Seeking advice on assessing patents
January 27, 2022
by a searcher from University of Virginia-Darden - Darden School of Business in Charlottesville, VA, USA
I am currently pursuing a deal in the manufacturing space that has a handful of patents protecting its specialized designs. Besides me reading the patent filings and assessing the runways to expiration, any advice on how to assess the strength and breadth of them? My plan would be to engage a patent attorney during the diligence process, but should I do so right after the LOI is signed? Pre/post financial DD? I am a self-funded searcher so trying to be prudent with my expense timeline while also understanding that this is a huge part of this transaction. I am meeting with the owner next week and any ideas on questions to ask him about the patents specifically are also welcome. Thank you in advance.
from Stanford University in Honolulu, HI, USA
I would start with:
(1) Whether they've paid the maintenance fees on the patents so that it is still alive and not lapsed.This you can do on USPTO,gov.
(2) Has the patent term expired?For your purposes, use 20 years from the filing unless there's a note on the front of the patent. This will be on USPTO.gov (If it's lapsed or expired. put on your to-do list to check the marketing materials to ensure they aren't marketing it as if it is still alive).
(3)What type of patent?Are they design patents - meaning does it start with a D, like D123456 or is it comprised only of numbers like 11,987,654?If it's D, make sure they are selling something that looks like what's in the patent before even thinking of spending legal fees on it. If it's a utility patent, ask the owner to explain the difference between his patent and the closest thing he knows out there in the market.Do you see that as a competitive advantage worth attorneys' fees? If so, how much?
I am sure any of the IP attorneys like ^redacted,^redacted or ^redacted on Searchfunder will have an appreciation of your constraints as a self-funded searcher.In full disclosure, I've known ^redacted since my Silicon Valley days -- which is a long time ago.
from George Washington University in Raleigh, NC, USA