Due Diligence

We provide intellectual property due diligence to our VC / investor and corporate clients in connection with M&A, IPO, private equity, lending, and significant technology transfer transactions. For target businesses, typically smaller enterprises and start-ups, we help position the company’s IP with an eye towards a future liquidation or other financial event and then are actively involved in responding to IP due diligence by the suitor.

For the buyer / investor, our IP due diligence is essential to an informed evaluation of the value and risks presented by the target company. In a number of deals, our diligence has revealed serious discrepancies with the picture of the IP landscape painted by the enterprise, ultimately leading to a change in valuation or a decision to “walk away”. In other cases, our confirmation of the IP picture has expedited closing of the deal.

We fit the IP due diligence to the particular deal and needs of our clients. For certain transactions—usually larger deals involving tens or hundreds of millions of dollars—we’ll dig deep into the business and technology of the target company and the U.S. and international IP portfolio to determine strengths and weaknesses as well as identify steps for shoring up any holes. Smaller deals may justify our focus only on certain key aspects of the technology and business, yet still enable the investor/acquirer to make an informed decision. 

We help companies anticipating a liquidity or financing event to prepare for IP due diligence. Straightening out an IP portfolio can take time, so we advise our clients to start the process earlier rather than later. We triage the IP situation with the company’s decision-makers, identify gaps or areas of concern likely to be raised by an investor/acquirer, and then collaborate with the client on developing and executing a plan to elevate the value of the IP. When diligence rolls around, we become the point person for any IP related questions and issues. 

Whether representing the buyer / investor or target business, our due diligence methodology features three distinct steps: investigative review, portfolio strategy / counseling, and a comprehensive understanding of IP assets that is both informative and actionable.

In this process, we meet with management and scientists alike to build a clear and nuanced vision of the company in addition to a full review of all IP-related documents and agreements. Our clients appreciate the prioritized strategic and tactical advice this process almost always surfaces.

Our Services

Our due diligence services include the following:

  • Investigative review of company
    • Review of technology, marketplace, competitors, future products and services, exit strategy and goals, etc.
    • “Smoke out” of threats such as possible infringements, inventorship disputes, issues relating to existing/planned agreements (employment, licensing, vendor, etc.)
  • Portfolio strategy and counseling
    • Counsel on provisional / utility / design patent filing and foreign filing strategies
    • Advice on trademarks, copyrights, and trade secret protection
    • Creation of claim strategies to maximize protection
    • Identifying activities to mitigate risk
    • Providing guidance on notebooks and invention disclosures
  • Advice on implementation steps
    • Prioritizing IP in business value terms
    • Creation of mitigation plans for risks identified
    • Counsel on which IP to most aggressively protect
    • Creation of timelines and budgets
    • For companies, providing advice on identifying / influencing investment sources
    • For VCs and investors, counseling on risks involved in investment / acquisition