IP LANDSCAPING & PRE-FREEDOM-TO-OPERATE
Intellectual Property rights (“IPR”) landscapes are a form of due diligence which aim to address questions a company, its stakeholders or prospective investors/lenders may have in relation to technology feasibility within one or more markets. The research focuses on a specific technology (the “Target Technology”) and is conducted with the objective of:
- Gaining a better understanding of the general landscape surrounding the Target Technology in terms of pending and granted patents.
- Identifying major players in terms of IP filings and their business focus within the Target Technology’s domain (i.e. applications of interest/markets of interest) as well as other trends and statistics which can serve as competitive intelligence.
- Assessing the IPR portfolio of a specific company (whether an acquisition target or competitor) to confirm the breadth and strength of its IP filings.
- Gauging where patent thickets and/or whitespace may exist in order to inform and align a company’s R&D and IP management strategy.
- Assessing preliminary freedom-to-operate (“FTO”) around the Target Technology by identifying highly relevant IPR filings which may lead to commercialisation hurdles and thus inform a decision by the company or its investors as to whether an FTO opinion is necessary.
- Start-ups which are seeking to validate the technology and market feasibility of an offering to VCs and investors
- SMEs/PLCs looking to improve their competitive advantage and/or scout for opportunities for technology development/expansion with the least amount of IP hurdles
- Investors and funding providers which require confidence that funding toward technology development will not be undermined by: (i) required IPR omitted from the transaction, (ii) onerous in-licensing requirements, (iii) access limitations, and (iv) failed patent registration in markets of interest.
Our approach to conducting IPR landscaping and pre-FTOs involves consultation with clients, key technical staff and management in order to ensure that technological realms of interest are well defined and characterised and that the purpose and objectives of the exercise are clearly delineated. Our approach can generally be divided into three phases – (i) technology deconstruction, (ii) data aggregation and classification, and (iii) development of bespoke IPR insights report.
- Insight on trends as well as competitive intelligence relating to a technology of interest. Companies and stakeholders can use this information to remain a step ahead of the market, being early to grasp market opportunities, and make sound decisions around patent filings and mitigating downstream IP hurdles.
- For investors and lenders, an IPR landscape helps establish whether a prospective target is likely to face IP hurdles moving forward, particularly by way of competing and similar technologies which may be coming to market sooner, as well as IPR filings which would make it difficult to commercialise a technology of interest without infringing the patents of others, thus requiring licences and access negotiations.
- Supports and guides a subsequent FTO opinion which may be sought from a subject matter expert. FTO opinions are legal opinions with a significant degree of associated liability. Due to this, FTOs are costly procedures which are conducted on an “as needed basis”. In some instances, companies may forego seeking an FTO opinion altogether as doing so introduces the prospect of “treble damages” in the event of an infringement. IP rights landscapes provide the groundwork necessary for undertaking an FTO opinion exercise. Information on the IPR landscape surrounding the Target Technology, as well as data on key IPR filings which are similar in scope to the Target Technology, support and guide an FTO opinion and help reduce the costs and time associated with carrying out the exercise.
- While IP rights landscapes shift continuously, an IPR landscape report often serves as a document which validates, in the eye of most investors and VCs, the value proposition and market feasibility of a technology proposition. It also strengthens the argument that investment into a target Company is not likely to be overshadowed or compromised by a highly competitive market, unforeseen licensing costs and/or infringement proceedings.
Based on needs, timescales and budget, the IPR landscape exercise and report can be designed to be as broad or specific as required and therefore carried out to include only the most relevant features.