Due Diligence & Corporate Transactions

Whether representing the buyer, seller, or target company, licensor or licensee, or the surviving company in a merger, WashPat will provide an IP due diligence investigation that is a thorough, cost-effective intellectual property audit. IP due diligence exposes not only the holdings and property rights of a business, but reveals the rights of the business’ competitors in the marketplace. Your WashPat Lead Analyst will conduct a pre-investigation interview to determine the nature of the business, the core business model, relevant future plans, and the chief technology or technological sector of the business. This information is vital to successful IP due diligence, because comprehension of the strategic objectives of the business will direct the due diligence investigation to material issues and the goals of the corporation transaction. WashPat understands the sensitive nature of this privileged information and the dissemination of such information by your Lead Analyst to WashPat team members is limited by necessity. Security is a top priority and all WashPat Analysts have signed and faithfully abide by confidentiality agreements.

Once your WashPat Lead Analyst is advised as to the company’s current and future business objectives, he or she can coordination an exhaustive investigation. This investigation entails many facets, such as:

  • Identify IP Assets
    • Corporate Profile / Patent Assignee Search: WashPat will first identify the corporate structure, including parents and subsidiaries, divisions, and affiliations, to then conduct a thorough patent assignee search. The search will also locate patent assignment data to ensure that every potential patent asset of the corporation is discovered and clear title of ownership and inventorship is established. In addition, the search can be expanded upon request to include an inventor search of frequently appearing inventor names.
    • Trademark Search: A comprehensive search of the U.S. Federal and State trademark databases (and foreign, if requested) will reveal all available marks and/or trade names utilized by the company, as well as assignment and opposition information.
    • Copyright Search: A search through all legal documents, monographs, and serials will disclose all copyrights filed with the U.S. Copyright Office.
    • Material Contracts Search: WashPat will search through SEC filings and exhibits, Corporate Acquisitions and Mergers database, and Public/Private company reports to identify licensing, distribution, indemnification, mergers, and other relevant agreements. This search will identify non-patent or patent-related considerations, such as the existence of agreements that affect the business’ freedom to operate.
    • Unregistered IP Assets: If provided with an inventory of known IP assets, WashPat will use its expertise to identify any asset not supported or protected by patent, trademark, or copyright so that further investigation can be conducted as to dates of first use.
    • Domain Names: WashPat can conduct a search to identify all domain names attributed to a company to the extent owner information is available.
  • Identify existing or potential issues regarding ownership/control of assets:
    • Market Clearance / Freedom to Operate Search: A proactive identification of patents in the relevant market reveal or reduce the risk of subsequent patent litigation. Although this search can never guarantee that a company has a clear path to market its products, it is limited by only two factors – (1) the effectiveness of the search; and (2) the existence of prior art that is pending in secret at the USPTO at the time the search is conducted. WashPat can assure that your decision-making ability is affected by only the second limiting factor.
    • Infringement Search: Distinguishing a product, service, or patent from similar patent claims can aid in the avoidance of infringement issues (i.e. ensure that the product has been properly designed around patent claims of another; avoid enhanced damages from willfulness should the product be found to infringe such similar patent claims; etc.).
    • Validity Search: In the event of the discovery of indistinguishable patent claims, a validity search attempts to neutralize those claims by determining their potential invalidity (often entwined with infringement search due to disparity between broad and narrow claim interpretation). Additionally, the overall strength of the target’s portfolio can be gauged by conducting validity studies on the patents in question.
    • Litigation Search: This search will identify litigation and court orders (both prior and pending regarding all facets of IP) that may affect a party’s IP assets and/or restrict their freedom to operate.

*It should be noted that the information provided above is a baseline for due diligence investigations and can be broadened, limited in scope, or amended to meet the specific needs of your corporate transaction