Intellectual Property Due Diligence-A Cautionary Tale

This extract from the article provides the top 10 iP due diligence tasks, describes each and provides some guidance for how and when each task should be performed.
IP due diligence is applicable in many contexts, ranging from the obvious mergers, joint ventures and other licensing arrangements, to the perhaps less obvious bank loans, venture capital financing, and securitization of Intellectual Property assets. However this article has been structured around an arbitrary “Buyer” of IP assets. Buyers will certainly want to consider these 10 action items, but a Seller can also use the task list to improve the salability of its IP assets. The article has a strong patent focus, but other types of IP should also be considered where important to the value of the deal, including non-registered IP assets, such as trade secrets, know-how, domain names and unregistered trademarks and copyrights and the like, in performing due diligence. Further, the task list is directed solely to due diligence and assumes that a competent IP attorney has reviewed the various contract clauses relating to IP. Contract clauses are also equally important to a deal’s success.