1. Data Verification and a role in IP Due Diligence
CITMA Administrators Course
Roy Scott, Senior Paralegal

2. What is due diligence?
It is a term used when conducting an investigation of a business prior to signing a contract.

3. When do we conduct due diligence?
When a company is involved in:
Merger or acquisition (M/A)
Re-financing
Divestment/spin out

4. What is the purpose of due diligence?
To value the investment
To determine whether the investment is sound
To assist the buyer during negotiations

5. What is the purpose of due diligence?
Significant value in a business is represented by its intangible assets – largely goodwill in the business and IP Rights.
Businesses often change hands for far in excess of the value of the physical (i.e. tangible) assets (factories, shops, stock etc). The difference in price between the value of tangible assets and the price paid is the value of the intangible assets.

6. What is the purpose of due diligence?
Sometimes this amounts to £millions.
The company paying the money needs to know what they are getting in the way of IP rights.

7. What will due diligence find?
Assets owned or licensed
Chain of title
Assignment restrictions
Litigation
Infringements
The status of the IPR
Gaps in protection of the IPR

8. Due diligence - Who?
Due diligence is usually carried out by solicitors
Patent and Trade Mark Attorneys support the process for IP
Trade Mark Administrators may have to:
Check/prepare schedules or reports
Conduct searches

9. Due diligence – When? M&A negotiations are usually confidential
Small number of people involved
You may only be informed right at the last moment
Means the work may have to be done urgently

10. Due diligence – Role of TM Attorney
A trade mark attorney may also be advising on:
Gaps in portfolio (unregistered TMs)
Vulnerable registrations
Terms of licences: in-bound and out-bound
On-going opposition proceedings
Other disputes

11. Due diligence – Role of TM Administrator
For a TM Administrator, it’s all about CHECKING the information of the trade mark and ascertaining:
Status
Ownership (including past changes)
Recorded licences, charges, security interests liens etc
Usually you’re working for the purchaser, which means you may be cross- checking information provided by the vendor.
Sometimes you are looking at a ‘target’ and you may be conducting searches.

12. Due diligence – Role of TM Administrator
Status:
checking a trade mark application/registration is still in force and has not lapsed or become abandoned
Ownership:
Is the trade mark application/registration owned by the vendor?

13. Due diligence – Role of TM Administrator
Other details:
Are there charges or security interests recorded?
These usually prevent assignment without permission
This information is checked against each application/registration

14. Due diligence – Checking process
Your work may well involve some or all of:
Checking information published on:
The UK-IPO database
The EUIPO database
The WIPO database
Commercial databases
Instructing overseas agents to check the details at their respective Offices

15. Due diligence – Reporting
Providing a report of discrepancies
Providing a list of actions required to correct problems

16. Due diligence – Working example

17. Thank you for listening
Any questions?
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