IP Consulting

IP Due Diligence

An IP due diligence can be defined as the evaluation of a company’s legal position with respect to its intellectual property rights. An IP due diligence most often occurs within the context of corporate portfolio measures, so-called mergers and acquisitions (M & A). An IP due diligence can also occur when an investor, such as a venture capital firm or a bank, is contemplating a capital injection into a company. This type of IP due diligence is often focused on establishing the value of a usually fledgling, cash-strapped but technologically innovative company.

An IP due diligence involves the meticulous evaluation of all intellectual property rights held by a company. This includes, for example, for United States patent law an evaluation of United States patents and applications and United States trademarks and applications. Issues frequently raised include whether a patent is still in force, whether a reexamination proceeding is pending before the United States Patent and Trademark Office, whether an invalidity action is pending before a United States court of law, whether a company’s products fall within the scope of a patent’s claim language or whether competitors are hindered by a patent. A company’s IP-related agreements, such as license agreements, confidentiality agreements and research and development agreements, can also be the subject of review.

Dr. Thot’s work as an M & A attorney in Düsseldorf as well as his tenure with the Bayer AG and Lanxess Deutschland GmbH corporate patent departments in Leverkusen provided him with wide-ranging experience and expertise in conducing IP due diligence reviews in acquisitions (purchase and sale), restructuring and portfolio measures.