Demystifying intellectual property (IP) rights to assess their significance.
What do we do?
A company’s IP is frequently seen as a key asset that warrants individual consideration separately from the company’s tangible assets. Having in place the appropriate IP protection and a suitable strategy for dealing with the risks posed by third-party IP can significantly affect a company’s value and market position.
An assessment or audit 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 licence or how to react to an allegation of IP infringement. IP assessment also may be needed as part of the evaluation of a wider prospective commercial decision such as investment, merger or acquisition.
Our specialist IP and commercial solicitors have extensive experience of supporting IP assessment on behalf of buyers and sellers of businesses 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 or to 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 afford sufficient protection.
- Establishing the chain of ownership in respect of the IP rights, typically from the inventor/ creator to the controlling company, and ascertaining the existence of any relevant third-party rights that might adversely affect the ability to exploit the IP rights.
- Assessment of the existence and importance of company know-how, other confidential information and unregistered rights, such as copyright and unregistered design rights. Consideration of IP policies and employment terms for safeguarding sensitive IP to ensure the company’s IP is well-managed.
- Identifying whether any third-party IP is being used without a licence and 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 advising on how to mitigate 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 able to draft and assist in negotiating the terms of any consequential IP assignments or licences, obtain and provide formal opinions on the validity or infringement of IP rights, manage a portfolio of registered IP, or assist in challenging a 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. These include private and public companies, owner-managed businesses, investors, universities, spin-outs and start-ups.