Items for an IP Valuator's Due Diligence Checklist

As most of us probably do, as part of a year-end catch-up/clean-up, I am reading materials from my “Reading” and “To Do” desktop folders that for some reason I never got to during the year.  A while back, IP attorney Ray Millien offered a simple checklist for valuation analysts when performing what he calls “IP Due Diligence.”

First, he implores analysts to identify each key person in the management of an organization’s IP, securing employment history, agreements, and non-competes.

Then he asks for all available information on existing foreign and U.S. patents, copyrights and trademarks (including domains with trademarks).

Next he asks for all available information on trade secrets, including all confidentiality agreements.  Though he doesn’t mention it, any information on company efforts to keep trade secrets secret should also be gathered.  Part of the due diligence here is to gather all tech/IP-related licenses.

Finally, he suggests gathering a detailed description of any IP-related legal risks to which the company is exposed, including the identification of key patents owned by chief competitors.