Conducting comprehensive trademark searches to ensure that the company's trademarks do not infringe upon existing trademarks owned by others;
IP Due Diligence
Due diligence is carried out prior to crucial business transactions like an investment, a merger or an acquisition, to identify and be aware of any potential risks or red flags before making the decision. During such a transaction, Intellectual Property plays an important role, since it has an impact on almost every aspect of the business. For example, Intellectual property Rights increase a company’s valuation.
It provides opportunities to generate new revenue streams. One of the main reasons why venture capitalists invest in deep technology startups is because they can provide a high return on investment, by capturing a high market share and scaling rapidly. Intellectual property Rights create barriers to entry and hence provide competitive advantage.
The existence of intellectual property rights indicates differentiation, which gives companies an edge over their competitors and helps them capture maximum market share. Intellectual Property Rights tilts the balance in favor of their owner and reduces the threats from competition. Whereas all these factors make a significant impact, the extent of the impact would depend on multiple factors that can be ascertained only during IP Due Diligence.
Service Offerings
Freedom to Operate
A freedom to operate search is typically conducted before commercially producing a product or process in a country to avoid potentially expensive patent infringement litigation there. It shows how much a product or process would overlap existing patents. An invention can be patentable but still can infringe a dominating patent. In such situations, the company planning to launch the product may:
- Reverse engineer their product so that at least one limitation of the infringed claim is not present and obtain a legal opinion which asserts that the product does not infringe the claim directly or under the doctrine of equivalents.
- Negotiate a licensing agreement with the owner of the dominating patent prior to launch.
- Cross license, if the company has patents on their own technology overlapping with the interests of the owner of the dominating patent.
However, if the search is not conducted and the product is launched to infringe the dominating patent, the company starts at a disadvantage in the negotiations and may be subject to litigation. The output of a Freedom to Operate search is typically just a lengthy search report. However, Metayage breaks down the search results into actionable intelligence with analyses, observations, and recommendations that facilitate understanding and decision making.
Patent Scope Assessment
Not all patents are equal. The value of a patent depends on the exclusive rights and the competitive advantages it provides. The claims of patent specification define the scope of the patent, and the scope is further determined by reading the claims considering the specification.
Investors are looking for scalability, which is possible only through a differentiated product having a sustainable competitive advantage. Patents enable this differentiation and competitive advantage, provided they are broad enough to create barriers to entry for competitors. While evaluating a patent portfolio, investors need to understand the scope of the patents so that they can assess the extent to which there is a competitive advantage.
Since patents are not easy to understand, especially for people not trained in patent law, these techno-legal documents must be broken down into simple language to provide clarity without jargon. Metayage provides simple and transparent explanations on what patents cover and what they don't, so that investors can take business decisions with confidence and clarity.
Patentability and Validity
When you are evaluating a company for investment, merger or an acquisition, and they have filed patents, it is important to determine the likelihood that the patents will be issued if they are pending applications.
In case the patents are granted, you can go one step further to also check if they are vulnerable to being attacked through opposition/ revocation proceedings post grant. The value of a patent is based on your ability to enforce them and if the patent is likely to be rejected or revoked when you try to enforce it, the patent doesn’t serve its purpose.
Ownership verification
When you invest in or acquire a company, it is important to know whether the company is merely using the IP that they need for their business or is an owner of the IP. If an IP is required for the business and if the IP is not owned by the company, there are risks and threats to continuing and growing the business.
There are several myths surrounding IP ownership due to which entrepreneurs as well as investors incorrectly assume that certain IP is owned by them. Unless the chain of ownership is clearly established through agreements and the ownership is recorded with the IP offices, the ownership of the IP can be disputed and challenged.
Trademark Due Diligence
Prior to making a venture capital investment, it's essential to review and ascertain various trademark-related risks to ensure the investment is sound and to mitigate potential legal and financial liabilities. Our Trademark Due diligence process includes the following:
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Checking the registration status of the company's trademarks to ensure they are properly registered with the relevant trademark offices;
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Verifying that the company owns the trademarks it claims to own and that there are no disputes or uncertainties regarding the chain of title. Clear ownership is crucial for maintaining the company's rights to its trademarks and avoiding challenges from third parties.
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Reviewing the company's trademark registrations and protections in key international markets, especially if the company operates or intends to expand globally.
Why Choose Us
We act as your strategic IP partner
Our slogan is "Your Strategy First®", which means that we start with the client's business strategy and goals and then align our efforts to achieve those goals. This means that the scope of an IP Due diligence is defined and prioritized based on the primary concerns of the investors, and to achieve their business goals and objectives.
The patent due diligence process is not easy, but Metayage makes it simple.
We simplify and guide our clients at every stage of the due diligence process, which can otherwise be quite stressful and cumbersome. Although our search and analysis process are highly technical, and legal due diligence requires a deep understanding and application of patent law, we provide actionable business insights devoid of technical or legal jargon for investors.
We approach due diligence with complete honesty and transparency
We proactively point out risks and concerns to the client proactively and clarify the assumptions made and the pros and cons in a transparent manner. It is because of the high level of trust our clients have with us that even their investors listen to our opinions and take our word for it.
We don't just identify problems, we provide solutions.
If any risks are encountered during the due diligence process, we provide solutions and remedies to mitigate the risks. Risks are viewed as challenges to be overcome and not as roadblocks or deal breakers.
We have specialized expertise in searching for due diligence
The objective of a freedom to operate search is to find patents owned by other companies that a product may infringe upon. Hence, the search strategy is very different from the strategy for a patentability or invalidity search, which focuses on a specific invention. Metayage has proprietary search strategies that minimize the risk of missing relevant patents and produce the most accurate results.
Process Overview
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Metayage will execute NDA with the investor and the startup subject to IP Due Diligence. Once the NDA is signed, the startup will be requested to share details of any patents filed along with the relevant documents. In addition, they will be requested to fill up a Freedom to Operate questionnaire, which will enquire about the markets they intend to sell in, the various components in their product and steps used in their processes, what components they develop in-house, along with a list of competitors and major players in the market.
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Based on the information provided, the Metayage team will conduct exhaustive patentability, validity, and/or Freedom to Operate searches. We will then provide detailed analyses of the most relevant patents, observations and recommendations. Most importantly, we will be available for meetings and calls to explain the significance of our findings and clarify all your questions and concerns so you can make informed decisions.
Trust Indicators
Metayage is a strategic IP partner for leading incubators like SINE, IIT Bombay, PSG-STEP, CIE, IIIT-H. and VIT-TBI. We have also entered agreements with general practice law firms and leading IP firms not specialized in patents to provide IP due diligence services to their clients. We are also the patent counsel for a Seattle-based incubator called Kernel Labs and we have worked with deep tech investors in India such as Pi Ventures and Axilor Ventures.
Frequently Asked Questions
You may have patented one specific improvement or feature in the overall product, but the rest of the product features, components, and combinations of components and features could be patented by others. Having a patent of your own does not mean that you have freedom to sell your product.
A patentability search is very specific and focused only on the unique features of your invention, whereas a Freedom to Operate search covers all features and combinations of features that are present in the product that you are selling or planning to sell in different markets. One type of search is not a substitute for the other, and both have their own purpose, relevance, and context.
Metayage has set up offices at strategic locations in hubs of innovation and deep technology such as Bangalore and Hyderabad. Our Bangalore office is located at the Atal Incubation Centre in Dayanand Sagar College on Hosur road, which is close to the startup hubs of HSR Layout and Koramangala. Metayage’s Hyderabad office is in the deep tech incubator CIE, IIIT Hyderabad campus, where T-Hub is also located.
Our office in Chennai is located within a stone’s throw from the Intellectual Property office in Chennai, which is jurisdiction for the states in South India. Our Coimbatore office is within the PSG-STEP incubator, close to several innovative startups and accessible to researchers and scientists from the PSG College of Technology.
