IP beyond patents

By M. Henry Heines, Townsend and Townsend and Crew LLP -- Electronic Business, 5/16/2007

Contents Introduction What is due diligence? The scope of due diligence Due diligence vs. warranties How to improve your chances for successful IP due diligence IP beyond patents

Editor's note: Excerpted from Patents For Business: A Manager's Guide to Scope, Strategy, and Due Diligence, by M. Henry Heines, partner, Townsend and Townsend and Crew LLP.

While patent rights typically constitute the largest portion of intellectual property due diligence, other forms of intellectual property can be investigated as well.

Confidentiality and trade secret rights typically appear in confidential disclosure agreements, including those that visitors to the company are required to sign upon entry, as well as those required of company employees. Confidential disclosure agreements are also executed with potential business partners to protect the parties during the investigation stages that precede the parties' entry into transactions such as licenses, joint ventures, or other strategic alliances. All such documents should be maintained in an organized manner that will allow them to be found when needed. Lists of trademarks, service marks, trade names, and domain names should be maintained, together with files containing the appropriate documentation for each. Documentation showing that the target has been consistently enforcing its marks should also be maintained since it will be useful in the event that it becomes necessary to defend the marks.

Trademark availability searches and correspondence and other documentation relating to trademark disputes or confrontations should likewise be maintained, as should copyright registrations and correspondence relating to any copyright disputes.