IP Due Diligence

Wissen Research Intellectual Property Law conducts IP due diligence on behalf our clients in the context of our client’s business goals.  The following is a partial list of tasks performed as a part of an IP due diligence.

  1. We perform comprehensive review of all relevant documents related to the target IP:
  • File histories of target patents and applications
  • Product literature, publications and other descriptions
  • In-licensing agreements
  • Out-licensing agreements
  • Relevant publication and seminars
  • Agreements concerning confidentiality, nondisclosure and assignment of inventions with employees, contractors, visitors or other parties
  • R & D agreements such as collaborative research agreement and material transfer agreements
  • Policy or other written documents regarding maintaining trade secrets
  • Relevant invention disclosure documents & notebooks
  • Patent search results
  • Relevant correspondence regarding IP prosecution & enforcement
  1. We ascertain target IP ownership by:
  • Identifying all inventors & their work status
  • Determining whether all inventors have transferred patent rights?
  • Checking recording with USPTO and foreign authorities
  • Checking with USPTO and foreign authority files for claims of ownership by others
  • Determining whether inventions were made under federal funding or other grants that may place conditions on ownership
  • Determining rights of government and other entities under the law and the agreements
  1. We ascertain chain of license agreements do not present roadblocks by:
  • Determining the terms of the license agreements
  • Checking the license for geographical and use restrictions are consistent with business goals
  • Determining if a royalty obligation is due under the license agreements
  • Determining the entity that has the right to enforce the patents under the license agreements
  • Determining if grant backs or improvement provisions are present in the license agreement
  • Determining if any transfer restriction is posed by the chain of licenses
  • IP due diligence may also include providing freedom-to-operate, non-infringement, and/or invalidity opinions
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