US—IP due diligence
Produced by Ethan Horwitz, Carlton Fields Jorden Burt, LLP and Kandis Koustenis, Cloudigy Law

The following IP practice note produced by Ethan Horwitz, Carlton Fields Jorden Burt, LLP and Kandis Koustenis, Cloudigy Law provides comprehensive and up to date legal information covering:

  • US—IP due diligence
  • Preliminary considerations for IP due diligence
  • Confidentiality
  • Attorney-client privilege
  • Understanding the deal
  • What IP assets are being acquired?
  • What role does each of these IP assets play in buyer’s goals and its contemplated post-transaction business?
  • How will these IP assets be used (eg owned/licensed, exclusive/non-exclusive, use/exclude others only, etc)?
  • Are there any other factors that may influence the scope of the IP due diligence such as the nature of the industry or the target company?
  • Conducting IP due diligence
  • More...

US—IP due diligence

This Practice Note was originally written for Lexis Practice Advisor®, in the US.

IP ‘due diligence’ is the process of uncovering and understanding information about the status, value and risks associated with the transfer of IP assets as part of a business deal. Prior to conducting due diligence, the parties should consider entering into a confidentiality agreement or nondisclosure agreement (NDA), which protects the disclosure and potential misuse of sensitive, non-public information exchanged by one party (ie a unilateral agreement) or multiple parties (ie a mutual agreement). In addition to business sensitive documents, privileged material may also be shared during the deal negotiations. In this case, the disclosing party must understand that without the formation of a common or community interest between the involved parties, reduced to writing, the privilege can be destroyed when otherwise privileged information is shared with third parties.

Understanding the deal is key for any due diligence analysis. In addition to examining documents, interviews help clarify the importance of the IP assets involved in the deal, how those IP assets will be used after the deal closes, and whether international IP rights, in addition to domestic IP rights, are effected. Relevant questions include:

  1. what assets are being acquired?

  2. what IP assets are being acquired?

  3. what role will each IP asset play post-transaction?

  4. will the assets be used by a non-exclusive

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