perform ip due diligence for strategic acquisitions · perform ip due diligence for strategic...

Derwent Innovation Blueprint for Success

Derwent Powering IP Innovation

Perform IP Due Diligence for Strategic Acquisitions How do you identify a target companys patents? Do you need to verify the geographic scope of a portfolio you are acquiring? How can you validate and analyze the patents involved in the purchase?

You are targeting a company or patent portfolio for acquisition, and you need to efficiently evaluate the technology you are acquiring. With some simple search techniques, you can easily leverage the power of Derwent Innovation to successfully review and validate many steps in your due diligence project.

Due Diligence Overview: Top 10 Checklist The top 10 list below outlines key tasks and data points you must address for your due diligence project. Arrows point to steps demonstrated in this document. You can also review the full article and annotated checklist: Strategic IP business acquisitions: A top 10 checklist

1 | Prioritize objectives

2 | Identify patents

3 | Assignee Validation

4 | Filing & Priority Dates

5 | Technology Review

6 | Geographic Scope

7 | Remaining Patent Life

8 | Upcoming Deadlines

9 | Contracts & Encumbrances

10 | Patentability & Enforceability

Review patent family data Search/ filter by country code

Use estimated remaining life Filter/Export Dead/Alive data

Find maintenance fee data Create Alerts & Watches

Quickly retrieve patents in your roster Find patents with varying number formats

Assignee and inventor searching Check legal status and US reassignment data

Date search and export flexibility Search by earliest priority date

DWPI Title & Abstracts and Classification data ThemeScape maps assess compatibility

https://www.linkedin.com/pulse/strategic-ip-business-acquisitions-top-10-checklist-laura-bantle?published=thttps://www.linkedin.com/pulse/strategic-ip-business-acquisitions-top-10-checklist-laura-bantle?published=t

Perform IP Due Diligence for Strategic Acquisitions 2

Identify patents from the target company or portfolio

Retrieve all patents from a list provided by the target Your target likely provided a list of patents included with the acquisition. The Publication Number search form helps you quickly locate those patents and save them for further review.

1. From the Derwent Innovation Dashboard, click the Patents tile

2. Click the Publication Number tab 3. Paste your list of patent numbers into the text box, or

click the button to upload a list in TXT format 4. Select Work File as your Output Type 5. Click Search, provide a Name for the work file, and

click Save

Locate potential undisclosed patents with Specialized Search As part of due diligence, verify that your target provided a complete list of patents in the roster. The Specialized Search tool can retrieve the entire DWPI or INPADOC families for patents in the list your target provided. The patent family may contain additional patents not included in the roster.

1. Use the same list of patent numbers from the previous step, and leave Work File selected as the Output type

2. Click the Specialized search options dropdown box and select Family Look-Up DWPI or INPADOC

3. Click Search, provide a new Name for the work file, and click Save

This second, expanded work file helps you discover patents not included in the roster. Later steps will add to this work file.

Tip: From the Work Files folder in your Saved Work area, you can compare the two work files you created and easily create a list of patents found by family lookup that were not included in the original list.

Locate patent numbers provided in a non-standard format The list of patents may include publication numbers in a non-standard format. A Discrepancy screen shows any numbers the search could not automatically identify. Copy these numbers, then click the Fielded tab to locate these patents.

Both Application Number and Application with US

Provisional can retrieve the same patent document based on the number format entered

Note the inclusion or removal of the slash / for series codes and US provisional numbers

Use the OR operator when searching multiple fields for various number formats

Click Save to, Existing work file to add the patents you locate to the work files you created


Validate assignees and ownership

A comprehensive assignee search for the organization you want to acquire helps verify that the target provide a complete, accurate patent roster. Add the results of your assignee search to the second, expanded work file you created from the family

Locate all patents currently owned by the target A comprehensive assignee search locates all patents currently assigned to the target

Add two instances of Assignee/Applicant your search Enter the targets name into the first field Click the Browse button next to the second field and

select the target company from the Corporate Tree Add the Assignee-Current US, US Reassignee, DWPI

Assignee and DWPI Assignee Code, and Attorney-Agent / Correspondent fields to ensure you retrieve a complete list of the targets patents

Click Search to retrieve your results. Then, click Add to, Existing Work File to add all patents found by the search to the extended work file.

Explore Assignee and Inventor Data to expand your search and identify potential reassignments Review the Results Dashboard to identify top Assignees and

top Inventors to narrow the search or for subsequent searches. This is one way to find alternate spellings or patents missing from the original roster, and analyze any joint inventorship disclosure issues under the AIA.

Explore top inventors that you can reincorporate into a separate search to find potentially missed patents and identify any joint inventorship trends that might implicate the AIA

Explore unexpected assignee names and flag for subsequent chain of title analysis

Tip: Consider more granular searching in INPADOC Legal Status fields for transfer of right or reassignment language. Example: Search with RAP legal status codes to pinpoint transfer of rights or owner corrections in EP patents.


Identify patents owned by the target but not included in the original roster After you compile your expanded due diligence work file,

identify patents in the expanded work file that are not in the original roster provided by the target. 1. From the Dashboard, click Saved Work, Work Files 2. Select the checkbox for the expanded work file 3. Select AND from the merge dropdown, select the

original work file, and click Go

Review the results based on internal metrics to determine if they were inadvertently missed or deliberately omitted.

Confirm patent dates and research continuing applications

Your contract with the target may limit acquired intellectual property to specific date ranges. You may also need to anlayze continuing application process. Derwent Innovation makes it easy to refine your comprehensive assignee search to focus on specific date ranges, then easily export the patent roster to review key dates (priority, application, reassignments) side-by-side in Excel.

1. Return to the top of the patent fielded search page

2. Click the plus sign to add additional fields

3. Select the date fields you want to add to your search, and enter the appropriate date ranges

4. In the Preview/edit query box, make sure to add parentheses around any groups of search fields connected by an OR operator

5. Click Search

6. Click Export, then search for the word Date in the Available Fields box

7. Select appropriate date-related fields, click the right arrow, and click Create

Tip: Before you create your export, optionally click Templates, Save as Template to save your field selections as a template for later use.

Review technologies within the targets roster

Filters and subsearch make it easy to segment the targets roster into specific technology areas. Use the following steps from the comprehensive, date-limited assignee search or from either work file you created (initial or expanded patent list from the target).

Tip: As you review patents in specific technology areas, use Custom Fields to flag records aligned with existing product lines and business units to aid future analysis.


Filter & Subsearch by Technology Area

Click the icon to access filter and subsearch options.

To search for keywords within your results, select a search field, enter keywords, and click Subsearch

To focus results on specific technologies, select a classification code filter field (e.g., IPC), select checkboxes, and click Filter Results

Validate correct technology focus and export for review DWPI Title and Abstract help you validate that your subsearch and filters focused on the correct technology areas. You can also view your results at the family level, which speeds your review with a single record for each unique invention.

1. Click the icon and select Display & Sort Options 2. Select the DWPI Title checkbox 3. Optionally click Collapse by and select DWPI or

INPADOC Family 4. Click Save and review the DWPI Title from your

results to verify correct focus 5. Open the patent record and review DWPI Abstract if

the DWPI Title does not clearly describe the patent 6. Click the select all checkbox in the header row, then

click Export to export one record for each family for further review in Excel

Tip: Select individual DWPI Abstract subfields such as Novelty, Use, and Advantage for easy manipulation and comparison within your export.

Evaluate technology compatibility Compared the expanded, verified target patent roster with your own portfolio to identify top priority patents for substantive analysis and validation with counsel. A ThemeScape map creates a visual comparison of the target roster and your current portfolio. You can easily create the map from work files with your portfolio and the expanded target roster.

1. Access Saved Work, and select work files with your portfolio and the expanded target roster

2. Click Analyze, ThemeScape, and click Generate 3. Use the automatically generated Assignee groups to

select patents in your portfolio and the target roster 4. Review the map to identify complimentary patents 5. Use selection tools to select areas of interest 6. Review those complementary patents in the

Document Viewer


Geographic Scope

You may need to identify inventions in the targets roster patented in countries where you operate. The Enhanced Patent Data DWPI and DPCI collection lets you search at the family (invention) level to easily locate the targets patents in global markets.

1. From fielded search, click the Change collections link 2. Select Enhanced Patent Data and click OK 3. Search for the target in the Assignee/Applicant field 4. Select Country Code and enter two-letter country

codes for target markets or contrasting jurisdictions 5. Click Search

Tip: Use the AND operator between each country code to focus on inventions with protection in all target or contrasting jurisdictions.

Evaluate remaining patent life and patent status of the targets roster

The Results Dashboard helps you quickly review dead/alive status and remaining life of the expanded target roster.

Estimated Remaining Life helps reveal patents that

expire soon, which may influence acquisition price Save patents that expire soon to a separate work file Use Dead/Alive to focus on Dead patents, then click

and select Retrieve INPADOC Family to discover if any continuations took place and research why

Remove the Dead filter and Retrieve DWPI Family to explore if inventions lapsed in specific countries

Access the work file of patents that expire soon and retrieve the INPADOC family; look for continuing applications on high-value IP

Tip: If you export these results, include DWPI Accession Number so you can easily sort results by DWPI Family to view predictive data factors (such as dead/alive and patent term extension amounts).


Upcoming Deadlines

Search for Maintenance Fee Reminders Derwent Innovation contains INPADOC legal status information, which can help you establish future annuity responsibilities and identify patents subject to the surcharge fee. US maintenance fees are due at 3.5, 7.5, and 11.5 years after issuance, and Maintenance Fee Reminders are sent at the start of the grace period.

1. On the Fielded search form, search for your target in the Assignee/Applicant field

2. Select the INPDOC Legal Status field and search for: (notice OR mail* OR remind*) NEAR3 (maintenance OR fee*)

3. Click Search to locate patents with matching text in their legal status

Tip: You will not receive fee payment reminders unless the target updates the Fee Address with the USPTO. During the early stages of the due diligence review, create a rough annuity schedule using fee reminder data (above) and searching US Granted Patents (Kind Code B1 or B2) with the Publication Date / Year field.

Identify Low Priority or Lapsed IP Patent asset maintenance is critical, especially when

ownership is about to change.


2. Select the INPDOC Legal Status field 3. Search for legal status codes and description language

for events that reveal the IP lapsed, has not been maintained, or was abandoned You may want to use multiple fields

4. Click Search

Tip: Click the ? next to the INPADOC Legal Status field to quickly see legal status codes for each country. You can also download and Excel version from the INPADOC website.

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Stay updated on top priority IP and events


2. Select the INPDOC Legal Status field and enter terms for key events that might affect the IP Examples include expiry for failure to pay fees or submit translations and opposition or IPR petitions impacting validity

3. Click Search, then click Save to the search so that you can rerun it periodically

Receive notifications about critical IP events

Watched records notify you when key events occur on critical patents (such as those identified on the ThemeScape map for validation with outside counsel). 1. Locate the critical patents (in results or the work file) 2. Select the checkboxes for those patents and click

Watch Records 3. Select which events you want to monitor 4. Click Save to receive email notifications when those

events occur on the selected key patents

Learn More with these Additional Resources Research Market Trends in a Technology Space

Evaluate Portfolios for Mergers, Acquisitions, or Licensing

Using Custom Fields for Additional Analysis Options in Derwent Innovation

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Due Diligence Overview: Top 10 ChecklistIdentify patents from the target company or portfolioRetrieve all patents from a list provided by the targetLocate potential undisclosed patents with Specialized SearchLocate patent numbers provided in a non-standard format

Validate assignees and ownershipLocate all patents currently owned by the targetExplore Assignee and Inventor Data to expand your search and identify potential reassignmentsIdentify patents owned by the target but not included in the original roster

Confirm patent dates and research continuing applicationsReview technologies within the targets rosterFilter & Subsearch by Technology AreaValidate correct technology focus and export for reviewEvaluate technology compatibility

Geographic ScopeEvaluate remaining patent life and patent status of the targets rosterUpcoming DeadlinesSearch for Maintenance Fee RemindersIdentify Low Priority or Lapsed IPStay updated on top priority IP and eventsReceive notifications about critical IP events

Learn More with these Additional Resources

perform ip due diligence for strategic acquisitions · perform ip due diligence for strategic...

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