IP due diligence is a study to determine the strength, scope and enforceability, ownership rights, and the future potential of the IP.
IP Due Diligence is essential for corporations/organizations to take decisions in the matters involving investment, licensing in/out, and patent acquisition. Generally, IP due diligence is conducted at the onset of the negotiations to determine the true potential of IP.
You perform due diligence before acquiring any property. So, why should Intellectual Property be any different?
No matter how big the patent portfolio is, ExpertLancing team will highlight the high value patents or STAR patents by narrowing down the portfolio to a manageable number. Our due diligence process includes services, such as, infringement searches and claim charts (EoU) preparation for selected high value patents. Since, now we have evidence of use (EoU) charts which show the actual use of technology; we then perform validity searches, check filing and patent maintenance history, and change of assignments of patents.ExpertLancing’s Due Diligence report includes details about litigation and assignment history, family tree, strength assessment based on qualitative and quantitative parameters.
ExpertLancing’s due diligence service follows a thorough methodology through which we have successfully assisted many of our clients in strategizing their business goals. For your reference, mentioned below is our customized process:
- Identifying STAR Patents – The service involves manual screening of each enforceable
patent in the portfolio in order to shortlist the Star Patents in the portfolio. The service method
includes:- Quantitative analysis based on quantitative parameters, such as, forward citation, number of
independent claims, claim length, etc. - Qualitative analysis based on qualitative parameters, such as, readability of claim(s) on a
product/service features, broadness of patent claims, specifications enablement, number of alive
members in patent family, number of office action responses, market segment and size,
etc. - Infringement Search – Detailed infringement search is performed for each of the STAR
patents. The patents are ranked as High, Mediumor Low on basis of
scope of infringement suggestive of the overlap between subject patent claim elements and identified
potential products/process. - Claim Chart/Evidence of Use (EoU) – EoUs/Claim charts are prepared for patents with
either High or Medium ranking in order to assist clients to map key features of the claim(s) to product
specifications and create evidences that potentially prove infringement. - Validity Searches – A validity search is performed to unearth relevant prior art published or available
at the time of the prosecution, which might prove detrimental to the novelty/non-obviousness at a later
stage. ExpertLancing performs a detailed file history analysis to identify the novelty and scope of the
patent. - Asset Verification – Expertlancing verifies relevant details affecting the enforceability of the patents. These
details include assignment history, active life remaining, litigation history, etc.
- Quantitative analysis based on quantitative parameters, such as, forward citation, number of