IP Due Diligence

Leveraging the talents of our world-class patent practice, Morrison & Foerster’s team conducts patent due diligence for clients in mergers and acquisitions, licensing agreements, joint ventures, investments, public offerings, and collaborations. Through rigorous examinations of patent portfolios, we help companies and investors assess the risks and value of these transactions.

We bring a deeply talented team to evaluating the most complex patents, and our combination of sophisticated scientific background and business insight sets us apart. With 65 PhDs and more than 100 advanced degrees, our team is acutely knowledgeable in the sciences and technologies in which our clients operate. Further, through years of experience, we have gained valuable insights into the issues and pitfalls associated with patent evaluation. We bring these together to handle our clients’ matters efficiently and effectively, ultimately saving them time and money. We conduct thorough freedom-to-operate analyses and investigate the enforceability, scope, ownership, and validity of patents. Importantly, we also help clients determine how patents fit within a larger IP strategy and broader business goals.

Clients benefit from our unique approach, which includes both multilevel talent and cross-functional areas of law. Our patent due diligence team includes partners and associates, as well as patent agents and analysts with strong technical expertise, and a team that is wholly dedicated to patent searches. Meanwhile, we work closely with professionals in other areas of law to ensure sophisticated, multifaceted issues are not missed, sparing clients from the work of synthesizing advice from different functional areas.

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 expertise 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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