Due Diligence: Intellectual Property Due Diligence

Mar 23

THIS IS THE FREE, REDACTED VERSION OF THE TASKS IN THE M&A REFERENCE MODEL  AND IT IS LICENSED UNDER Creative Commons Attribution-NonCommercial-ShareAlike 4.0 International THE FULL SET OF DATA HAS TO BE LICENSED COMMERCIALLY.  HERE is a full model example for one task.

The task has the following goal(s):

Legal aspect: analyzed

Draft IP Integration Plan: prepared

Risk: analyzed

The task has the following objectives:

Risk: minimized

Quality: maximized

Information asymmetry: minimized

Short description of task Intellectual Property Due Diligence:

In a comprehensive IP due diligence, the portfolio of intellectual property rights, the target's relationships to all IP sources and the various types of current and future use of intellectual property are examined.

The task uses the following business object types:

Target's risks regarding intellectual property, IP licensor, Legal aspect of an IP licensing contract, IP licensing contracts, Legal aspect of a brand or trademark, Opposition to a brand or trademark, Authority for trademarks and brands, Trademark of the target company, Trademark, Brand

Tool: Patev Innovation Intelligence

The tool automates the following actions

Check the IP portfolio: fully automated.
Check sources of intellectual property: fully automated.
Check IP position and defendability: partially automated.
Check current and planned future uses of IP: partially automated.
Compare the IP rights with current and future uses: partially automated.
Determine IP-related risk: partially automated.

Get A free demo of PATEV here

Questions to be used during the execution of the task

The task is executed with the following questions, among others:

Which patents, trademarks, copyrights, title protection and subsidiary measures exist and have been taken by the target?
Does the target share intellectual property with other companies?
In which countries do patents, trademarks, copyrights, title protection and subsidiary measures of the target exist and have been taken?
Which clauses on intellectual property rights are included in customer contracts and cooperation agreements to ensure that none of the intellectual property rights or trade secrets of the target company are "lost"?
Has the Target taken sufficient measures to ensure that work results of employees and service providers in all countries are IP of the Target
Which intellectual property has been licensed by the target to third parties?
What are the contracts for licensing intellectual property to third parties? Are there exclusivity clauses in these contracts?
Which third party intellectual property (e.g. open source software, patents) has been and is being used by the target and does the target have the corresponding rights of use?
Are the target's rights of use for third-party intellectual property transferable or assignable to the buyer?
For each supplier relationship, is it ensured that the target has sufficient rights to use third party intellectual property rights which are consistent with the existing and future forms of use intended by the buyer?
Are appropriate intellectual property protection clauses in employment contracts for all internal and external employees in all countries?
How can complementarities in intellectual property be translated into synergies?
Will patents, trademarks, copyrights, title protection and ancillary measures of buyer and target be mutually beneficial?
Will applications be used to manage patents, trademarks, copyrights?

THIS IS THE FREE; REDACTED VERSION OF THE TASK IN THE M&A REFERENCE MODEL: THE FULL SET OF DATA HAS TO BE LICENSED

Karl Popp www.drkarlpopp.com