IP Due Diligence: Legal Considerations In Mergers, Acquisitions, And Investments

Posted On - 24 May, 2024 • By - King Stubb & Kasiva


The IP of the company is one of the key elements of its value in the knowledge-based economy. In fact, IP is gaining more and more importance in business, as it is used for competitive advantage. Therefore, IP due diligence of M&A activities and investments becomes vital. IP due diligence is a multi-faceted process that involves a comprehensive review of the legal, financial, and strategic aspects of a company’s IP portfolio. This article covers IP due diligence in the context of law, pointing out the problems, methods and best practices to enable the acquirers of IP assets to appreciate the value and risks of the assets.

Challenges in IP Valuation and Due Diligence

One of the main challenges in IP due diligence is that IP assets are often complex and intangible in nature. However, the IP assets that may be considered valuable might be overlooked during due diligence process, for instance, proprietary software, pending patent applications, and confidential trade secrets. The privacy of these assets makes it difficult to completely identify and appraise them.

On the other hand, the IP value is also dynamic and it can change with market conditions, technological development and legal changes. Instability is the result of this volatility which means that the current value of an IP asset might be very different from its future potential. IP comes in various forms, including patents, trademarks, and trade secrets, and therefore the valuation methods are different, which makes it even more complex.

Correct valuation of IP assets is of essential importance as it is one of the components of the thorough assessment of the deal. An IP portfolio that is well-thought-out will help prevent overpaying and will also help to keep the acquiring party informed about risks and opportunities.

Identifying and Categorizing IP Assets

The IP due diligence process begins with the identification and classification of all the IP assets that are being used or owned by the target company. This comprehensive list will encompass patents, trademarks, copyrights, trade secrets, and any other intellectual property (IP) that the company could be using. Each type of IP has a unique character which can be somehow modified by the law.

  • Patents: Review granted patents and pending applications, including their status, expiration dates, and geographical coverage.
  • Trademarks: Assess registered trademarks and common law marks, focusing on their use, registration status, and any ongoing disputes.
  • Copyrights: Evaluate copyrights on software, literary works, and other original creations, ensuring they are properly registered and protected.
  • Trade Secrets: Identify proprietary processes, formulas, and confidential information, ensuring adequate measures are in place to protect them.

The ownership and the legal status of intellectual property assets are the most important matters that needs to be resolved to avoid any future legal conflicts. This operation consists of the verification of the chain of title for each IP asset and of the elimination of any type of ownership dispute. Besides that, one should also check for any existing charges, such as liens or security interests, which could have an impact on the value of the property.

  • Chain of Title: Ensure a clear and unbroken chain of title for each IP asset.
  • Disputes and Encumbrances: Identify any ongoing disputes or encumbrances that could impact ownership or enforceability.
  • Licensing Agreements: Review licensing agreements to understand rights granted to and from third parties, ensuring they do not adversely affect the asset’s value.
  • Employee and Contractor Agreements: Verify that IP created by employees and contractors is properly assigned to the company.

Strength of IP Protection

The essence of IP protection and its enforceability are the key factors in the due diligence process. For the patents, the procedure involves examining the claims’ scope and their feasibility. When it comes to trademarks, it means that they should be used correctly and rightly for protection. Trade secrets evaluation is an assessment of what measures are taken to keep them confidential and not disclosed to unauthorized parties.

  • Patent Claims: Assess the breadth and validity of patent claims, including potential challenges or infringements.
  • Trademark Use: Ensure trademarks are used consistently and in accordance with registration requirements to maintain their protection.
  • Trade Secret Protection: Evaluate the policies and procedures in place to safeguard trade secrets, including confidentiality agreements and security measures.

Compliance with Laws and Regulations

The observation of the relevant laws and regulations is the key element of IP due diligence. This covers IP transfers’ compliance with export control regulations and impacts of data privacy laws on IP assets, especially those in software and data-driven technologies. Moreover, the rules that are specific to the industry should be taken into account to guarantee that compliance is attained.

  • Export Control Regulations: Verify that IP transfers comply with export control laws and regulations.
  • Data Privacy Laws: Assess the impact of data privacy laws on IP assets, especially for software and data-driven technologies.
  • Industry-Specific Regulations: Ensure compliance with industry-specific regulations that may affect IP assets.

Methods for IP Valuation

Cost Approach

The cost approach estimates the value of an IP asset by adding the cost of its production or duplication. This technique is based on the estimated replacement value and depreciation of the asset. The main element of IP is physical assets like the software or the machinery that are patented.

  • Reproduction Cost: The cost to reproduce an identical asset.
  • Replacement Cost: The cost to replace the asset with a similar one.
  • Depreciation Adjustment: Adjusting for the time value of money and wear and tear.
  • Historical Cost: Original cost adjusted for current value.

Market Approach

The market approach measures IP by comparing it with analogous transactions in the market. This method (CCT, or Comparable Uncontrolled Transactions) is the one that involves the evaluation of market prices of similar IP assets and the use of sales or licensing data from comparable transactions. IP asset here plays a crucial role, covering trademarks and copyrights.

  • Comparable Transactions: Analyse market prices of similar IP assets.
  • Sales or Licensing Data: Use data from comparable transactions to estimate value.
  • Adjustments for Differences: Adjust for differences in functional and physical characteristics, industry size, and economic conditions.

Income Approach

The income approach appraises IP by the expected future income it will produce. This method, commonly referred to as Discounted Cash Flow (DCF) analysis, is used for predicting future income streams that are due to the IP and then applying an appropriate discount rate to account for the investment risk. It is especially valuable for IP assets including patents and trade secrets that generate massive profits.

  • Forecasting Income: Estimate the future income stream attributable to the IP.
  • Discounting Future Cash Flows: Apply an appropriate discount rate to reflect investment risk.
  • Duration Assumption: Make assumptions about the duration of the income stream.
  • Cost and Risk Assumptions: Estimate the costs and risks associated with realizing the forecasted income.

Best Practices in IP Due Diligence

Detailed Inventory of IP Assets

The first step is to develop a comprehensive list of all IP assets to avoid leaving anything out. Such inventory should include all types of IP, their status and importance for the business. Periodic updates should be provided to keep up with the new developments and changes.

  • Comprehensive Documentation: Document all types of IP, their status, and relevance.
  • Regular Updates: Regularly update the inventory to reflect new developments and changes.

Regular Reassessment of IP Value

Since the value of IP is not static, it is crucial to periodically reassess the value of IP assets. This can involve annual re-evaluations to adjust for market changes, technological advancements, and legal developments.

  • Periodic Re-Evaluations: Conduct annual re-evaluations to adjust for changes.
  • Market Changes and Technological Advancements: Adjust for market changes and technological advancements.
  • Legal Developments: Consider the impact of legal developments on IP value.

Engaging Experts

Engaging both legal and technical experts in the due diligence process ensures a comprehensive assessment. Legal experts address legal complexities and ensure compliance, while technical experts evaluate the practical value and applicability of the IP.

  • Legal Experts: Address legal complexities and ensure compliance.
  • Technical Experts: Evaluate the practical value and applicability of the IP.

Aligning IP Due Diligence with Strategic Goals

Aligning the IP due diligence process with the overall strategic goals of the acquisition or investment is crucial. This includes ensuring that the IP being acquired supports business objectives and provides the expected value and competitive advantage.

  • Support Business Objectives: Ensure the IP supports business objectives.
  • Value and Competitive Advantage: Verify that the IP provides the expected value and competitive advantage.

Prompt Recording of Ownership Changes

Promptly recording any changes in ownership or rights in relevant jurisdictions is essential to prevent misunderstandings about IP ownership and ensure the new owner can effectively enforce IP rights. Failure to do so can result in fines, penalties, and potential loss of royalties.

  • Prevent Misunderstandings: Prevent misunderstandings about IP ownership.
  • Enforce IP Rights: Ensure the new owner can effectively enforce IP rights.
  • Avoid Fines and Penalties: Avoid fines, penalties, and potential loss of royalties.


IP due diligence is a multidimensional process that involves the systemic analysis of legal, financial and strategic issues. Through the use of effective solutions and reliable valuation techniques, firms can take their decision-making process to a higher level in mergers and acquisitions as well as investments. Complete IP due diligence is not only about risk mitigation but also about making the most out of IP assets, such that they are valuable assets that contribute to the business’s success. Conducting thorough IP due diligence takes on greater importance in today’s knowledge-based economy, given that IP will remain the major factor influencing future commercial transactions.

King Stubb & Kasiva,
Advocates & Attorneys

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