The technology lawyers at Munck Wilson Mandala frequently are called upon to perform intellectual property (IP) audits on specific technology assets or IP portfolios. An IP audit involves a comprehensive review of a client’s IP assets and the role of each individual asset in the company’s business. Through this audit, we can help a client identify and monitor its owned and licensed IP, better understand the scope and value of its IP rights, and more effectively manage these critical business assets to create competitive advantages, maximize revenue potential and reduce risk.
An IP audit can enable a client to ensure that its IP assets are protected properly and that it is not violating third-party rights or violating applicable regulations. An IP audit also is a valuable step in the development of a client’s IP portfolio. The results of the audit can be used to identify technical challenges, potential acquisition candidates, or additional patentable inventions to enhance the client’s portfolio. Importantly, the audit can help pinpoint multiple, often significant, additional revenue streams from a client’s IP portfolio, such as opportunities to license or sell IP rights, or to pursue litigation against infringers of the client’s IP.
Another way Munck Wilson Mandala helps our clients maximize opportunities from their IP portfolios is through the provision of legal opinions to the client or to third parties such as a client’s lender or acquirer. We render patentability, right-to-use or practice, and non-infringement opinions relating to a client’s products or methods. We also regularly opine concerning the validity and invalidity of patents on inventions by our clients or their competition. These opinions can be invaluable in initial product development, as well as in connection with a client’s financing, licensing, litigation or merger and acquisition activities.
Early investigation regarding the IP rights of others can help a client eliminate needless expenditure on the development of an infringing product, guide development of a viable work-around, or identify a client’s patentable inventions. The possession of an IP opinion could be a valid defense in a suit for willful patent infringement. Sometimes a client will seek a validity or patent infringement opinion prior to beginning licensing negotiations or patent infringement litigation. In these cases, the client wants guidance concerning the strength of its patent and the degree to which a third party’s product infringes the client’s patent. In this way, our client can make a more informed decision about whether to seek licensing fees from the third party or file suit.
