Practices

IP Due Diligence

Our intellectual property due diligence counseling goes beyond straightforward searches and document reviews. We help clients determine the value of existing IP assets, analyze strengths and limitations in their portfolio, and identify opportunities for growth.

We represent investors, corporations, and educational institutions looking to buy or sell IP assets. We also assist clients in identifying strengths and weaknesses in target company portfolios. Our attorneys also work with creators, manufacturers, and marketers of biotechnology, medicines, medical devices, chemicals, electronics and the arts when they are considering the risks or benefits of a merger, sale, acquisition, or license. Conducting due diligence enables us to advise on the validity of asset ownership, the quality of the assets, and whether the assets would be a meaningful and valuable addition to the client’s existing patent portfolio while minimizing risk.

Our due diligence services include:

  • Portfolio analysis, including patents, copyrights, trademarks, trade secrets, domain names, and IP agreements
  • Assessment of the strength and validity of a target's or competitors' IP rights in the market
  • Verification of ownership of IP rights
  • Analysis of scope and enforceability of IP assets
  • Non-infringement and freedom to operate analysis
  • Valuation of IP assets

Experience 

  • Represent a telecommunications conglomerate in all aspects of patent prosecution, patent portfolio analysis, and due diligence reviews. Our representations center around video delivery and involve patents related to communications technology, digital systems, and software. We also handle matters involving patent validity and strategic counseling.
  • Represent a global life science diagnostics company in evaluating, preparing and maintaining its intellectual property portfolio, preparing patent applications, responding to office actions, and handling diligence matters (freedom to operate and patentability analyses). We have also prepared internal training memorandums for in-house counsel and the corporate team as well as to assist the company in directing future research efforts. Additionally, we represent the client in IP litigation matters, defending against patent infringement and breach of licensing claims.
  • Represent an energy company in all aspects of intellectual property, including global trademark portfolio management, enforcement litigation, patent prosecution, and social media review
  • Represent a health care company in patent prosecution as well as general IP diligence (patent, copyright, trademark, and open source) matters and patent transactions. We review the intellectual property portfolios of acquisition targets and advise our client on both merit and value to an acquisition transaction.