Patent portfolio acquisitions have increased in size, value and frequency in recent years. Traditionally in an M&A transaction, a patent portfolio was simply part of the purchase of the business enterprise – accompanied with many other aspects of the purchase – such as good will, customer lists, employees, and facilities. In other words, a side dish, not the entrée.
In today’s market, strategic patent acquisitions have increased in prominence and represent a significant departure from the traditional mechanism of patent acquisitions via M&A deals, with new players and varying deal types.
Since patents are the focus of these transactions, the due diligence involved becomes that much more important. This article lists the top items you will want to consider as part of your strategic acquisition due diligence.
- Prioritize objectives
- Identify relevant patents
- Confirm ownership
- Confirm dates: Filing and priority dates, publication dates
- Technology: Titles and Classification data
- Geographic scope
- Expiration dates & remaining life
- Upcoming deadlines: maintenance and prosecution activities
- Review of all contracts (licensing, settlement, other contracts)
- Patentability and enforceability (start reviewing those that are “top priorities”)
To learn more, a copy of the full report, “Strategic IP business acquisitions: A top 10 checklist”, is available here.