Prior to acquiring or licensing a third party’s patents, a company should conduct due diligence to ensure that the patents contain enforceable claims with sufficient scope and that the patents are owned by the third party. Because of the associated time and expense, companies often wait until the details of a deal are nearly settled before asking their patent counsel to conduct its review. However, involving patent counsel early in the process allows for a more comprehensive review, and can provide the company with valuable leverage during negotiations. Clarifying the objectives of the deal with patent counsel allows them to provide the most helpful information in-house counsel in a cost effective manner.
Typically patent due diligence includes the following points:
