IP assessment & strategy

Understanding the significance of intellectual property (IP) rights is fundamental to key business decisions, as is a well-defined IP strategy – what does the IP cover, is it valid and enforceable, can it be expanded, what is its value, and how does it support a business’ commercial objectives?   

What do we do?

The IP owned by a company is a key asset, often with significant value, and an effective strategy for developing that protection and mitigating 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 licence 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 teams of patent and trade mark attorneys have extensive experience of providing IP assessment services to 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 for safeguarding sensitive IP to ensure IP is well-managed. 
• Performing freedom to operate assessments on key technology, trade marks or product designs used by the company, including associated searching of third-party IP rights. Assessing exposure to potential IP infringement risks, as well as profiling or mitigating those risks. 

Often IP assessment work involves making recommendations for mitigating risks or improving a company’s IP position. Having conducted an IP assessment, 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 address potential infringement risks.

Who do we help?

We provide IP assessment and strategy services to companies looking to buy, sell or license IP portfolios, 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.