The sections below provide some more details pertaining to each service presented under ‘Litigation, licensing and M&A Support’ head. Please also scroll to the bottom of the page to look at the databases we use for conducting these searches.
Potential Licensee & Infringers Search
Based on the experience of conducting numerous litigation support projects, Sagacious has developed methodologies for conducting quick but comprehensive market research to identify companies/ candidates who might be interested in licensing client’s technology.
The search is focused on identifying products and/or technologies owned by potential licensee/ infringer that are either infringing on client’s patent or might gain a competitive edge by adding the features of client’s invention.
The study is alternatively known as Candidate Partner List, Tech Transfer Process, Market Feasibility Analysis, IP Enforcement opportunities, IP misuse Analysis, Technology Commercialization Opportunities, market research, etc.
Product-to-Patent Mapping & Claim Chart Preparation
Claim charts are prepared to determine and establish the extent of overlap between one or more claims of a patent and a product/technology. These claim charts are used by Patent Attorneys to prove infringement of the product/technology on the patent.
Sagacious team has a collective experience of preparing more than ~1,400 claim charts related to Electronics, Computer Sciences, Embedded Systems, Communications, and Medical devices.
Claim Construction & File Wrapper Analysis
Claims construction documents are prepared to draw a boundary, based on the scope of the claims. This project includes identifying the substantiating text corresponding to the claims from the full specifications and the file history/wrapper of the patent, to determine the scope of the claims.
IP Due Diligence
As IP assets are gaining more and more importance, IP due diligence have become an essential component of the Mergers and Acquisition (M&A) process. An IP due diligence study is generally conducted when:
» A buyer is interested in purchasing an entity having IP assets.
» A prospective licensee is interested in obtaining the license to a patent portfolio.
» A venture capitalist is interested in investing into a start-up company having patent assets. This Study involves analyzing the involved entities w.r.t. the aspects like mutual complementation of patent portfolios, strength of patent portfolios, IP clearance of product portfolios, etc
Post M&A Support
If managed properly, combined patent portfolio of the merged entity after M&A could be of utmost importance in harnessing the maximum value from the deal. For this purpose, Sagacious supports its clients in the following ways:
» Categorize the combined entity’s patent portfolio based on technology/ application framework
» Identify redundant and complementary patents in the combined entity’s patent portfolio
» Identify patent out-licensing opportunities that are non-core to the combined entity’s new strategy
» Identify complementing inventor teams from each of the entities to assist in building highly efficient groups in the combined entity.
» Identify inventor teams having patents supporting the combined entity’s strategic focus to avoid post-M&A restructuring that might harm the combined entity’s competitive position.
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