IP Due Diligence

Why do we need IP Due Diligence?

Due-Diligence-Report

In today’s dynamic business environment, intellectual property assets have become one of the most important assets. IP due diligence is essential for acquiring IP assets of the target company/business or raising capital through mergers and acquisitions. Therefore, it helps the organization to take informed decisions as invest in, license-in/out, or acquire/sell IP assets. An IP due diligence helps in examining the strength, scope and enforceability, ownership rights, and the future potential to be derived from the IP.

Patent-Due-Diligence

Generally, IP due diligence is conducted at the onset of the negotiations to determine the true potential of IP. We help in assessing the IP of the target company by preparing comprehensive checklists, understanding the objectives, substantive investigation, analyzing the results. We also assist you in driving maximum value from the IP by identifying potential sources of risk and understanding the intrinsic value of the IP.

IP Due Diligence Process

The IP due diligence process is an audit to analyze hundreds of thousands of patents, which are narrowed down to a manageable number by using various scoring methods. We offer both semi-automated and manual process for due diligence as per your requirements. Such services include infringement searches, preparing claim charts for selecting high value patents, and performing validity searches, check filing and patent maintenance history, and change of assignments of patents. Our team maps the competition and assists you with strategies that enable you to achieve your business goals.

We provide a wide range of services which include:

Portfolio Analysis

To improve your business capability, portfolio assessment is a vital task. We help you to manage and analyze your IP portfolio by indentifying strengths and addressing gaps.

Infringement Searches

After reducing the size to a manageable number, we conduct infringement searches for the identified patents to look for potential infringement of the technology of the patent. We have conducted infringement searches in various technology domains including electronics and communication, computer science and information technology, automobiles and mechanical technologies, chemical technologies, biotechnology, bio medical equipments, life sciences, etc. This helped us in acquiring unmatched practical knowledge and experience to perform technical evaluation of products and services to look for as evidence in use of related patent technology.

After completing the infringement search, we prepare Claim charts/Evidence of Use charts/Rule 11 charts for validating the actual use of the technology.

Such charts help in determining actual use of the patented technology and can also be used at the time of filing litigation complaints.

Validity Searches

A validity search for a patent unearths relevant prior art that might have been published or available at the time of the prosecution and may prove detrimental to the novelty/non-obviousness at a later stage. We also perform a detailed file history analysis to identify the novelty and scope of the patent.

Asset Validation

Enforceability of the patent depends on parameters such as timely payment of maintenance fee, entity status, etc. We also perform asset validation checks, including assignment history and active life remaining for a patent.

Marketing Material

We prepare marketing collaterals that may be used to pitch key prospects and formulate business strategies.

Recent Projects

Patent Evaluation

One of the patent brokerage companies needed assistance in patent ranking and bucketing. Through our indigenous method of manual screening and ranking, we assisted the client in the evaluation of patent portfolio and identified patents worth monetizing. For the high value patents, we developed EoU charts that indicated commercial prospects.

 

Asian Language Search

We assisted a leading law firm in conducting native Chinese language searches. The objective was to uncover prior art references in the Asian languages that do not have an English language counterpart. The results identified were carefully screened in English language as well as native languages.

 

Patent Searches

A US-based technology company wanted to develop a patent filing strategy. The objective was to identify white spaces and technology which would enable them to channelize their research and development initiatives. Our team structured a methodical search strategy that comprised of defining apt technology taxonomy, identified and classified patents pertinent to the taxonomy. The search enabled the client to take well-informed decisions and save cost.

 

Patent Licensing Support

Effectual assisted a US-based company in successfully out-licensing more than 50 patents to multiple players, which resulted in maximizing revenue more than 60 million dollars. We worked closely with the company’s attorney to identify target products and companies and developed Evidence of Use charts and infringement contentions. Our team provided support in preparing claim to specification charts and prepared responses to invalidity contentions.

 

Patent Drafting and Filing

A California-based technology company wanted to protect their innovative software and associated products. Despite the stringent patentability criteria for software and business method arts, we assisted them in building a strong patent portfolio. We adopted a robust approach that included a strategically planned pre-filing search to locate patents in the similar technology domain and helped them to modify and re-draft the patent claims. Through this laborious process, we were able to procure a strong patent portfolio for the company and helped in increasing their revenue.

 

IP Support Services

A Silicon Valley-based IP law firm was facing challenges related to managing its docketing backlog. Effectual supported the firm through a dedicated team of paralegals who maintain and manage patent dockets and coordinate with the concerned attorneys in preparing filing forms, sending reminders, tracking deadlines, assignment documents, and document classification and management.

 

Information Disclosure Statement (IDS)

A leading corporate filed a significant number of patent applications and faced challenges with the preparation of their IDS forms. The arduous task involved tracking and identifying the IDSs filed globally. We assisted the client in gathering the prior art from various patent databases and track the references filed in the IDSs globally. We identified all the references in the patent application and submitted the IDS as per the guidelines defined by PTO.

 

Proofreading Services

A US based law firm based was facing challenges in proofreading patent applications. The objective was to highlight clerical errors and check the subject contextually. The client partnered with us to undertake the paralegal task and minimize the office action. We identified the clerical errors such as spelling, bibliographic details, consistency in terms, claim dependencies, etc. Our service yielded significant benefits in terms of minimizing work pressure and helped the client to focus on primary areas.

 
Go To Top

Enter your name and email to download:
Company-presentation.pdf

Name:
Phone:
Email:

Enter your name and email to download:
EFS-Monthly-litigation-oct-2015.pdf

Name:
Phone:
Email:

Enter your name and email to download:
EFS-Monthly-litigation-September-2015.pdf

Name:
Phone:
Email:

Enter your name and email to download:
EFS-Monthly-litigation-Aug-2015.pdf

Name:
Phone:
Email:

Enter your name and email to download:
EFS-Monthly-litigation-July-2015.pdf

Name:
Phone:
Email:

Enter your name and email to download:
EFS-monthly-litigation-June-2015.pdf

Name:
Phone:
Email:

Enter your name and email to download:
EFS-Monthly-Litigation-May-2015.pdf

Name:
Phone:
Email:

Enter your name and email to download:
EFS-Litigation-Updates-April-2015.pdf

Name:
Phone:
Email:

Enter your name and email to download:
EFS-Litigation-Updates-March-2015.pdf

Name:
Phone:
Email:

Enter your name and email to download:
ES-Newsletter-February-2015.pdf

Name:
Phone:
Email:

Enter your name and email to download:
es-newsletter-january-2015.pdf

Name:
Phone:
Email:

Enter your name and email to download:
es-newsletter-december-2014.pdf

Name:
Phone:
Email:

Enter your name and email to download:
es-newsletter-november-2014.pdf

Name:
Phone:
Email:

Enter your name and email to download:
es-newsletter-october-2014.pdf

Name:
Phone:
Email:

Enter your name and email to download:
es-newsletter-september-2014.pdf

Name:
Phone:
Email:

Enter your name and email to download:
es-newsletter-august-2014.pdf

Name:
Phone:
Email:

Enter your name and email to download:
es-newsletter-july-2014.pdf

Name:
Phone:
Email:

Enter your name and email to download:
es-newsletter-june-2014.pdf

Name:
Phone:
Email:

Enter your name and email to download:
ES-Newsletter-May 2014.pdf

Name:
Phone:
Email:

Enter your name and email to download:
ES-Newsletter April 2014.pdf

Name:
Phone:
Email:

Enter your name and email to download:
ES-Newsletter-Mar 2014.pdf

Name:
Phone:
Email:

Enter your name and email to download:
ES-Newsletter-Feb 2014.pdf

Name:
Phone:
Email:

Enter your name and email to download:
ES-Newsletter-January 2014.pdf

Name:
Phone:
Email:
Content
info@effectualservices.com