There are two main types of due diligence – defensive and offensive.
Defensive is an on going self assessment to prepare for future inventor/acquirer/licensee transactions and to stress test your business plan and commercial strategy. Defensive due diligence can also be critical as you plan to launch a new product or an existing product into a new territory.
Offensive is performed by an inventor/acquirer/licensee to understand the value of the intellectual property of the company they are looking to invest in or purchase.
What might a due diligence cover?
- What patent rights are owned and by who?
- Are the rights valid?
- What does the patent cover and what does it not cover?
- Are we free to use the technology?
How can FPA assist?
Our team is experienced in all aspects of both defensive and offensive due diligence assessments on patents and designs. We routinely assist companies and investors by:
- conducting searching to ascertain what coverage is held by the company
- assessing the scope of the coverage and whether it covers the commercial arrangements of the company and future intentions of the investors
- conducting freedom to operate and/or landscaping searches to determine whether there is a minefield of patents that needs to be navigated by the company
- assessing the risk of infringement on third parties rights
- conducting validity and invalidity assessments, including arranging searches to uncover potential prior art
- providing insights into where a technology lies within the general IP landscape
- conducting audits to determine whether there are any potential ownership issues
- preparing intellectual property and risks sections for prospectus documents