Foley & Lardner LLP

IP Due Diligence

For nearly 30 years, with the sole focus on helping clients like you realize your business goals, we have assisted clients with IP due diligence matters ranging from investment decisions for early-round venture capital financing to multibillion-dollar acquisitions.

Comprehensive and thoughtful analysis provided at the right time is crucial for profitable investment and strategic alliance decisions, and a well-thought-out due diligence program will help increase the odds of success of your business decisions. We can help you better determine the total value of your IP portfolio, uncover IP roadblocks that may alter the fate and value of your deal, and devise strategic options for achieving your objectives.

We tailor the due diligence process to fit your needs and the type and size of the transaction. While keeping general principles intact — such as establishing IP value, determining IP roadblocks, and suggesting strategies for follow-up — we also appropriately prioritize the scope of the analysis to fit your budget for the particular deal. For instance, if a third-party blocking patent is discovered early enough, an acquirer or investor can contemplate design-around, licensing, invalidation, or even termination of the transaction, without incurring significant actual or opportunity costs.

Legal, Technical, and Business Insight for IP Due Diligence

We staff our IP due diligence projects with senior IP attorneys who are highly experienced in IP due diligence and attorneys with deep knowledge in the subject matter technology and industry.

Our IP Due Diligence attorneys have educational and technical backgrounds in many of today’s cutting-edge technologies, including biotechnology, nanotechnology, medical devices, cleantech, electronics, software, and new media. With more than 70 attorneys holding advanced technical degrees, including more than 40 Ph.D.s, we can provide you with efficient and targeted due diligence services.

In addition, many of our attorneys have prior industry experience as researchers, business managers, and examiners with the USPTO. Such a diverse background means that we can inject a broader and more pragmatic view into each analysis.

Synergies Between Patent and Trademark Prosecution and Litigation Experience

Our full life cycle of IP capabilities, including prosecution, counseling, and litigation, allows our team to connect the dots and conduct comprehensive analyses.

Because our attorneys also prosecute and litigate patent, trademark, and copyright matters, and many formerly worked as USPTO patent examiners, we can spot subtle problems that can hinder your realization of the full value, or lack of value, of the deal.

Cross-Disciplinary Approach to IP Due Diligence

In a transaction where a significant portion of the value hinges upon intangible assets, the IP due diligence that integrates financing, regulatory, and other factors — including reimbursement feasibility for pharmaceutical and medical device industries — likely will yield a comprehensive profile in a most efficient manner.

By taking a cross-disciplinary approach to your IP due diligence — across IP, regulatory, corporate transactions, venture capital, and health care — we are able to address interdependent issues that are often overlooked.

Reverse Due Diligence IP Audits for Target Companies

It has been our experience that companies looking for the next round of financing or viable exit options, as well as academic institutions searching for tech transfer partners, often find it useful to conduct “reverse due diligence.” This helps ensure that their IP and other assets are streamlined and presentable in a way that is easily understandable and attractive to potential partners and investors.

We are well versed in conducting IP audits for target companies, and will help you proactively identify and resolve possible IP issues that may hinder your completion of the deal.

Related