IP Due Diligence & Commercial Assessment pvs giridhar v2
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IP Due Diligence and Commercial Assessment of New Products and Processes. ©PVS Giridhar, Senior Partner Giridhar & Sai Associates
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Giridhar Pillarisetti Giridhar Pillarisetti Recently at a talk at the IPEX Conference of CII at Chennai, I pointed out that IP Audits/Due diligence is always talked in ex-post M&A situations. But commercial IP assessment of research ideas/projects should be ex ante even during design phase of the R&D project. Todays many IP professionals are good at litigation and audit during M&A but not at ex ante assessment which is much more challenging and more relevant to the Indian research and IP scenario.
Transcript of IP Due Diligence & Commercial Assessment pvs giridhar v2
IP Due Diligence and Commercial Assessment of New Products and
Processes.
©PVS Giridhar,Senior Partner
Giridhar & Sai Associates
Agenda
• IP Due Diligence
• Commercial assessment
• New products and processes
Three primary areas of focus for the IP due diligence
They are review of:
1. ownership, status and control of the IP assets;
2. the strength and economic value of the IP assets;
3. the potential liability for infringement.
The due diligence plan should consider each of these areas in relation to your prioritized list of target IP assets.
IP Due Diligence is an Audit
to assess the quantity and the quality of intellectual property assets
owned by, or licensed to, a company, business or individual.
It should also include an assessment of how intellectual property is captured and protected by the relevant company or business.
Types of Audit
1. Ownership, status and control of the IP assets –Politico-Legal Assessment
2. The strength and economic value of the IP assets – Commercial Assessment
3. The potential liability for infringement –Legal Assessment
Situations of Assessment
• M & A (Transfer of Enterprise)
• Purchase/Licensing-in of IP (Transfer of IP)
• Research – To be or not to be
(Invention disclosure to product development)
Ex- Post & Ex-Ante
• IP Audit for investment in M&A or for Assignment or licensing-in of IP is ex-post audit whoseFocus is Risk Management
• But IP Audit for committing money to research is more challenging because it is ex-ante audit whoseFocus is Business Development Opportunity
IDEA to ASSET Process
IP P
RO
TE
CT
ION
R&
D S
UP
PO
RT
MO
NET
ISA
TIO
N
Towards protectable and monetisable IP
PR
IOR
AR
T SE
AR
CH
MA
RK
ET A
NA
LYSI
S
(IP
) LI
TIG
ATI
ON
SU
PP
OR
T
Strategic deployment of IP
Finding Value in Idea at Ideation Stage
Value of IP is at theIntersection of
Value is the potential energy function representing desire between people and products – Shilito & DeMarle
© IP Dome
TRL and CRLA pictorial representation of the TRL and CRL Indexes demonstrates that the Commercial Readiness Index begins once the technology is at the stage where it can be trialled and demonstrated in the field.
The Index extends to when thetechnology or application is being commercially deployed and has become a bankable asset class.
Ex Ante Assessment
Review of
Technology
IP
Financial support
Personnel profile of the R&D team
Market.
Activated Carbon – A Case Study
• A form of carbon processed to have small, low-volume pores that increase the surface area available for adsorption or chemical reactions.[
• Due to its high degree of microporosity, just one gram of activated carbon has a surface area in excess of 500 m2, as determined by gas adsorption.
• used in gas purification, decaffeination, gold purification, metal extraction, water purification, medicine, sewage treatment, air filters in gas masks and respirators, filters in compressed air and many other applications.
Source: Wikipedia
Activated Carbon (AC)
• Coconut-shell based AC
• Wood-based AC
• Coal-based AC
• Commodity v Value-added AC
• Value-added AC – IP Minefield
• Investment in Research v Licensing-in
Other Case Studies
1. Secmsg – Digitally-signed secure SMS
2. Virtual Shopping Network
3. What’s in a name? A A rose by any other name could turn sour.
4. What’s in a contract? Term-twisting
Thank you
Giridhar & SaiAdvocatesLegal & Allied Services
No.319(Old No.155), Linghi Chetty Street,
III Floor, George Town, Chennai 600 001.
Phone: 91-44- 2524 3949/ 4216 3949 Fax: 91-44- 2522 9151
E-mail: [email protected] /
Website: www.lawgonindia.com
(c) PVS Giridhar & Sai Associates
