Sterne Kessler helps clients identify and evaluate potential IP risks associated with business transactions. 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
Businesses interested in licensing or acquiring intellectual property assets or participating in mergers and acquisitions often turn to Sterne Kessler to conduct IP due diligence prior to the transaction. We tailor our IP due diligence review of the asset to meet clients' specific objectives related to the transaction. Often, our IP due diligence investigation involves two steps:
- The first step is a quick 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 will include any defense that another party may raise against the patents.
- If the transaction is still attractive after that initial evaluation, we can carry out an in-depth investigation. That in-depth evaluation may include:
- Identification of third-party patents that may create infringement liability and evaluation of the validity/enforceability of those third party patents
- Detailed evaluation of the prior art and prosecution history of the IP in question to identify patentability/validity/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.
Intellectual Property Valuation
Sterne Kessler assists clients with intellectual property 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.