Hewlett-Packard (HP), the information technology giant, bought Autonomy for $11.1 billion, in 2012. They wanted to move away from computer hardware to computer software and buying Autonomy seemed like the smartest move to make. Inaccurate income statements, balance sheets, cash flows, and footnotes were a part of the due diligence oversight. Within 14 months after the deal, HP sold Autonomy by writing down more than 80% of the purchase price.
If HP had followed the due diligence practices that they regularly did, they shouldn’t have had to write down the value of their purchase. Organizations should be mindful of following due diligence if they don’t want a botched deal.
What is patent due diligence?
The process of carefully analyzing a company’s patent portfolio is called patent due diligence. It audits the quantity and the quality of IP assets owned by or licensed to a company, business, or individual. The assessment also includes how intellectual property is captured and protected by the business.
IP due diligence is usually performed by a prospective buyer in relation to the IP assets of the target company. It can also be carried out by a company on its own assets in preparation for a business sale or to close a licensing deal. It tells you whether you can monetize your patents through licensing, enforcement or divestment.
It also helps you assess the infringement risks posed by competitors’ patents or the patents of another business.
Why conduct IP due diligence?
IP assets have become one of the most important assets that businesses could own. Therefore, it is imperative for businesses to understand the following:
- The quantity and quality of the IPs with them so that 3rd parties can put a value on them
- To identify IP assets that are not being used currently and whose maintenance costs are being unnecessarily paid
- To assess whether all the IP assets are adequately protected
- To ensure that you have all the necessary rights to your IP assets in order
- To check whether a third party is infringing on your IP rights
When should a patent due diligence be performed?
- After you receive a Cease and Desist Letter, or a Notice Letter:
A cease and desist letter or notice is usually sent as a warning to infringers about the existence of the patent rights to initiate licensing discussions, enforce their patent rights, or secure the opportunity to collect damages.
Such letters claim that the accused infringer stop their infringing conduct immediately. If a company receives such letters, it should ensure that they have a strategy in place to respond properly and reduce its risks.
They should note the depth of the infringement analysis (usually provided by the patent holder). It will have details about the patent expiry date, and applicable state statutes which talk about the consequences of acting in bad faith.
- During Mergers & Acquisitions:
During an M&A transaction, the following things are assessed, whether the seller’s patent portfolios include critical company technology to confirm if all fees have been paid and no ownership issues or chain of title defects exist. Following these steps will permit the parties to assign a monetary value to the portfolio. The analysis at this stage can also include assessing the patent infringement risks posed by third-party patents on the technology that is going to be acquired.
- During divestment, or licensing:
Divestment and licensing strategies allow the patent owners to determine how their patents will be utilized. If their portfolio affords broad patent protection, then the value of the technology is high. Valuing patents can be performed in a number of techniques, both quantitative and qualitative. Qualitative analysis helps in determining the scope and strength of the patent rights. On the other hand, a quantitative analysis leverages these findings to assign a monetary value to those rights.
- For contingency reasons:
Patent due diligence can also be done for contingency reasons. If you believe that you might be sued for infringement, and would like to have a deeper understanding of your patent portfolio and how it fares against your competitor’s, then it is wise to conduct patent due diligence. Let’s say you are planning to sue a company that is infringing on your patents, then it is wise to invest in conducting patent due diligence.
- Before filing a patent application:
Patent due diligence is also performed before filing a patent application. They are performed to identify and assess prior art references.
How to Conduct IP due diligence.
Conducting IP due diligence requires professional skills and has to be done thoroughly. IP due diligence should be performed during the initial stages of negotiations itself. By doing so, you will identify if there are any legal issues that affect the value of the IP. While every business transaction is different, there are a set of requirements that should be met when conducting IP due diligence. Here are a few of them.
- Identify IP assets:
You need to find the patents, trademarks, brand names, domain names, and any other tangible and intangible assets of the company that you are investigating.
- Verify ownership and existence of IP:
One of the first things that are usually investigated during an IP due diligence process is IP ownership. To establish and recognize the seller’s rights, a series of questions are asked about each of the IP assets that are being considered. The IP assets should be easily transferable and there should not be any disputes. If there are disputes, it becomes difficult for the seller to transfer the title and rights of the IP asset to other parties.
- Check for areas covered in the IP:
When you’re validating each IP asset, it is imperative that you check for the countries where IP rights are covered. Therefore, you need to identify which of the territories are protected. If the business operates in multiple countries and has not secured their rights in all the areas where they operate, you might not be able to leverage the IP in those areas. Do remember that IP assets like copyrights and patents are only valid for a certain period of time. You need to study the local IP laws of each directory to check the validity.
- Checking for third party claims:
Apart from identifying IP ownership, it is also wise to check if there are any third-party claims with respect to the seller’s IP assets. There are times when a third-party might have got rights to an IP asset unknowingly. You need to check all the license agreements, franchisee agreements, joint venture agreements, MOUs, and other contracts to ascertain that you will be receiving exclusive rights once you buy the IP assets from the seller.
- Evaluate potential IP infringements:
You also need to ascertain whether a third party is infringing on the seller’s IP rights or if the seller’s IP rights are infringing on another company’s assets. In either of these cases, the disputes that arise from it will negatively affect your business. You have to mandatorily conduct a freedom-to-operate search to check whether the investor can make use or sell their IP assets without infringing on any third-party rights.
An FTO search will give you deeper insights into patent rights and tell you if there are any other roadblocks that you need to be careful about. It’s the FTO searches that show any roadblocks. You need to take the necessary steps to overcome them.
Steps to conduct due diligence properly:
- Ensure that you have a proper IP due diligence team in place. Discuss with IP professionals to see what can be expected from the transactions.
- Come up with an IP due diligence checklist based on what is necessary.
- Segment the IP assets of the target that is relevant for the transaction. Segregate IP rights or protectable intangible insights from those that are not relevant. The IP due diligence should show the importance of connecting such additional IP rights with the main IP rights for the transaction.
- Find out the nitty-gritty when it comes to IP ownership. Ensure that you collect information on other IP rights that might pose an issue in the future.
- It is important that the facts collected are also double-checked so that there is no discrepancy.
- Analyze the protected and protectable IP rights. Check for the IP’s status, validity, ownership, claim, and conflict.
- After conducting all the above, prepare the final due diligence report. It should highlight the risks that are a part of the strategies and ways to reduce the risks and the liabilities.
- Document, execute, and record the IP agreements.
Conducting due diligence is a non-negotiable activity for businesses to mitigate the risks involved. It should be done no matter what your IP portfolio composition looks like. Having a proper due diligence strategy and following it rightly provides a world of benefits for all the stakeholders involved.
If you are looking for an end-to-end IP services firm to help with patent due diligence, ResearchWire will be glad to help you with it. Get on a call with us to understand how we can assist with your IP needs.