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In today’s knowledge-based economy, intangible assets are typically the major value driver of a company. Research suggests, for example, that more than 80 percent of corporate value today is comprised of intangible assets, such as intellectual property assets. As a result, IP due diligence is a critical component of most corporate investments today—regardless of whether that investment takes the form of an acquisition, asset transfer, joint venture, license, merger, private equity deal, strategic alliance, or development of a new product or branding strategy.

Dickstein Shapiro’s IP Practice performs due diligence for corporate investments related to IP assets, including patents, copyrights, trademarks, trade secrets, and know how. Our primary goal in this work is to use due diligence processes so clients can realize the full intended value of their investments and can assess the risk associated with each particular investment or transaction.

We recognize that the scope of due diligence needs to match the business goals of our clients and should be tailored for each client to ensure that the value of each investment is maximized. Our team includes attorneys with significant M&A experience as well as attorneys with advanced industry, technical, or scientific background who can be brought into each due diligence matter as needed. This collaborative approach helps keep our clients’ business goals and bottom line front and center and allows us to conduct due diligence as efficiently and effectively as possible.

Our clients routinely rely on our experience and knowledge of the IP due diligence process to help them verify the material facts relevant to their strategic investments, assess and minimize risk, and ultimately to help them make informed investment decisions. Our due diligence services include:

• Performing patent and trademark portfolio audits on a worldwide basis to determine the relative value and strength of the intellectual property assets of interest;
• Analyzing the scope and validity of issued and pending patents;
• Verifying the right of a seller to sell intellectual property rights, including checking recorded assignment documents, licenses, and security interests;
• Determining whether the IP rights to be transferred have been, or are currently, the subject of any legal proceeding, including litigation, interference, opposition, or cancellation proceedings;
• Confirming the payment of maintenance fees for patents on a global basis;
• Analysis of patent expiration dates;
• Reviewing and analyzing licenses and other agreements that may impact the value, enforceability, and transferability of intellectual property assets;
• Advising clients on government rights under funding agreements;
• Determining significant deadlines related to assets that are the subject of an acquisition or other investment;
• Drafting and reviewing relevant agreements and assisting clients negotiate terms of their transactions, including appropriate intellectual property representation and warranty clauses;
• Advising clients on how to correct issues and strengthen their portfolios;
• Conducting freedom-to-operate analyses related to new products and services;
• Competitor monitoring and analysis to determine, for example, if a competitor is infringing a client’s intellectual property rights, assist clients in avoiding the IP rights of competitors and patent holding companies, determine possible directions of research and development, and to identify potential acquisition opportunities;
• Monitoring and managing clients’ licensing arrangements on a global basis;
• Analyzing compliance with federal, state, and local data protection statutes, including compliance policies, procedures, and checklists related to data breach liability;
• Assessing the adequacy of policies and procedures implemented to protect trade secrets;
• Evaluating the adequacy of brand protection policies and procedures; and
• Examining domain name coverage issues.