Due Diligence & IP Valuation

Intellectual property (IP) assets are often a driving force in business transactions, including licensing agreements, joint ventures, mergers, acquisitions, and venture capital investments. Sterne Kessler helps clients identify and evaluate potential IP risks associated with these transactions and conducts IP due diligence review that is tailored to meet our clients’ specific objectives.

We understand science and technology, and our team includes lawyers with extensive experience in patent and trademark law to manage due diligence in a variety of complex transactions. We also understand the business and market challenges that drive IP decisions, and offer strategic counsel that protects our clients’ interests with an eye on strategic growth. We assist clients with IP valuation, including evaluating how well IP assets are protected. We also analyze actual or potential IP liabilities and other impediments to unlocking the value in a target company's IP portfolio.

Due Diligence Advice

Our IP due diligence investigation typically involves two steps:

• An initial review to identify glaring problems within a specific transaction or IP portfolio. This inexpensive review points out potential risk areas such as infringement of third-party patents and weaknesses of the IP portfolio. Such weaknesses can include any defense that another party may raise against IP assets in the transaction.
• If the transaction is still attractive after that initial evaluation, we can carry out an in-depth investigation. This may include:
  • Identification of third-party patents or trademarks that may create infringement liability and evaluation of the validity/enforceability of those third-party assets.
  • Detailed evaluation of the prior art and prosecution history of the IP in question to identify patentability, validity, and enforcement issues.
  • Detailed review of the ownership of the IP portfolio and assessment of other issues such as inventorship disputes, potential interferences, and interests of the U.S. government.

Sterne Kessler's role in conducting due diligence investigations is identifying and putting into proper context all potential risks to each business transaction so our clients are well informed and can maximize their position in a deal.

Intellectual Property Valuation

Sterne Kessler assists clients with IP valuation to determine the scope of a target company's intellectual property assets (including inventions, patent applications, patents, trade secrets, trademarks, copyrights, licensed-in technology and licensed-out technology) and the extent to which those assets are protected. We also assist in determining whether a target company has actual or potential intellectual property liabilities or impediments to marketing its products or services. In this role, we work closely with securities and corporate lawyers to document a complete due diligence package for clients.