Patent Due Diligence
The term “due diligence” is most often associated with mergers and acquisitions. However, there is a type of due diligence that can, and should, be conducted when it comes to patent management. Patent due diligence is considered to be the process of analyzing a patent or set of patents to support your overarching business objectives. Patent due diligence can take various forms, depending upon the circumstances in which the need for this type of analysis arises. For example, due diligence can be offensive or defensive.
Offensive Patent Due Diligence
Offensive due diligence can be done to help assess whether other individuals or companies are infringing on your patents or whether your patents could potentially be monetized through licensing or divestment to help achieve your overarching business objectives.
Defensive Patent Due Diligence
Defensive patent due diligence can be done in order to assess whether you have the ability to operate your next business venture, including whether you are infringing on the patents of another individual or company and what actions can be initiated to mitigate that risk.
Benefits of Patent Due Diligence
Conducting patent due diligence will assist in determining the value of your patent portfolio, including whether you could potentially monetize your patents through licensing, enforcement or even divestment. In addition, completing patent due diligence enables you to assess and mitigate the infringement risks associated with a competitor’s patents or the patents of another party (e.g., a Non-Practicing Entity). Another advantage to completing patent due diligence is that it can help influence your strategy when assessing how to best respond to a cease-and-desist letter from a third party and can help mitigate your damages exposure against a finding by a court of willful infringement.
Another scenario where due diligence can be helpful is when you are attempting to develop a portfolio of patents that you simply keep on your proverbial shelf. Your company may not even be looking to pursue a patent infringement lawsuit or claim, but you may still prefer to have a series of patents that can be used to assert offensively against competitors that may attempt to file a lawsuit against you.
When you decide to engage in patent due diligence, the process usually entails the following steps:
- Assessing whether a target product falls within a patent claim, including an in-depth review of patent file wrappers, specifications, how certain claim terms could or should be interpreted in a patent proceeding, and an application of the patent claims to a target product.
- Assessing the enforceability of a patent, including whether the patent claims are novel, whether the patent sufficiently describes the invention, and/or whether the patent claims are directed to patentable subject matter or a patent-ineligible “abstract idea.”
- Determining whether there are potential ownership, chain of title or maintenance fee issues, including an assessment of the ownership, chain of title and early expiration issues related to the patent.
Have Questions? Speak to an Experienced Patent Lawyer Today
If you are looking to secure a patent and have questions about the process, including due diligence, take action by contacting the highly reputable patent attorneys at Omni Legal Group. Omni Legal Group is a premier Patent, Trademark, and Copyright law firm located in Los Angeles. For further information or to schedule a consultation please contact Omni Legal Group at 855.433.2226 or visit www.OmniLegalGroup.com to learn more.