwork bulletproof?
These sorts of check-ups and ongoing monitoring procedures are all part of portfolio management. It’s a mainstay of our intellectual property practice. When our attorneys worked in-house, this was a major part of the job. Now we can bring this experience to your company, so that you’re in control of your IP portfolio, and so that the portfolio aligns with your business needs.