Due Diligence & Licensing

For businesses considering licensing intellectual property (IP) or those that are involved in a merger, an acquisition, an asset transfer, partnering or an investment transaction, it is essential that a comprehensive intellectual property assessment be conducted. In addition to determining the ownership of the IP rights at issue, our IP assessment includes:

• Analyzing the patents, patent applications, and claims of the IP at issue; in certain circumstances, further analysis of the patent file histories may be required

• Verifying that all maintenance fees and annuities have been paid

• Assessing cross-citation of prior art among related or similar applications

• Identifying weaknesses present in the IP portfolio - is the IP portfolio susceptible to a design around?

• Analyzing freedom to operate and patentability

• Confirming that patent claims cover company’s products