Intellectual Property (IP) Due Diligence, as a legal strategy, can encompass a variety of different objectives and tactical moves but principally, it is a term that represents the meta-goal of determining a company’s intellectual property and establishing a path for monetization.
Of course, one can approach IP Due Diligence from the vantage point of the “seller” of a given corporate transaction involving IP or from the “buyer’s perspective. Either way, it is critical for the relevant party to conduct a thorough review of the IP at issue and ascertain both existing IP and future IP opportunities of intangible assets including patents, trademarks, copyrights, and trade secrets. Specifically, the ownership rights of each piece of IP should be accounted for along with an in-depth discussion and review of monetization strategies, including licensing, for the IP.
In the context of IP Due Diligence as a feature of a larger corporate transaction, it is helpful to consider a series of issues to help establish the parameters of the importance of the IP and how it should be prioritized according to the larger objectives of the deal;
- Is the prospective deal exclusively for the IP or is the IP secondary to larger corporate-acquisition objectives
- Are licensing arrangements routine for either the providing or procuring company?
- Does either the providing or procuring company have a pre-set budget or expectation for the IP?
- Can the IP be converted to tangible assets?
- Can the IP be exported to various industries or is it specific to an isolated niche?
Our IP attorneys consistently advise clients on a variety of intellectual property transactions, including assignment agreements, publishing agreements, consent and co-existence agreements, work-for-hire agreements, franchise agreements, and domain name transfer agreements.
