Importance of Patent Due Diligence

What is Patent due diligence?

Patent due diligence generally refers to an audit or a process to review the patents owned by a company, and to determine the strength and weakness of such patents. Patent due diligence is similar to SWOT (Strength, Weakness, Opportunity, Threat) analysis, and further includes determining enforceability of the patents along with commercial potential of the patents. Patent owners always intend to bring patents to commercial markets by way of patent licensing or patent assignment, and hence, patent due diligence is mostly performed by potential sellers of patents, or potential buyers of patents. Patent due diligence is also performed by patent owners during business sale, M&A deals, cross-border technology licensing, etc.

Patent Due Diligence

Patent due diligence refers to an audit to assess patents owned by, or licensed to, a company, business or individual. Patent attorney working on patent due diligence assists clients in identifying patent assets that are not utilised, the processes that clients have in place to capture all the patentable assets they create so that these can be adequately protected by way of patent filings. The patent due diligence process also covers thorough review of the chain of title from which the patent owners derive ownership of the patents in order to ensure that they have all the necessary rights to own and practice the accompanying innovation.

Patent Due Diligence Steps

How to conduct a patent due diligence?

The process of patent due diligence involves multiple steps, and an exact procedure depends upon the complexity and size of the patent portfolio. For example, patent due diligence may be simpler for a startup having 5 patents covering a FinTech (Financial Technology) innovation comprising both hardware plus software aspects, as compared to patent due diligence for a pharmaceutical or biotech company having 250+ patents targeting different disease areas as per the company’s drug pipeline.

Generally, patent due diligence involves following broad steps:

(i) Determining quality related aspects of patents to evaluate patent enforcement potential

(ii) Determining quantity related aspects of patents to ensure that sufficient number of patents exist to cover all the innovative features of the products

(iii) Determining freedom-to-operate to ensure that product clearance exists and the products will not infringe upon third party patent rights

(iv) Determining the title chain and ownership of patents to ensure that all patents are fully owned by the patent owners without any conflict with the patent inventors, patent consultants, employees and external vendors. This step shall also cover thorough review of employment agreement, product development agreements, vendor agreements, consultant agreements, and the like.

(v) Reviewing patent policy and IP policy of the company to ensure streamlined communication between the R&D department, legal department and patent counsels.

It is not uncommon that while performing patent due diligence, additional commercial potential of patents can be determined to contribute to surplus revenue for the patent owners. Patent attorneys perform patent due diligence successfully and efficiently by thoroughly reviewing the tangible assets, intangible assets, corporate assets, intellectual property rights (patents, trademarks, designs, copyrights, trade secrets), thereby extracting maximum value for the patent owners. Therefore, as may be seen, patent attorneys, patent lawyers, patent agents and patent law firms worldwide play an important role while performing patent due diligence during patent transactions, M&A negotiations, in-licensing transactions, out-licensing transactions, and buying or selling of patents and IP assets.

Patent due diligence is extremely crucial for technology sectors in the field of Medical devices, life sciences, pharmaceuticals and biotechnology, and over the years, we have executed more than 1000+ patent research projects across nearly every vertical of biotechnology and medical device domain including emerging areas like cellular biotechnologies, regenerative medicine; molecular biotechnologies, including transgenic plants and animals, pharmaceutical biotechnology; genomic medicine, including personalised medicine, gene therapy and bioinformatics; synthetic biology, including novel engineered machines and organisms; and nanotechnologies and nano-medicine. Our patent researchers have performed multiple any biotech patent searches.

Biotech Patent Searches

We have the most experienced team of patent attorneys with advanced degrees in biochemistry, medical devices and biotechnology, who have a deep understanding of the business technology and science behind the research. We have successfully supported IP attorneys or R&D managers globally to identify pain points in their business, we have helped to define their research strategies, protect inventions globally by filing provisional or non-provisional patent, and mapped competitor patent portfolios to maintain a competitive edge.

Our patent, copyright, trademark, and licensing attorneys assist in securing rights to critical technologies, performing biotech patent searches, managing patent portfolios, negotiating licenses and other agreements to generate revenue and increase market penetration, performing patent-related due diligence in connection with proposed transactions, and advising on the use of patents towards enhanced competitive advantage.

Law Office of Patent Attorney Rahul Dev offers high value patent due diligence services to clients by using proprietary and efficiently proven process along with a fixed fee costs, for performing comprehensive patent investigations and providing clients with strong patent reports for decision making.

We provide comprehensive Patent and Trademark legal services via our global network to create valuable patent portfolios and resolve complex patent disputes by providing patent litigation support services.

Our team of advanced patent attorneys assists clients with patent searches, drafting patent applications, and patent (intellectual property) agreements, including licensing and non-disclosure agreements.

Advocate Rahul Dev is a Patent Attorney & International Business Lawyer practicing Technology, Intellectual Property & Corporate Laws. He is reachable at rd (at) patentbusinesslawyer (dot) com & @rdpatentlawyer on Twitter.

Quoted in and contributed to 50+ national & international publications (Bloomberg, FirstPost, SwissInfo, Outlook Money, Yahoo News, Times of India, Economic Times, Business Standard, Quartz, Global Legal Post, International Bar Association, LawAsia, BioSpectrum Asia, Digital News Asia, e27, Leaders Speak, Entrepreneur India, VCCircle, AutoTech).

Regularly invited to speak at international & national platforms (conferences, TV channels, seminars, corporate trainings, government workshops) on technology, patents, business strategy, legal developments, leadership & management.

Working closely with patent attorneys along with international law firms with significant experience with lawyers in Asia Pacific providing services to clients in US and Europe. Flagship services include international patent and trademark filings, patent services in India and global patent consulting services.

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