MKW conducts due diligence on patent portfolios for purchases, investments, and other business transactions. Our due diligence expertise enables us to assess the issues below:
Ownership: MKW attorneys and paralegals regularly work with patent portfolios having complex chains of title. We help clients make sure that ownership rights are properly perfected. We have also analyzed assignment and license agreements in the chain-of-title to help clients investigate and understand any resulting limitations on rights.
Term and Priority: Although patent term calculation is often straightforward, it can be complicated in a portfolio with many related patents. Terminal disclaimers in the same patent family potentially limit term. Often, the resulting term can only be ascertained with certainty by reviewing the file history. Terminal disclaimer information on the front of the patent is not always correct and, even if it is, further work is needed to confirm the affected patent’s term. Similarly, ascertaining a patent’s priority date is often challenging in the context of portfolios with large families of patents interrelated by full and/or partial priority claims. Our team knows how to analyze patent families to provide clients with reliable information regarding patent priority dates and term.
Status: Patent applications are sometimes abandoned and revived and issued patents sometimes expire due to missed maintenance fee payments but are later reinstated. MKW can identify continuity gaps and help clients assess whether patent rights appear to have been restored effectively. We can also help assess whether any such continuity gaps have created intervening rights, undermining a patent’s value.
Scope and Validity: MKW attorneys have deep experience evaluating and litigating patent scope and validity. We therefore are able to effectively advise clients on the likely scope of particular claims in a portfolio as well as help clients assess the risk of particular claims being later held invalid. MKW attorneys have prepared analysis and formal opinions on scope and validity that have helped our clients protect their interests in the context of high-value transactions.