Whether you’re a venture capitalist or angel fund looking to invest in a start-up or small tech-based company, or a private equity or superannuation fund investing in a significant company with intellectual property at its core, it is critical to gain a thorough understanding of the IP assets of the investment target.
For instance, there may be many reasons why the IP may not be all as it seems. Questions that may need answering include; does the IP cover what you want it to, does it cover the jurisdictions where it’s most needed, who actually owns the IP, what is the status of the IP, and is there freedom to exploit the IP without infringing the rights of others?
How we can assist
Madderns offers a suite of services to help you understand and assess a target company’s IP so as to assist your investment decision-making process and then further assist you guide the company along a path that rewards that investment. These services include:
- IP portfolio status information – where we determine or confirm what IP is included in the portfolio (eg patents, trade marks, designs etc, and in what countries/regions) and whether that IP is “live”, “lapsed”, “pending” or “granted” etc.
- IP ownership enquiries – where we determine the entity registered as the owner of the IP, investigate whether all rightful inventors have been named on a patent and query whether the inventor’s rights have properly flowed to the company.
- IP coverage analysis – it will be important to ensure that the coverage of the IP is aligned with what the company intends to exploit and/or develop. Madderns can determine what is actually being protected to enable you to identify any mismatch between the IP and the company’s strategy, while allowing reflection on whether proposed future IP expenditure is sound.
- IP searching and advice – we work with external IP searching specialists to design searches to uncover issues which may present significant hurdles to the valid protection and/or exploitation of the IP, including:
- Patent validity searching – searching and advisory services to assess the requisite novelty of a patented invention over the “prior art”; and
- Freedom to operate (FTO) searching – searching and advisory services in respect of third party rights that might be infringed by the exploitation of the IP.