A valuation of a business’ intangible assets can make a house compete with the worth of a castle. In mergers and acquisitions, divestments, spin-outs or re-financing, intellectual assets, such as the goodwill in a brand name, can have a high impact on negotiating terms. Investigation works are therefore undertaken to place a value on a company’s intellectual property, determine its soundness and assist a buyer, an investor or a proprietor in utilising the potential of the property accordingly. The acquisition of the Jaeger brand’s intellectual property in isolation from the brand’s physical assets is a great illustration of due diligence at work. Leaving the bricks and mortar of the brand on the market for administration, shows how much the intellectual property of a business can develop and become its main and most valuable asset.

The Due Diligence Report

Checks performed on an intellectual property portfolio of interest would reveal what are the assets held by the business and if they bare any obligations or encumbrances in the form of a licence, assignment or security interest. An investigation would also list the chain of title for the different aspects of the portfolio, previous owners and interests. Most importantly, it will disclose if the enforceability of an asset, such as a trade mark or a product’s design and packaging, is challenged and faces the threat of litigation. Equal consideration is given to any additional charges, like renewal and registration fees.

All of these factors will come together in a report that identifies the status of a company’s intellectual property. Therefrom a sound judgement can be expressed on the strength of the portfolio and the need to fill any gaps in protection. The latter may be in the shape of unregistered domain names, vulnerable or expired registrations, terms of licenses, or any on-going opposition proceedings.

Search tools

An online search can be performed through using the database of a National Office like UKIPO, EUIPO & WIPO. Foreign associates would be instructed to carry out a search in their respective national database. Alternatively, or in conjunction, a commercial online search can utilise the tools of SERION’s Thomson CompuMark, Walters Kluwer’s Corsearch FOCUS, and Questel’s Orbit Trademark.

Final Thoughts

When concerned with due diligence, trade mark practitioners are the real life embodiment of Agatha Christie’s Miss Marple.