Can you feel the pulse, can you hear the heartbeat?

IP due diligence: real excitement --
or a good  way to hang on to clients?
What triggers that intoxicating feeling of raw excitement? We humans (and Kats) are all so different that the answer, quite honestly, is “to each, his own”. Some folk need something quite extreme to get that adrenalin coursing through their veins: bungee-jumping, vertical roller-coasters or feeling the 5G pull as you take a corner at the wheel of a Formula One machine. For others, it’s something quite internal: the frisson that chills the spine of the chess player as he spots the winning combination, the re-reading in sheer disbelief of the sequence of numbers of a lottery ticket which announces a massive jackpot; the shared intimacy of a special moment with a loved one.

Intellectual property lawyers and their clients likewise respond to different stimuli. For some it is the cut-and-thrust of infringement litigation; for others it is that moment when a favourable licence deal is clinched; for others again it is a brilliant and registrable solution to a branding problem or the realisation that years of apparently unproductive toil in the laboratory have resulted after all in an epoch-making, paradigm-shifting green-field patent. But there’s one thing that practically all IP practitioner enthusiasts agree: whatever makes them excited, it isn’t due diligence.

What then is due diligence that it should be so much more likely to congeal the blood than to quicken it? The subject certainly has something unromantic, unglamorous about it. Like warnings from well-meaning parents to be careful crossing the road, inscriptions on the back of tickets and receipts and like those little pieces of paper that are stuffed into pharmaceutical products that warn us about adverse reactions, due diligence is something that is necessary but generally ignored until it’s too late to do anything about it.

The IPKat thinks this is a dreadful shame and wants something to be done about it. For one thing, “due diligence” is a dull and stuffy name. Words ending in “-ence” are out of fashion anyway (“intelligence”, “prudence”, “providence”, "reticence" ...) and no-one ever contrasts it with “undue diligence”. Even “DD” would be better, or something altogether sexier like, … er, that’s probably a subject for another blog post.

You can do some of the easy bits of due
diligence online, checking registered rights --
but there's a lot more to learn ...
Next, let’s extol its virtues. With DD you can actually get a snapshot of your business that shows what’s hot and what’s not. Which IP rights are yours, which rights are you paying to use, and which are you infringing? Which of your rights are assets that generate cash or business, and which are liabilities that leech money out of your business through renewal fees in countries where they’re surplus to requirements? Which are no longer even fit for purpose, such as trade mark registrations for versions of a logo which has long since been redesigned?

The snapshot becomes even more useful if its subject isn’t your own business but someone else’s, which you may be acquiring, merging or synergising with by means of a joint venture to which both businesses are contributing IP. You want to make sure that you are getting the IP rights you’re paying for, or at least getting the use of them, and that the assets you may be thinking of selling off in order to finance the deal or make it more palatable to shareholders or competition authorities will be yours to sell.

Readers who (i) want to know more about how to take a business’s IP pulse, (ii) have a couple of free days in the middle of December to share with like-minded souls and (iii) enjoy a jolly good case study when they experience it may wish to give thought to IP Due Diligence, a two-day event which LexisNexis is running on Wednesday 14 and Thursday 15 December. Through an evolving case study involving the acquisition of a fictional medium-sized company which could very well be just like yours —or you competitor’s — the event’s course instructors plan to explore every aspect of a due diligence investigation. Their aim is not just to tackle all the obvious topics (spotting and valuing key IP assets, risk assessment and management, how to get the best out of life and retain one’s sanity while working in a dataroom) but also some of the more subtle ones that people can conveniently forget like attorney-client privilege, the correct protocol for using and communicating information resulting from the exercise and how to maximise your advantage, whichever side you’re on, when you play the warranty game.

Finnegans: a name long associated with the Bar ...
The composition of the team presenting this two-day event is almost as exciting as DD itself. For one thing, it’s Anglo-European, consisting of four kindly souls from Finnegans who have generously committed what might have been two quality shopping days in the run-up to Christmas to the whys and wherefores of DD. For another thing, the team members aren’t just backroom boys who thrive on non-contentious IP work in much the same way as house-mites thrive on minute particles of domestic dust: they have tasted the red meat of IP litigation. There’s a message here, says Merpel: it’s a bit like the old maxim of si vis pacem, para bellum (if you seek peace, prepare for war), so if you seek successful IP transactions, prepare for litigation. And what better way to do that than through DD?

IP Due Diligence: you can obtain full details of this event, the participating team and registration online here

LexisNexis has kindly reduced the registration fee for IPKat readers from £1,049 to £999 + VAT per participant if you book by Thursday 17 November 2011 and quote the Kat-code ‘IPKAT-BUTTERWORTHS’. It may not sound like much, but at today’s price it will buy you more than 5kg of turkey breasts at Tesco …
Can you feel the pulse, can you hear the heartbeat? Can you feel the pulse, can you hear the heartbeat? Reviewed by Merpel on Tuesday, October 18, 2011 Rating: 5


  1. In the good old days, we called them pre-contract enquiries. Conveyancers still do. None of that Roman law terminology please. Due diligence, pshaw!

  2. I have a further reason for disliking the term "due diligence". It is in fact a rather lazy metonymy, where the standard to which an activity is to be performed ("with due diligence") comes to stand for the activity itself. The result is that there is no precision about what the actual activity is, and it can, as the Kat correctly notes, be a number of things - looking at your own IP portfolio (for a number of different reasons, each of which will imply a different emphasis); looking at someone elses (again, for a number of reasons - acquisition, freedom to operate...???). Let's come up with some proper and accurate terminology.

  3. Reading the blog post gave me such a frisson about due diligence I wish I lived in the UK and could attend --


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