In today’s technology-driven world, the strength of an organisation’s intellectual property can determine the value of a corporate transaction. Patent portfolio demonstrates the level of expertise, specialization, and technological capacity of respective organisation.
IP due diligence is designed to reveal the value of patents by examining the strength, scope and enforceability, the ownership rights surrounding the IP, and the future potential. The breadth and depth of these inquiries should be directly proportional to the importance of the IP and its corresponding impact on the value of the transaction.
Focused due diligence analysis can be carried out by considering the following components (i) prioritization of the objectives; (ii) the substantive investigation; and (iii) analysis of the results. It helps to educate internal team/technology owner on the big picture perspective needed for going beyond the issue-spotting of the IP due-diligence checklist, to derive maximum value from the IP underlying any technology-driven corporate transaction while concurrently satisfying the business goals.
Before any typical due-diligence steps are undertaken, priorities, such as the preliminary working parameters and guidelines of the IP due diligence, must be identified. That is done by asking questions about the nature of the technology, the purpose and potential impact. The answers will identify the role and importance of the IP and dictate the basic legal issues that must be considered regarding the IP. With those business-focused IP objectives defining the boundaries of the due diligence, the second stage of analysis is effectively outlined with a road map. Those objectives determine the degree of investigative diligence, the depth of the legal and factual inquiries necessary for the particular circumstances
Due diligence is essentially an audit to assess the quantity and the quality of patent assets owned by, or licensed to, acompany, business or individual. It should also include an assessment of how intellectual property is captured and protected by the relevant company or business.
It is a process to evaluate the quality and scope of a patent
IP due diligence can lay the groundwork for a strategic plan, one that minimizes future
exposure to charges of patent infringement and develops strategies of patent protection to broaden the exclusivity and dominance in the technological area
Patent due diligence also involves a deep dive in patent’s prosecution history of related or closely related third parties patent document. Prosecution history consists of the documents i.e. examination report, responses to the objection, cited reference etc
We identify space/gaps/rights, prior art information, jurisdiction of IP protection & scope, patent status with respect to your own technology
We analyse multiple sources of information depending on the scope & questions to be addressed
Finally, we make recommendation for developing in-house IP strategy & future product concept