Patent Due Diligence

Patent due diligence is the process of investigating a patent or set of patents to help your business or company achieve its goals. Patent Due Diligence can take many forms, depending on the circumstances surrounding the requirement for Diligence. For example, due diligence can be offensive in order to determine whether others are infringing on your patents or whether your patents can be monetized through licensing or divestment. As a first step toward enforcing your Patents, such offensive diligence may entail researching other companies' products to determine whether any of their products violate your Patents. It may also include developing a licensing strategy to generate revenue in line with your company's goals.

Patent Due Diligence can also be defensive in terms of determining whether you have the freedom to operate in your next business venture, including whether you are infringing on the Patents of others and what steps must be taken to mitigate that risk. Companies often rely on qualified IP Counsel to examine Patents and determine how they may factor into business objectives, whether conducting defensive or offensive diligence, due to the legal expertise required to assess factors such as the validity and scope of a Patent and create a monetization strategy to maximize the return on your IP investments.

What does the process of Patent Due Diligence Require?

The scope & depth of the Patent Due Diligence analysis can vary considerably based on your requirements. Following are some factors required for the Patent Due Diligence process:

Find Out whether the Patent is valid or/and Enforceable: This examination determines whether the Patent claims are distinct from the Prior Art, whether the Patent adequately describes the invention, and whether the Patent claims are directed to patentable subject matter or a Patent ineligible nonfigurative idea. This analysis may also include estimating any challenges to Patent validity raised by a third party in a previous Patent proceeding or litigation.

Find out whether a proposed product falls within the ambit of Patent Claims:This analysis may include a review of Patent file specifications, claims, and records, an evaluation of how certain claim terms could or should be interpreted in a Patent proceeding, and an application of the Patent Claim to a target product to a proposed product. The results of this analysis are commonly used to determine the Patent Infringement risk associated with a current or planned business activity.

Find out whether there are capable ownership, chain title or maintenance fee problems:This examination includes determining ownership or proprietorship, a chain of title, and the processes for early expiration. Patent ownership initially vests in the named inventors and can be transferred to others through Patent Assignment Agreements. Defects in the title chain may significantly reduce the value of the Patent and make it more difficult to assert in court. Also, generally speaking, and subject to specific exceptions. A patent will expire approximately twenty years after the initial application was filed with the Patent Office. Patent maintenance fees are due to the Patent Office on a regular basis throughout the life of a patent, and if they are not paid on time, the patent may expire or expire earlier.