IP Due Diligence

The attorneys at our Washington DC area firm have conducted intellectual property due diligence on over 60+ M&A transactions, ranging in size from <$5M USD to >$5B USD. As a result, the firm is able to streamline one of the most important aspects of any technology transaction for corporations, private equity firms, investment banks, and venture capitalists. Many M&A deals hinge on the enforceability and validity of the intellectual property, which is at the heart of the transaction. Our firm is able to conduct freedom to practice opinions for the product or service or software being divested. We further ensure for our clients that the underlying IP is adequately protected in the purchase agreement and offer thorough data room review, including compliance with open source software usage in the software codebases.

• Intellectual property due diligence

• Freedom to practice opinions

• Open source software license review

• Stock Purchase Agreement and Asset Purchase Agreement reviews

• Trademark registration and use portfolio audits

• Patent portfolio audits

Patents

All attorneys at the firm have undergraduate university degrees in engineering and are registered to practice before the United States Patent Office. The firm has prosecuted thousands of U.S. patent applications. It has further been instrumental in widening technology moats for clients to increase company valuations and decrease competitive threats.

• Patent application drafting

• Patent application prosecution

• Patent novelty searching

• Patent landscape searching

• Chain of title patent searching

• Freedom to operate opinions

• Patent infringement opinions

• Foreign filing of patents, with a worldwide network of foreign IP firms

• Patent maintenance fee payments  

Key IP Forms for Companies 

Attorneys in our firm have served as chief intellectual property counsel or general counsel at large, publicly traded technology companies, including Data General, Roper Technologies, and Thomas & Betts. They have created key IP guidelines/forms that every in-house legal department needs to ensure IP is adequately captured within corporate environments, and that possible IP infringement risk is minimized. The firm creates bespoke client solutions for each of these guidelines/forms as needed.

• Invention disclosure

• Invention rewards programs

• Trademark disclosure

• Open source usage

• Generative AI usage

• Social media policies

• Trade secret programs

• Photo, image, and video releases

• Independent contractor agreements

• Terms of service and use

• IP address tracking

• CanSpam Act programs

• Confidentiality agreements

• Employee invention assignment agreements

Trademarks

Brand names are extremely important for products and services, especially in the age of the Internet and generative AI. Our firm handles aspects of trademark/service mark registration, including taglines. We file takedown notices for the misuse of brands by third parties in Internet advertising.

• Trademark application drafting

• Trademark application prosecution

• Trademark searching (direct hit and comprehensive)

• Chain of title trademark searching

• Freedom to use trademark opinions

• Trademark infringement opinions

• Foreign filing of trademarks, with a worldwide network of foreign IP firms

• Trademark renewals

• Domain name management

• Trademark usage

• Internet takedown notices 

Copyrights

Registered copyrights play an important role in the federal protection of works such as software code, websites, musical recordings, architectural designs for commercial buildings and homes, books, book covers, and short stories. Popular consumer items such as coffee mugs, baseball caps, and T-shirts can also be the subject of copyright protection.

• Copyright application drafting

• Copyright application prosecution

• Copyright searches

• Freedom to operate copyright opinions

• Copyright infringement opinions

IP Licensing and IP Purchase Agreements

Proper terminology is crucial when entering into an intellectual property agreement. The firm handles all aspects of IP licensing from the initial negotiations with attorneys on the other side of the deal, to redlines of important IP terms, through execution of the finalized agreement and oversight of the IP transfer or royalty payments, depending on the matter at hand.

• Joint development agreements

• Research and development agreements

• Patent licensing agreements

• Trademark agreements

• End User License Agreements (EULAs)

• Copyright agreements

• IP royalty agreements

• Joint venture agreements

• Patent sale agreements

Post Grant IP Proceedings

Once intellectual property is registered, it must sometimes be defended if challenged by a third party in a post-grant proceeding. Similarly, clients may seek to challenge the registration of intellectual property by a competitor. Our attorneys are experienced in post-grant proceedings.

• Patent Trial and Appeal Board proceeding

• Patent reexaminations

• Patent reissues

• Trademark Trial and Appeal Board proceedings

• Trademark oppositions

• Domain name Uniform Domain Name Dispute Resolution Policy proceedings

• Anti-cybersquatting Consumer Protection Act challenges

Trade Secrets

For many companies, trade secrets are the most valuable intellectual property the company possesses. This is especially true for software companies in regards to source code. Our firm advises clients on how to safeguard its trade secrets.

• Facility tour agreements

• Confidentiality agreements

• Trade secret protection programs

• Defend Trade Secrets Act guidelines

SUMMARY OF SERVICES

• DUE DILIGENCE

• PATENTS

• KEY IP FORMS

• TRADEMARKS

• COPYRIGHTS

• IP LICENSING

• POST-GRANT PROCEEDINGS

• TRADESECRETS