Intellectual property due diligence is a major consideration in many business deals. The IP chain of title must be proper to secure investments, provide representations and warranties as to IP ownership, and to bring a cause of action for IP infringement. Issues with chain of title for intellectual property may delay or entirely stop a merger or acquisition and can negatively or positively impact shareholder value or purchase price.
NK Patent Law frequently works in intellectual property due diligence matters on behalf of investors such as angel groups and venture capital firms, and on behalf of companies acquiring other businesses in a merger and acquisition setting. In this role, NK Patent Law is working to assure IP ownership and sufficient patent scope and validity and trademark clearance. In a due diligence setting,
NK Patent Law reviews the existing patent and intellectual property portfolio, any existing supplier or customer agreements that may impact patent ownership, any licensing agreements entered into by the relevant parties, and employment agreements with employees of the relevant parties.
Our professionals in this group include:
Examples of our representative work include:
- Conducting due diligence on behalf of local software company that acquired Intellectual Property and other assets of a competitor and then shortly thereafter sold the acquired assets for a significant return on investment.
- Conducting due diligence on behalf of health care company with aggressive acquisition strategy for mobile application software program.
- Conducting due diligence on behalf of Venture Capital Firm in potential acquisition of energy monitoring services and goods provider.
- Assuring chain of title on several hundred patent and patent application portfolio before acquisition.
Justin R. Nifong has presented on these topics and patent and intellectual property ownership.
An example of materials prepared by Mr. Nifong is available here on patent ownership and licensing.