IP Due Diligence is an investigation about a IP object often done prior to acquisition of IP, licensing etc, so that the potential purchaser, assignor or assignee knows more about the asset that she is acquiring or in-, out-licensing. We always seek for understanding the business goals of the team asking for the Due Diligence because the cost of process can reach $100K. Due Diligence may reveal:
- validity problems
- enforceability problems
- prosecution events that impact patent claim scope, which in turn may impact patent infringement
In general, in a Due Diligence investigation, a patent professional will review the patent and patent file wrapper documenting prosecution of the patent application before the Patent Office and additionally should include analysis of information concerning the patent owner, named inventors, technical field or market. Because every case of Due Diligence is unique, it should be handled with an individualized approach on a patent-by-patent or portfolio-by-portfolio basis. Due Diligence is a tool that may be used to learn about a patent upfront, rather than purchasing a patent and finding out later on that the patent claims are worthless.
