When purchasing a company with patents or purchasing an individual patent one must be careful that the patent (or patent application) has been properly maintained by the owner. Due diligence is a major part of this research. Due diligence should constitute more than simply obtaining a list of patents and applications. A lot of information should be obtained from the target company and verified by independent research.
What Do I need to Identify in my Research on another Party’s Patent Activities?
Identify all pending patent applications, abandoned patent applications, and issued patents associated with the target patent or company. This should include identifying:
- US and foreign patents and patent applications
- Utility, Design, and Plant patents and patent applications
- Current and former ownership of patents and patent applications
- Whether the current owner is an owner, licensee, or licensor
What Information Should I Confirm before Engaging in a Patent Transaction?
Confirm the term and scope of each patent and patent application. This should include checking any term extensions and checking whether there was proper payment of maintenance fees. One should also confirm the existence and the scope of rights in patent applications and patents held by an individual or company.
What Information Will I Need to Review before Engaging in a Purchase or Sale of a Patent?
You should review agreements between inventors and the individual or company (employees and consultants), assignment documents, license agreements, development agreements, and government grants or contracts to make sure the patent is free and clear of problems regarding ownership rights. Additionally, you should review all prior art searches conducted or received by the company or individual. Finally you should check to see if there is any settled, threatened, or pending patent litigations, including letters relating to the individual or company’s products or the products of third parties.
Should I Contact a Lawyer Regarding the Purchase of Patent Assets Owned by Another Company or Individual?
The independent research required takes a great deal of time and is difficult to understand. A skilled patent lawyer or intellectual property lawyer will help you successfully navigate through the proper steps for patents, and help you get the most out of your sale or purchase of a patent or company with patent assets.