Pure IP due diligence

Often general counsel is handling corporate due diligence, and perhaps some aspects of IP, but you need someone with the specialized and technical knowledge for the rest. We do that. We work with you to determine a budget based on the importance and desired scope of review (e.g., small vs. large target). This due diligence can include ascertaining the scope of coverage of the target’s patents, the validity and enforceability of such patents, identifying key competitors and their key patents, examination of existing license agreements and disputes, identifying government rights, status of trademark use and enforcement, cataloging existing know-how among key employees and much more.

We determine if the patents cover current products and provide input on their commercial value. We can also determine if others (including other possible targets) have better IP. We also determine if the target owns the IP, looking at consulting and employment agreements, and any agreements that include a transfer of rights. Another option is to perform limited or extensive right-to-use studies of the target’s products.

Typical issues we see include: IP not assigned by founders or contractors; unlimited indemnity, narrower scope of protection than advertised or cover only discontinued products; already licensed to competitors of acquirer.

IP and related due diligence

In addition to the IP due diligence, we can review IP related agreements to identify indemnity obligations, which contracts are terminable upon acquisition, etc. We’ve integrated our skilled corporate attorneys with our renowned intellectual property attorneys to provide a unique and valuable service not readily found in the market. This can provide efficiencies in the review.

Complete due diligence

With our skilled corporate attorneys, we can do any other aspect of the due diligence for the project as well. We’ve integrated our skilled corporate attorneys with our renowned intellectual property attorneys to provide a unique and valuable service not readily found in the market.

Assistance we provide includes:

  • Identifying the structure of the proposed transaction
  • Reviewing the extent of the exclusivity of the intellectual property assets in the marketplace
  • Isolating potential exposure to liability
  • Advising on licensing options
  • Counseling on tax implications

This due diligence includes ascertaining the scope of coverage of the target’s patents, the validity and enforceability of such patents, identifying key competitors and their key patents, examination of existing license agreements and disputes, identifying government rights, status of trademark use and enforcement, cataloging existing know-how among key employees and much more.

Acquisition Due Diligence

Experience Highlights

Acquisition work for Diageo PLC
Assisted Diageo PLC with various aspects of an acquisition of portions of Seagram Spirits division, including transfer of domain names, performance more
Employee benefits advice for one of the nation's largest providers of telephone and broadband services
Advised one of the nation's largest providers of telephone and broadband services with respect to compensation and employee benefit plan issues in a more
Sales of shares of a major online gaming company
Represented the management of a major online gaming company in connection with the sale of all shares in the company to a public company. more
Licensing for German pharmaceutical company
Represented a German pharmaceutical company in connection with a $400 million licensing and commercialization transaction to obtain rights more

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