IP Due Diligence

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

IP Practice Group of the Year in 2013, 2015 and 2016

Chambers Global 2018
Global: Intellectual Property
Asia-Pacific Region: Intellectual Property
China: Intellectual Property: International Firms
Japan: Intellectual Property: International Firms
United States: Intellectual Property (Patent)
United States: Intellectual Property (Section 337)

Chambers USA 2017
National: Intellectual Property
National: International Trade: Intellectual Property (Section 337)
California: Intellectual Property
California: Intellectual Property (Patent Prosecution)
New York: Technology & Outsourcing
Washington D.C.: Intellectual Property (Litigation)
Washington D.C.: Technology & Outsourcing

Chambers Asia-Pacific 2018
Japan: Intellectual Property: International Firms
Asia-Pacific Region: Intellectual Property

U.S. News – Best Lawyers® Best Law Firms 2018
National: IP Litigation (Tier 1)
National: Patent Litigation (Tier 1)
National: Patent Law (Tier 1)
Los Angeles: IP Litigation (Tier 1)
Los Angeles: Patent Litigation (Tier 1)
San Diego: IP Litigation (Tier 1)
San Diego: Patent Litigation (Tier 1)
San Diego: Patent Law (Tier 1)
San Francisco: IP Litigation (Tier 1)
San Francisco: Patent Litigation (Tier 1)
San Francisco: Patent Law (Tier 1)
Washington D.C.: IP Litigation (Tier 1)
Washington D.C.: Patent Litigation (Tier 1)

The National Law Journal 2016
IP Hot List

Legal 500 US 2018
Patent Litigation: ITC
Patent Litigation: Full Coverage
Patents: Portfolio Management and Licensing
Patent: Prosecution (Including re-examination and post-grant proceedings)
Trade Secrets
Trademarks: Litigation

Legal 500 Asia-Pacific 2018
China: Intellectual Property: Foreign Firms
Hong Kong: Intellectual Property
Japan: Intellectual Property: International Firms and Joint Ventures

Managing IP: American Awards Shortlist 2018
United States: Appellate
United States: Life Sciences IP Litigation
United States: ITC
Japan: Patent – Foreign Firms

IAM Patent 1000 2017
California: Litigation (Gold)
California: Transactions (Highly Recommended)
California: Prosecution
Hong Kong: Litigation & Transactions
Japan: Litigation and Licensing (Highly Recommended)
National: Transactions
National: Litigation
Washington D.C.: Litigation

LMG Life Sciences 2017
Hatch-Waxman Patent Litigation
Patent Prosecution (Highly Recommended)
Patent Strategy and Management (Highly Recommended)

United States: Intellectual Property (Patent)

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