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Guidelines for IP Due Diligence Processes

IP tools used for answering due diligence questions have varied over the years and will continue to evolve.  With each iteration they become much more effective and efficient at saving time and inspiring thinking for better decision-making. Using analytical tools to create a visual display of information saves valuable time during the due [...]

Construction of an Event Horizon Table

Example of an Event Horizon Table Another tool used to tie patent activity to business activity is an Event Horizon table.  This is shown in the “Example of an Event Horizon Table” figure. In this figure significant business announcements are listed down the left-hand column in the order in which they were made, [...]

What Might be the Merger’s Non-Adjacent Licensing Opportunities?

Identifying New Market Segments Finally, using patent to SIC or NAIC concordance codes may identify potential licensees of the proposed merger’s patents.  This can be done as shown in the Identifying “New Market Segments” figure. The concordance results show nonaffiliated business segments that use the same underlying core technologies. This is especially useful [...]

Who Might be the Merger’s Hidden Technology Competitors?

Patent Citation Root-Trees to Uncover Hidden Competitors The use of patent citation root-trees, shown in the “Patent Citation Root-Trees” figure, can also uncover technologies which might be under exploration by competitors of the merger. Such trees also have the advantage that they show companies that might be interested in sublicensing the art who [...]

Will the Merger Have Freedom to Operate?

Patent Citation Trees for Freedom-To-Operate Another way to check if the highly cited patents are of interest to potential competitors is to build patent citation trees as shown in the “Patent Citation Trees for Freedom-To-Operate” figure. In this graphic competitors can be color-coded and in so doing they stand out when they surround [...]

Which are the Most Valuable Patents?

Highly Cited Patents Likely Have The Most Value Another quick check for IP due diligence is to determine which patents might have the most value. A good, but not perfect, patent value metric is the number of citations that a patent receives. For due diligence, looking at the patents that have received the [...]

How Many Patents Might be in the Innovation Pipeline?

Time Taken for Patent Prosecution Another due diligence check is to make sure that all art is at the negotiating table. As shown in the “Time Taken for Patent Prosecution” figure, by plotting the years that it takes for patent prosecution against the year the patent is issued it can be determined the [...]

Who Are the Merger’s Innovation Partners?

Partnerships Seen Via Inventor Records Another IP due diligence item is to determine if there are joint ventures or partnerships which will impact the merger going forward. A way to answer this question is shown in the “Partnerships Seen Via Inventor Records” figure.  In this analytical display the patent account by assignee is [...]

Who are the Key Inventors in a Merger?

Key Inventors Another important element for the merger team to understand is if key inventors are still with the company. An easy way to visualize this is shown in the “Key Inventors” figure.  In this figure the patent in application count for each inventor is rank ordered. As part of the due diligence [...]

What is the Remaining Life in a Merger’s Target Company Patent Portfolio?

Remaining Life in Merger’s Patents Is one thing for a patent portfolio to be large, it’s another for it to be current. Double check this, as shown in the “Remaining Life in Mergers Patents” figure, a plot is made to show how many years remain in the merger’s patents’ life.  This can see [...]

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