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Structured due diligence tailored to your needs

Deep expertise across a wide range of technologies and industries

Due diligence of intellectual property relevant to a product or service can be helpful in a variety of circumstances. For example, when you are facing a dispute, investigating your freedom to operate, licensing-in technology, or buying, selling or investing in a company.

We can undertake comprehensive due diligence on the relevant IP portfolio and/or prior art, tailoring our service to your needs and budget. Our advice will identify, assess and weigh the risks and provide you with the clarity you need to make a decision with confidence in dealing with the intellectual property in question.

Specialists

for the result you need

Photo: James Cleeve

James Cleeve

Partner Chartered (UK) and European Patent Attorney
James has extensive experience handling patents in a very wide range of technologies, especially for electronics, mechanical and electro-mechanical inventions.
Photo: Alain Collet

Alain Collet

Partner European Patent Attorney, Industrial Property Attorney (FR)
Alain started his career as a research and development engineer and later became a production engineer in industry.
He has been working in IP since 1996, first within the Thales Group and later with Marks & Clerk France.

Jonathan Colombo

Partner Canadian Trademark Agent, Barrister and Solicitor
Jonathan Colombo is the Managing Partner of Marks & Clerk Canada, and Head of the firm’s Trademarks practice group.

Kirsten Gilbert

Partner Solicitor (UK)
Kirsten is a Partner and an intellectual property lawyer at Marks & Clerk Law who specialises in litigation, alternative dispute resolution and brand strategy. Kirsten advises in a broad range of sectors including food & drink, financial services, pharmaceuticals, fashion and creative industries.

Legal and technical expertise

A thorough understanding of an IP portfolio, whether it comprises patents, trade marks, designs, copyrights and/or confidential information, can require both legal and technical expertise. At Marks & Clerk, we have a large team of patent attorneys, trade mark attorneys and specialist intellectual property focused lawyers that considers intellectual property in the round, from protection, to commercialisation and to enforcement. Our team of lawyers and attorneys have deep expertise across a wide range of technologies and industries. This depth of expertise across the full spectrum of intellectual property enables us to put together a team best suited for your due diligence project.

We work alongside corporate law firms, in-house legal teams, accountants, investment banks, private equity houses and venture capitalists.

Structured approach

We take a coherent and structured approach to searches, reports and opinions, systematically identifying and tracking any issues.

Our analytical patent landscaping tools:

  • evaluate a company's potential
  • assess the strength of its IP portfolio
  • benchmark it against major competitors’ portfolios
  • identify threats that could undermine a company's value.

Bespoke service

We tailor our work to your needs. For example, in the case of a sale or acquisition, we carry out due diligence for everything from small investments to multi-million pound deals. Our approach is tailored to:

  • the size and nature of the sale/acquisition
  • your needs and expectations
  • your approach to risk
  • time constraints.

As a seller, our due diligence advice puts you in a position to maximise the value of your IP portfolio. As a buyer or investor, we will identify the strengths and weaknesses in the intellectual property portfolio.

Services

Our due diligence service has a wide range of applications, and includes:

  • investigating and reporting on intellectual property portfolios, ownership, infringement and validity of rights
  • investigating potential disputes involving intellectual property, e.g. between co-owners or as part of a licensing arrangement or other IP transaction
  • reports required for stock exchange listings
  • patent clearances and freedom to operate opinions
  • advising on the wording of warranties and disclosures
  • trade mark searches and reports on brand strength
  • assessing onerous clauses and potential exposure in commercial contracts
  • valuation of IP assets.

Latest Insights

Insight
- 19 July 2021

Fiberweb v Geofabrics [2021] EWCA Civ 854

The UK Court of Appeal dismissed an appeal by Fiberweb against a finding of Mr David Stone (sitting as a Deputy High Court Judge) that Geofabric’s patent relating to trackbed liners for railways was valid and infringed.
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Insight
- 19 July 2021

Promptu v Sky: The Q box and talking into the void

In a case reminiscent of the series of Rovi v Virgin Media cases , the Sky Q box has just avoided a patent infringement claim. In Promptu v Sky , patent infringement was alleged against the Q box voice command feature which, inter alia, raised a point about the territoriality of infringement in the modern interconnected world.
Read more
Insight
- 13 April 2021

Intellectual property and the future of multi-experience commerce

Technologies which were yesterday at the forefront of innovation and novelty are now commonplace and consumer facing businesses which fail to incorporate them are often left behind. However, the global pandemic has largely reset the playing field by accelerating digital innovation, and it is important to ensure that intellectual property rights relating to such innovation is not overlooked.
Read more

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