Intellectual property due diligence: independent review
Business law firms, investment funds and family offices regularly need an intellectual property analysis without having a patent team in France, without wanting to engage a large platform, or when a conflict of interest requires it. The independent red-flag review is an intellectual property due diligence that a deal team can read and that is compatible with lead counsel.
The need
In an acquisition, a fundraising or a restructuring, intellectual property is often dealt with in an appendix, as a list of titles and contracts. Yet the questions that make a deal fail are simple: does the company actually own its patents, its software and its trade marks? Have employee inventions been properly remunerated and assigned? Do the licences granted limit freedom to operate? Does a dispute threaten the main product? The review answers these questions in a format suited to the deal timetable.
What you receive
- The status and ownership of the key assets: patents, applications, trade marks, designs, software, domain names, identified secrets.
- A targeted review of protection, scope, encumbrances, licences, research agreements and the position of employee inventors.
- Red flags ranked by their impact on the transaction.
- Questions to ask in the data room and suggested clauses or remedies: warranties, conditions precedent, price adjustments, regularisations before signing.
- A standalone report or a white-label appendix that can be integrated into the corporate counsel’s report.
- An optional hundred-day support after completion of the transaction.
How we work
First, the scope, the reservations and the message for the deal team are agreed with lead counsel. Next, the review is carried out from the data room, supplemented by the public registers of the INPI, the European Patent Office and the EUIPO, and by checking pending disputes. Finally, the report is delivered in the format and under the brand decided by lead counsel. The firm undertakes not to solicit the end client and to offer subsequent support only with the referring firm’s agreement. This non-solicitation rule is written into the engagement letter.
Who it is for
Business law firms without a patent department, firms organised in independent networks, venture capital and private equity funds, family offices, investment banks, business development departments of industrial groups examining a technology target.
Frequently asked questions
How quickly is the review delivered?
An answer on budget is given within twenty-four hours. The review timetable depends on the volume of the data room and on the deal timetable, and is set in the proposal.
Does the review cover foreign patents?
Yes for European patents and titles falling under the Unified Patent Court. For other countries, the firm coordinates correspondents or flags the points to be checked locally.
Can the report be given to financers or insurers?
A reliance letter can be addressed to designated third parties, on terms agreed in advance with lead counsel and the client.
To discuss a transaction, contact the firm.