IP Due Diligence

Offering a deep bench of world-class IP practitioners with technical backgrounds, we provide rigorous examination of complex IP portfolios while identifying risks and advising on the value of transactions.

We perform IP due diligence for investors and acquirers of target IP. With 65 Ph.D.s, more than 100 advanced degrees, and multilingual capabilities, including Chinese, our team is acutely knowledgeable in the sciences and technologies in which our clients operate. We tap into our talented roster to evaluate the most complex patents for clients in mergers and acquisitions, licensing agreements, joint ventures, investments, public offerings, and collaborations.

IP due diligence can span the spectrum of legal analysis from:

  • Confirming ownership of target IP to make certain that the company owns what it says it owns;
  • Assessing the strength of a target’s patent portfolio to determine if the portfolio covers the target’s product and competitor product design-arounds; and
  • Determining whether the target has freedom to operate (FTO) for its products. In cases where FTO is a problem, we work with investors to assess the strength of third-party blocking patents to determine if the patents are valid and enforceable or the target has a clear non-infringement position.

Through decades of experience, we gained valuable business insights into the issues and pitfalls associated with patent evaluation. Importantly, we also help clients determine how patents fit within a larger IP strategy and broader business goals. With efficiency in mind, we leverage a team that is wholly dedicated to patent searches and work closely with professionals in related areas of law to ensure multifaceted issues are not missed and to provide a comprehensive approach.

We apply all of this to help clients achieve their goals:

  • An exceptional track record in evaluating and analyzing IP portfolios and finding creative solutions to impediments
  • The ability to perform detailed and complex freedom-to-operate analyses in a cost-effective manner
  • Extensive experience in assessing business risks and challenges in the IP context
  • A practical approach to advising on risk mitigation strategies
  • Strategic advice to best position the company for optimal partnering and transactional strategies
  • Access to experienced IP litigators with insight into possible litigation outcomes
  • Strategic advice on handling overlapping patent positions
  • Vast experience in evaluating inventorship issues
  • A deep understanding of the legal issues involving academia-originated technology
  • Creativity in developing and strengthening patent and licensing portfolios
  • Identification of potential licensing opportunities
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