Intellectual Property Due Diligence

Anytime a company considers investing in or licensing rights from a target company, it is imperative that the investor/licensee have an accurate understanding of the strengths and weaknesses of any intellectual property (IP) involved or any IP threats the target company may face. Legal counsel is required by the investing/licensing party to evaluate these strengths, weaknesses and/or threats, and by the target company to present its IP situation in a favorable light. Lewis Roca's lawyers are ideally suited to fulfill either of these roles for their clients. 

When representing the investing (e.g., purchasing) or licensing party, our lawyers understand the myriad legal issues that can arise because they have represented clients on both sides of many such transactions. They are also keenly aware that the process cannot take so long that the transaction fails due to delay. A successful IP due diligence effort in support of a substantial investment begins with a questionnaire for the target company that touches all forms of IP and requires effective follow-up to assure that the required information is provided. 

When representing a target company, i.e., a company in whom an investment is being made, we understand due to our extensive experience how to present the facts in a light most favorable to their client. As a result, they are often able to explain the facts in a way that reassures the investing party’s lawyers when an apparent irregularity is raised. 

A few examples of IP due diligence efforts handled by our lawyers are:

• Acquisition of the world’s largest photovoltaic manufacturer by an international technology conglomerate. We represented the acquired party leading to a successful acquisition.
• Potential investment by a firm client in an early stage company having over 50 patents in far-reaching technologies. Due diligence performed by our lawyers uncovered irregularities in ownership of certain legacy IP that caused the client to pull out of deal with all due diligence expenses paid under contract by the company in whom investment was being considered.
• Acquisition of major oil tool manufacturer by a competitor. Our lawyers represented the acquired party leading to a successful acquisition.
• License transaction where licensor was subjected to full IP due diligence including analysis of extensive freedom-to-operate searches. We represented the licensor and succeeded in satisfying the licensee.
• Investment and know-how transaction in which a client of ours conducted due diligence on behalf of licensor, leading to a successful acquisition.
• Acquisition of five related companies by a European electrical equipment supplier. Our lawyers represented the acquired parties leading to a successful acquisition.