IP Due DIlligence | Intellectual Property Services

IP Due Diligence

IP due diligence for patents is the process of examining the quality of a company’s patent or patent portfolio. This process can be extremely useful prior to buying a technology company or buying a license from a technology company. IP due diligence is also highly useful when planning to partner with a technology company.

IP Due Diligence may show your patented product is not as well protected as you thought.

Intellectual property due diligence can confirm the status of your patent in all countries of interest.

When Technology Outcomes completes an IP Due Diligence report you will have confidence that the patents in question are (1) properly registered and that, (2) the claims are robust and not easy to work around.

Standard due diligence activities By Technology Outcomes include:

An itemisation of patent families owned by the company.
For each patent family, an itemisation of granted claims in various territories throughout the world
For each patent family, an itemisation of pending claims in various territories throughout the world
For each patent family, an itemisation of close prior art that has been raised in correspondence with examiners in various patent territories throughout the world.
For each patent family, an examination of examiner correspondence in various patent territories throughout the world.
For each patent family, an examination of the adequacy of documentation that assigns patent ownership from the inventor to the company.
An examination of license agreements held by the company, both for licensing-in and licensing-out.
An examination of patent-related obstacles that may arise in commercial activities undertaken by the company (such as freedom-to-operate obstacles).
An examination of actual or proposed litigation of any kind that involves patents held by the company or by third parties that license enabling technology to the company.

IMPORTANT NOTE: Owning or having a registered patent offers no guarantee as to the strength of the patent’s claims.

That is to say, knowing how easy or difficult it is to circumvent the IP you may be about to purchase requires another process entirely (see mock-hostile-audit).

Even if a patent is registered and paid for it does not guarantee that its contents are fit for your company’s market-entry purposes. Depending on the scenario a patent that looks to have secure claims may in face be easy to circumvent.

Technology Outcomes - Core Expertise

Technical Information Experts

A core expertise of Technology Outcomes is to investigate complex and voluminous technical information held by the client (in notebooks and lab reports and workshop reports) in order to develop a patent narrative with maximum distance from prior art.
Expertise Working With Patent Examiners

We understand the patent examination process and how patent examiners think. Instead of trying to push through patents that have no chance of being granted we will change the patent narrative to align with the patent examiners mindset. This leads to a greater over all rate of success in obtaining hard to get patents.
Cost Effective Comparative Rate Compared To Patent Attorneys

Allowing Technology Outcomes to tailor your intellectual property package in co-operation with a patent attorney will reduce the overall costs of utilising a patent attorney. We will reduce the cost of tasks that a patent attorney does not need to do but would otherwise charge a much higher hourly rate to complete.

Experienced

30 years experience in technology development and IP procurement

Cost Effective

Streamline your interaction and spend less time with higher cost patent attorneys

Understand Patent Examiners

Fighting with a patent examiner is pointless. We know how to work alongside them to get the best results

Patent Narrative Experts

The patent narrative we develop will distance your technology as far as possible from competitors

IP and Commercialisation Background

No one has more experience in both IP protection an Technology Commercialisation

Clear Communication

Understand the costs and process of technology patenting. We understand the inventor perspective as well as the patent attorney perspective

Address:
1/49 Cooper St Essendon, 3040 Melbourne Australia
Email:
info@technologyoutcomes.com.au
Opening hours:
8am-5pm Mon - Fri

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We are excited to find out more about your technology package and where it sits in the commercialisation pathway! Please don't hesitate to make contact so we can chat, zoom or grab a coffee!