Pure IP due diligence

Often general counsel is handling corporate due diligence, and perhaps some aspects of IP, but you need someone with the specialized and technical knowledge for the rest. We do that. We work with you to determine a budget based on the importance and desired scope of review (e.g., small vs. large target). This due diligence can include ascertaining the scope of coverage of the target’s patents, the validity and enforceability of such patents, identifying key competitors and their key patents, examination of existing license agreements and disputes, identifying government rights, status of trademark use and enforcement, cataloging existing know-how among key employees and much more.

We determine if the patents cover current products and provide input on their commercial value. We can also determine if others (including other possible targets) have better IP. We also determine if the target owns the IP, looking at consulting and employment agreements, and any agreements that include a transfer of rights. Another option is to perform limited or extensive right-to-use studies of the target’s products.

Typical issues we see include: IP not assigned by founders or contractors; unlimited indemnity, narrower scope of protection than advertised or cover only discontinued products; already licensed to competitors of acquirer.

IP and related due diligence

In addition to the IP due diligence, we can review IP related agreements to identify indemnity obligations, which contracts are terminable upon acquisition, etc. We’ve integrated our skilled corporate attorneys with our renowned intellectual property attorneys to provide a unique and valuable service not readily found in the market. This can provide efficiencies in the review.

Complete due diligence

With our skilled corporate attorneys, we can do any other aspect of the due diligence for the project as well. We’ve integrated our skilled corporate attorneys with our renowned intellectual property attorneys to provide a unique and valuable service not readily found in the market.

Assistance we provide includes:

  • Identifying the structure of the proposed transaction
  • Reviewing the extent of the exclusivity of the intellectual property assets in the marketplace
  • Isolating potential exposure to liability
  • Advising on licensing options
  • Counseling on tax implications

This due diligence includes ascertaining the scope of coverage of the target’s patents, the validity and enforceability of such patents, identifying key competitors and their key patents, examination of existing license agreements and disputes, identifying government rights, status of trademark use and enforcement, cataloging existing know-how among key employees and much more.

Acquisition Due Diligence

Experience Highlights

Acquisition by Zodiac Marine & Pool
Represented Zodiac Marine & Pool in its $327 million acquisition of Polaris Pool Holdings Corporation from more
Cash/stock transaction for an acoustic parts and car body sealants company
Represented an acoustic parts and car body sealants company located in the U.S., Australia and the U.K. in connection with the sale of the company, more
Acquisition for a major on-line gambling company
Represented a major on-line gambling company in an acquisition of all outstanding shares in a company owning rights to databases and search engines more
Acquisition of General Electric's Hydro Equipment Business
Represented Andritz AG in the acquisition of the hydro power equipment business of General Electric, including GE’s majority interest in GE Hydro more

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