IP Due Diligence

Understanding the competitive landscape is essential. Knowing what patents other companies have or are filing patents in technologies similar to yours will give you the information needed to make better more informed business decisions.

In merger and acquisition situations we can help evaluate the technical strength of the target's patents. In situations where the acquisition involves business units versus legal entities, we can help make sure that you are acquiring the patents necessary to assure complete "freedom to operate" post transaction.

Historically, M&A due diligence efforts on patent portfolios has focused on the target company’s issued patents and patent applications. Generally, the current status of maintenance payments are verified, chain of title verified, and the patents may be reviewed for the strength of claims. However, what diligence is performed to identify potential risks associated with the target company’s products potentially infringing on other patents? It may be a relatively easy exercise to look at competitive products in the market, but what about patents for which there are no products available? The recent proliferation of Non-Practicing Entities (“NPE’s”) presents an increasing risk that the target’s products may infringe on patents held by NPE’s, with no product in the market. According to information published by Patentlyo, from 2000 to 2010, NPE’s accounted for 13 of the top 25 patent plaintiffs based on the number of defendants sued. Thus simply comparing the target’s products to competitive products may not be adequate to identify significant potential risks.

Tran & Associates takes a unique approach to resolving this problem. We work with the client’s team to identify the key products to review. The selection may be based on sales volume, technology employed, or other factors as determined by the team. Once the key products or technologies have been identified, our technical experts work with the team to determine which technologies or processes should be reviewed for potential third party patents. We then search for patents that may be relevant and prepares a report that includes the patent numbers, patent owners, patent abstract and summary of claims. This information can then be reviewed by the client’s IP counsel to determine if there is potential risk that warrants additional action. This information may also be helpful for drafting specific seller representations and warranties or add leverage to the pricing negotiations.

The firm provides patent portfolio planning, patent portfolio analysis in connection with financing, evaluating, and acquiring technology, patent-related assessment of competitive and other third-party positions, and opinions with respect to freedom to use, infringement and validity, and patentability. The firm's expertise encompasses various types of intellectual property transactions including licensing, development agreements, joint venture agreements, and technology transfer agreements.

Our attorneys regularly counsel clients on key intellectual property matters, including conducting intellectual property audits, assessing the intellectual property positions of competitors, bench-marking industries, evaluating and effecting the transfer of title to intellectual properties and conducting infringement/validity studies.
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