Demystifying formal and informal intellectual property (IP) rights to assess their significance.
What do we do?
The IP owned by a company is frequently seen as a key asset that warrants individual consideration aside from its tangible assets. The correct IP protection and a strategy to deal with the risks posed by third-party IP can significantly affect a company’s standing and value.
Assessment of IP may be relevant to support a one-off decision about an immediate opportunity or threat, such as a decision to agree an IP license or how to react to an allegation of IP infringement. Alternatively IP assessment may be needed within the scope of a wider commercial decision such as investment, merger or acquisition.
Our team of IP solicitors, patent and trade mark attorneys has extensive experience of supporting IP assessment on behalf of buyers and sellers alike. We aim to cut through the complexity surrounding IP rights and provide straightforward advice concerning key issues to support effective decision making in the following areas:
- Assessing the existence, validity and enforceability of the IP rights owned or licensed by a company, including compliance with the necessary formalities before and after grant of registered IP rights.
- Understanding the scope, geographical extent, and duration of the IP rights to determine whether they are appropriate and the extent to which the IP rights can inhibit competition.
- Assessing the chain of ownership in the IP, typically from the creator to the controlling company, and any encumbrances that might affect the ability to exploit the IP rights.
- Assessment of the existence and importance of company know-how, commercial secrets and unregistered rights, such as copyright. Consideration of IP policies and employment terms for safeguarding sensitive IP to ensure IP is well-managed.
- Performing freedom-to-operate studies on key technology, trade marks or product designs used by the company. Assessing exposure to potential IP infringement risks, as well as profiling or mitigating those risks.
- Reviewing agreements involving IP rights and assessing their implications for the company’s operations.
- Advising on the scope of IP warranties and indemnities sought on the back of any due diligence.
Often IP assessment work involves making recommendations for mitigating risks or improving a company’s IP position. Having conducted an IP assessment study, we are often well-placed to handle any resulting IP transfers or assignments, provide formal opinions on the validity or infringement of IP rights, assume responsibility for the management of an IP portfolio, or challenge competitor’s IP rights to clear away potential infringement risks.
Who do we help?
We provide IP assessment and advisory services to companies looking to buy, sell, license or assess IP portfolios for other legal or financial reasons. This includes private and public companies, owner-managed businesses, investors, universities, spin-outs and start-ups.