IP Due Diligence Attorney — Austin, Texas
Comprehensive review and analysis of intellectual property assets before an investment, acquisition, or merger — giving investors and acquirers a clear, accurate picture of the IP they are evaluating, including claim scope and strength, ownership chain integrity, FTO risks, and portfolio gaps.
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What Is IP Due Diligence?
IP due diligence is a comprehensive review and analysis of a company's intellectual property assets conducted in connection with an investment acquisition or merger. The goal is to give the investor or acquirer a complete and accurate understanding of the IP assets being acquired — their strength scope enforceability ownership status and potential risks — before the transaction closes.
IP due diligence is distinct from general business due diligence because it requires both legal expertise in patent law and genuine technical understanding of the underlying technology. A purely legal review of patent documents can identify formal deficiencies but may miss substantive issues with claim scope validity or ownership that only become apparent to someone who understands the technology at an engineering level.
What IP Due Diligence Covers
A comprehensive IP due diligence review covers patent portfolio assessment including claim scope analysis prosecution history review for potential estoppel issues and evaluation of pending application strength. Ownership verification confirms that all IP is properly assigned to the target company — gaps in assignment chains are one of the most common and damaging IP issues found in due diligence. Freedom to operate assessment identifies whether the target company's products are at risk from third-party patents.
The review also covers trade secret identification and protection assessment confirming that appropriate confidentiality agreements and security measures are in place. Trademark and copyright portfolio review assesses the breadth and validity of brand and creative assets. And licensing agreement review identifies third-party IP rights that affect what the acquirer can do with the acquired IP portfolio.
My Engineering Background in Due Diligence
For transactions involving technically complex IP portfolios in semiconductor software optics and medical device fields the depth of technical analysis I bring is a significant advantage. I can assess claim scope at an engineering level — understanding not just what the claims say legally but what they actually protect technically and how strong they are in the context of the real prior art landscape in the relevant technology field.
This technical depth matters most in assessing the most important patents in a portfolio — the core technology patents that are central to the target company's competitive position. A technically accurate assessment of these patents provides a dramatically more reliable picture of IP value than purely legal review of the same documents.
Common IP Issues Found in Due Diligence
The most common IP issues I find in due diligence include incomplete IP assignment from founders employees and contractors to the company entity leaving unclear ownership of key patents and trade secrets. Prosecution history estoppel limiting the effective scope of issued patents beyond what the face of the claims suggests. Prior art that was not considered during prosecution and that creates invalidity risk for key patents. Freedom to operate issues where the company's products potentially infringe third-party patents that were not identified or cleared.
Each of these issues affects transaction value and structure. Identifying them before closing allows the parties to address them through price adjustment representations and warranties or pre-closing remediation — rather than discovering them after the transaction when options are much more limited.
Due Diligence for Austin Startup Investments
Austin's active venture capital community funds technically sophisticated startups across semiconductor software AI and medical device fields where IP is often the primary value driver. For VC firms and angel investors evaluating Austin tech startups a focused IP due diligence review is an essential part of investment evaluation — particularly for seed and Series A investments where the IP portfolio is often the most valuable asset.
I provide IP due diligence services calibrated to startup investment contexts — focused on the core technology patents and ownership chain with efficient turnaround times that work within typical investment timelines. For early-stage investments I can provide a streamlined focused review that identifies the most significant IP risks without the full-scale analysis appropriate for larger acquisitions.
Pre-Transaction IP Remediation
One of the most valuable aspects of IP due diligence is identifying issues early enough to remediate them before they affect transaction value or close timing. Common pre-transaction remediations include executing retroactive IP assignment agreements to cure gaps in the ownership chain filing additional patent applications to strengthen thin portfolios in key technology areas clearing identified freedom to operate risks through design changes or licensing and implementing trade secret protection measures.
I advise clients on pre-transaction IP strengthening both for companies preparing for fundraising or acquisition and for investors identifying target companies with promising technology but remediable IP issues. A company that proactively strengthens its IP position before going to market consistently achieves better transaction terms than one that lets IP issues surface in buyer due diligence.
[ IP Due Diligence FAQs — Austin, Texas ]
Question: What happens if IP due diligence finds problems?
Answer: Identified issues are addressed through transaction price adjustment representations and warranties holdback escrow arrangements or pre-closing remediation depending on the severity and type of issue. Identifying issues before closing gives both parties options — discovering them after closing is significantly more problematic.
Question: Do I need IP due diligence for a small startup acquisition?
Answer: Yes — for technology companies where IP is a primary value driver IP due diligence is important regardless of company size. A focused streamlined review appropriate for startup acquisitions can be completed efficiently and cost-effectively while still identifying the issues that matter most.
Question: What is the IP due diligence process for an Austin startup receiving its first institutional investment?
Answer: Institutional investors at Series A and beyond conduct IP due diligence as a standard component of investment evaluation — and the scope of that diligence has increased significantly as Austin's venture community has matured and deal sizes have grown. Typical Series A IP diligence for an Austin technology startup includes: review of all patent applications and issued patents for claim scope adequacy and prosecution status; verification of IP assignment chains from all founders and early employees to the company entity; review of all IP agreements for provisions that limit the company's freedom to commercialize its technology; assessment of FTO risks for the company's core products; and review of the company's trade secret protection practices. Diligence deficiencies discovered during this process — gaps in assignment chains, missing PIIA agreements, thin provisional applications — create closing risk that is far more difficult and expensive to resolve under investor scrutiny than if addressed proactively before the diligence process begins. I advise Austin startups to conduct pre-fundraising IP readiness assessments at least 60 to 90 days before anticipated investor diligence begins.
Question: What is a clean room analysis in IP due diligence and when is it needed?
Answer: A clean room analysis is a specific diligence investigation assessing whether a company's technology was developed independently without contamination from third-party IP — specifically without improper use of competitors' trade secrets, misappropriation of licensed software, or development by engineers who brought confidential information from prior employers. Clean room concerns arise most acutely when key engineers came from competitors with overlapping technology, when the company's technology development was suspiciously fast, when the company's technical approach closely mirrors a known competitor's proprietary implementation, or when departed employees of a competitor founded the company. A clean room analysis involves reviewing the company's development history, the backgrounds of key technical contributors, any prior employer IP agreements those contributors were subject to, and the technical correspondence between the company's approach and known competitor implementations. This analysis is most commonly needed in semiconductor, software, and pharmaceutical contexts where trade secret misappropriation by departing engineers is a known competitive risk.
Question: What is a government contractor IP rights analysis and why is it critical for Austin defense technology companies?
Answer: Austin's growing defense technology sector — including companies working with DARPA, DoD, DHS, and the Army's Austin presence — creates specific IP due diligence considerations under the government contractor IP framework. When a company has received federal research funding or performed government contracts, the government may hold certain rights in the company's IP under the Bayh-Dole Act, the Federal Acquisition Regulations, or specific contract provisions — rights that can significantly affect the company's ability to commercialize exclusively and its attractiveness to private investors or acquirers who need clean commercial IP ownership. A government contractor IP analysis specifically reviews all government contracts, grants, and cooperative research agreements for IP rights provisions; identifies which company IP was developed under government funding; assesses what government rights were retained and whether they have been properly managed; and evaluates whether any IP the company plans to commercialize is subject to government rights that would complicate exclusivity claims. For Austin companies in the defense technology space preparing for private investment or acquisition, this analysis is essential due diligence preparation.
Question: What is a license compliance audit in IP due diligence and what does it cover?
Answer: A license compliance audit reviews all inbound IP licenses — software licenses, technology licenses, patent licenses, and open source licenses — to assess whether the company is complying with the terms of those licenses and whether any compliance failures create liability that would affect an investor or acquirer. Key areas of license compliance review include: open source software use and compliance with copyleft license terms that might require releasing proprietary code; commercial software license seat counts and usage restrictions that might be exceeded; patent license field of use restrictions that might be violated by the company's current commercial activities; technology license performance milestones that might trigger adverse license consequences; and geographic restrictions in licensed technology that might affect the company's international commercial activities. License compliance failures discovered during investor or acquisition due diligence can create unexpected financial liabilities and restrict commercial activities in ways that affect the transaction's value thesis. Pre-transaction license compliance audits allow companies to identify and address compliance issues before they become diligence findings.
Question: How do you handle IP due diligence for an Austin startup that has significant trade secrets but limited patent protection?
Answer: Trade-secret-dependent startups present specific IP diligence challenges because trade secrets cannot be evaluated through the public record in the way that patents can — assessing their existence, their scope, and their adequacy of protection requires investigation into the company's internal practices rather than review of government filings. Trade secret due diligence for this type of company focuses on: documenting specifically what trade secrets exist and what commercial value they represent; assessing the reasonable measures the company has taken to maintain secrecy — NDA programs, access controls, employee training, physical security; evaluating the risk that key trade secrets have already been compromised through employee departures, vendor relationships, or customer access; and assessing the risk that the trade secrets can be reverse-engineered from the company's commercial products. The fundamental limitation of trade-secret-dependent IP positions is that they provide no protection against independent development — a risk that investors and acquirers assess specifically when evaluating whether a trade-secret-dependent business model can sustain long-term competitive advantage.
Answer: Acquiring patents from a bankrupt company through a bankruptcy sale presents specific diligence challenges because the normal representations and warranties that accompany patent transfers in commercial transactions are typically unavailable from a bankruptcy estate. The bankruptcy trustee sells assets as-is, without the seller representations about ownership completeness, validity, freedom from encumbrances, and non-infringement that normal patent purchase agreements include. Due diligence for a bankruptcy patent acquisition must therefore be substantially more comprehensive than for a commercial transaction: verifying chain of title through independent research rather than relying on seller representations; searching for security interests, licenses, and other encumbrances recorded against the patents; reviewing the bankrupt company's IP agreements for provisions that survive bankruptcy including perpetual licenses and covenant-not-to-sue obligations; and assessing whether the specific patents of interest were involved in pending litigation or license disputes that the bankruptcy sale does not resolve. I advise acquirers specifically on the additional diligence scope required for bankruptcy patent acquisitions.
Question: What is the IP diligence process for acquiring patents from a company in bankruptcy?
Question: What triggers an IP due diligence obligation in a business transaction?
Answer: IP due diligence is triggered whenever intellectual property is a material component of the value being transferred in a transaction — which includes virtually every acquisition of a technology company, most venture capital investments in IP-dependent startups, significant patent licensing transactions, joint venture formations involving proprietary technology, and asset purchases where IP assets are among the most significant assets being acquired. The depth of due diligence is calibrated to the transaction size, the proportion of total value represented by IP, and the specific risk profile of the IP involved. Even small transactions involving IP-intensive companies warrant at least a focused due diligence review of the core IP assets.
Question: What is an IP assignment chain and why do gaps in it matter in due diligence?
Answer: An IP assignment chain is the series of documented transfers of ownership from the original inventor or creator to the current claimed owner. For a patent to be enforceable by the party claiming to own it, that party must hold a complete, unbroken chain of title from each named inventor. Gaps in the assignment chain arise when a named inventor did not sign an assignment agreement, when early contractor or consultant work was performed without a proper IP assignment, when an inventor's employment agreement did not cover the relevant inventions, or when acquisitions were completed without proper IP assignment documentation. A gap in the assignment chain means the claiming party may not legally own the patent — which in an acquisition means the acquirer may not receive clear title to the IP they are paying for.
Question: What is IP indemnification in a transaction and how does it protect the buyer?
Answer: IP indemnification in an acquisition transaction is a contractual commitment by the seller to defend and compensate the buyer against claims that the acquired IP or products infringe third-party intellectual property rights. The IP indemnification provisions in acquisition agreements typically cover the period of the seller's operation of the business and specify the procedures for making indemnification claims, the time limits within which claims must be made, and the financial caps on indemnification liability. For acquisitions of companies in competitive technology markets, the scope and cap of IP indemnification is one of the most heavily negotiated aspects of the transaction — particularly when FTO analysis has identified potentially relevant third-party patents.
Answer: A materiality threshold in IP due diligence sets a minimum level of significance required for a specific IP asset or risk to warrant detailed analysis — allowing the due diligence team to focus resources on the most significant IP issues rather than reviewing every minor IP matter in equal depth. Typical materiality thresholds might include patents above a certain remaining term, patent families in technology areas directly relevant to the target company's core products, IP agreements with financial terms above a specified threshold, or IP-related claims or disputes above a specified dollar amount. Setting appropriate materiality thresholds requires experienced judgment about where the most significant IP risks and values are concentrated in the specific transaction — and a willingness to revise the thresholds if preliminary review reveals unexpected concentration of significant IP outside the initially defined material scope.
Question: What is a materiality threshold in IP due diligence and how does it affect the scope of review?
Question: What is an IP representation and warranty and what happens if it turns out to be inaccurate?
Answer: An IP representation and warranty is a contractual statement in an acquisition agreement in which the seller asserts specific facts about the IP assets being transferred — for example, that the company owns the IP listed in the IP schedule, that the IP is free from liens and encumbrances, that the company's products do not infringe third-party patents to the seller's knowledge, and that there are no pending or threatened IP claims. If an IP representation proves to be inaccurate after closing — a patent that the seller represented as owned turns out to have a gap in the assignment chain, or an infringement claim arises that contradicts the non-infringement representation — the buyer may have a claim for indemnification from the seller under the indemnification provisions of the purchase agreement. The availability and amount of indemnification depends on the specific transaction documents, including survival periods, indemnification caps, and basket provisions.
Question: What are typical IP issues found in technology company due diligence?
Answer: The most common IP issues I discover in technology company due diligence include: incomplete IP assignment from founders, early employees, and contractors — leaving ownership questions unresolved for core technology; open source license compliance issues — copyleft licensed code incorporated into proprietary products without proper compliance; prior art vulnerability in key patents — issued patents with claims narrowed by prior art not considered during prosecution; pending legal disputes or threatened claims not disclosed in the data room; licenses-in with unfavorable terms that encumber the acquirer's use of the technology; IP ownership provisions in customer contracts that assigned product customizations to customers; government IP rights from federal funding under the Bayh-Dole Act; and non-compete agreements with departed founders or key employees that affect the business operations.
Question: How does due diligence for a patent licensing acquisition differ from a company acquisition?
Answer: Due diligence for acquiring specific patents or patent portfolios for licensing purposes focuses primarily on the quality and enforceability of the patent claims — their scope, their prosecution history estoppel, their vulnerability to invalidity challenge, and their actual coverage of practicing implementations in the relevant market. Company acquisition due diligence is broader, covering the full spectrum of IP assets including trade secrets, trademarks, copyrights, and the IP provisions in all commercial contracts in addition to the patent portfolio. Patent licensing acquisition due diligence also involves more detailed analysis of claim charts against specific products in the target market — because the purpose of the acquisition is active licensing, the claims' actual applicability to real products is the central questions.
Question: What is a pre-closing IP remediation and how does it benefit the seller?
Answer: Pre-closing IP remediation involves identifying and addressing IP issues discovered during due diligence before the transaction closes — rather than leaving them as post-closing indemnification obligations. For sellers, remediating IP issues pre-closing is generally advantageous because it reduces the seller's post-closing indemnification exposure, eliminates potential grounds for the buyer to renegotiate price or terminate the transaction, and demonstrates good faith by proactively addressing identified issues rather than waiting for the buyer to discover them. Common pre-closing remediations include executing retroactive IP assignment agreements with former employees and contractors, filing new patent applications to strengthen thin portfolio areas, implementing open source compliance remediation, and obtaining licenses for identified third-party IP infringement risks. I advise both sellers and buyers on pre-closing IP remediation strategy.
Question: What is a technology escrow and how does it relate to IP due diligence?
Answer: A technology escrow is an arrangement in which a copy of the source code, technical documentation, and other critical technical materials for a software product or technology are deposited with a neutral third-party escrow agent — with release conditions triggered by specific events such as the licensor's insolvency or failure to maintain the technology. Technology escrows are relevant to IP due diligence in two ways: as a due diligence item for acquirers of companies that have granted technology escrow arrangements to their customers — which can create post-closing obligations to maintain escrow deposits and release conditions — and as a due diligence item for acquirers of companies that depend on licensed technology from third parties where escrow arrangements provide business continuity protection if the licensor fails.
Question: How does IP due diligence handle trade secrets that cannot be disclosed without destroying their value?
Answer: Trade secret due diligence presents a specific disclosure paradox — the buyer needs enough information to assess the trade secrets' value and protectability, but disclosing the specific content of trade secrets in due diligence risks their confidential status. This tension is typically managed through layered disclosure — providing more general information about the categories and commercial significance of trade secrets to all diligence team members, with more detailed technical disclosure limited to a small subset of technical diligence reviewers under enhanced confidentiality protocols. The due diligence process for trade secrets also focuses heavily on the adequacy of the seller's protection practices — the NDA programs, access control policies, and security measures that establish reasonable secrecy measures — rather than the specific content of the trade secrets themselves.
Question: What should I do if IP due diligence reveals that a key patent is vulnerable to invalidity?
Answer: Discovering that a key patent is vulnerable to invalidity during due diligence requires a specific strategic response that depends on the patent's commercial significance and the nature of the vulnerability. Options include reducing the purchase price to account for the increased IP risk, requiring the seller to pursue claim amendments through reissue or reexamination to address the identified vulnerabilities before closing, obtaining enhanced representations and warranties or indemnification specifically covering the identified risk, requiring an IP escrow or holdback amount against potential invalidity losses, or in some cases reconsidering whether to proceed with the transaction if the invalid patent represents a disproportionate share of the acquisition value. The right response depends on how central the vulnerable patent is to the acquisition thesis and how severe the invalidity risk appears to be.
Question: What is a patent claim mapping exercise in IP due diligence and how is it conducted?
Answer: Patent claim mapping in IP due diligence is the process of comparing the target company's core patent claims to its actual commercial products and processes — confirming that the patents cover what the company claims they cover and identifying any gaps between the patent portfolio's stated purpose and its actual coverage. Claim mapping is conducted by creating structured charts that map each independent claim element to the corresponding feature in the product or process the patent is supposed to protect. Gaps emerge when claim language — whether through prosecution amendments, examiner-imposed limitations, or overly narrow original drafting — fails to actually cover the product the company makes and sells. For acquirers who are paying for IP assets that protect specific commercial positions, discovering that the core patents do not actually cover the commercial products due to claim mapping failures is a material diligence finding that directly affects the transaction's IP value thesis.
Question: What is an open source software audit in IP due diligence?
Answer: An open source software audit — also called an open source license compliance review — examines the target company's software products and development practices to identify all open source components incorporated in the product, the license governing each open source component, and whether the company's use of each component complies with its license terms. The audit is particularly concerned with identifying copyleft-licensed components — governed by GPL, LGPL, AGPL, or similar licenses — that could require the company's proprietary code to be released under the same open source license. For software company acquisitions, open source compliance failures can be material diligence findings affecting the acquirer's ability to maintain the target's proprietary software as a competitive asset. I coordinate open source audits as a component of comprehensive software company IP due diligence — identifying compliance risks and advising on remediation strategies.
Question: What is the significance of a target company's IP insurance in due diligence?
Answer: IP insurance — including both defensive coverage protecting against infringement claims and offensive coverage funding enforcement of the company's own patents — is an emerging but increasingly relevant component of technology company IP due diligence. A target company that holds IP insurance policies can provide the acquirer with additional protection against post-closing IP claims that the representations and warranties in the transaction do not fully cover. For acquirers in competitive IP litigation environments — particularly in semiconductor, software, and medical device markets — the target's IP insurance coverage is a meaningful diligence item. The specific coverage provided — what claims are covered, what deductibles apply, what policy limits are in force, and whether coverage extends to post-closing claims — determines the insurance's practical value in the acquisition context. I assess IP insurance policy terms as part of comprehensive IP due diligence for technology company acquisitions.
Question: How does IP due diligence evaluate a target company's patent prosecution quality?
Answer: Evaluating prosecution quality in IP due diligence requires more than counting patents — it requires assessing whether the prosecution process produced patents with the broad, defensible claims that provide genuine competitive protection versus patents with claim scope so narrow that competitors can easily design around them. Quality indicators I assess in prosecution review include: the breadth of independent claims relative to the prior art found during prosecution; the amount of claim narrowing that occurred during prosecution and whether that narrowing was necessary or reflects overly conservative prosecution; the quality of the prior art searches conducted before drafting; whether continuation applications were filed to pursue additional claim coverage; and the consistency of prosecution arguments with the portfolio's long-term scope preservation. Prosecution quality assessment requires reviewing the complete file wrapper of key patents — not just the issued claims — and exercising technical judgment about what claim scope was achievable versus what was actually obtained.
Question: What is a third-party IP risk analysis in acquisition due diligence?
Answer: Third-party IP risk analysis assesses the target company's exposure to infringement claims from patent holders outside the transaction — risk that would become the acquirer's problem after closing. This analysis differs from internal IP due diligence on the target's own portfolio — instead of assessing what the target owns, it assesses what the target might owe. Third-party IP risk analysis involves identifying the major patent holders in the target's technology space, reviewing the target's history of patent assertions or demands received, assessing whether the target has conducted FTO analysis for its key products, and evaluating the competitive patent landscape for patents that might be asserted post-closing. For acquisitions in densely patented technology areas — semiconductor, wireless communications, standard-essential patent spaces — third-party IP risk can be a material acquisition risk that requires specific indemnification, escrow, or purchase price adjustment provisions.
Question: What is a copyright due diligence review and what does it cover?
Answer: Copyright due diligence in a technology company acquisition covers the target's ownership and protection of copyrightable works — primarily software code, technical documentation, and other creative works with commercial value. Key areas of copyright due diligence include: confirming that all significant software was created by employees or contractors who assigned copyright to the company through work-for-hire arrangements or explicit IP assignment agreements; identifying whether any software incorporates third-party copyrighted content — both licensed commercial software and open source components — and confirming compliance with the applicable license terms; assessing whether the company has registered its most commercially significant software copyrights with the Copyright Office; reviewing any copyright infringement claims received or asserted; and confirming that website content, marketing materials, and documentation are either owned by the company or properly licensed from content providers. Copyright due diligence is often abbreviated in technology acquisitions but can reveal significant issues — particularly open source compliance problems and software ownership gaps.
Question: What is a freedom to operate assessment in IP due diligence and why might it affect the purchase price?
Answer: FTO assessment in IP due diligence evaluates whether the target company's commercial products can be practiced without infringing valid, enforceable patents held by third parties — risk that would transfer to the acquirer after closing. Significant FTO risks discovered in diligence can affect the transaction in multiple ways: price adjustment to account for the expected cost of resolving identified infringement risks through licensing or design-around; deal structure modification to include specific indemnification from the seller for pre-identified FTO risks; pre-closing conditions requiring the seller to resolve identified FTO issues before the transaction closes; and in extreme cases, reconsideration of whether to proceed with the transaction if the FTO risks are too significant relative to the acquisition rationale. For Austin technology company acquisitions in competitive patent environments, FTO assessment is one of the most commercially important components of IP due diligence — the discovery of a significant blocking patent post-closing is a major and largely avoidable risk.
Question: What is a domain name and social media IP review in due diligence?
Answer: Domain name and social media account review in IP due diligence assesses the target company's ownership and security of its digital brand assets — the domain names, social media handles, and online identifiers that are essential to its commercial brand presence. Key diligence items include: confirming that the target company owns the domain names associated with its brand — including variations and common typosquatting domains; verifying that domain registrations are current and not at risk of expiring; confirming that social media accounts on key platforms are owned by the company entity rather than individual employees who might retain control post-acquisition; assessing whether domain or social media squatters hold similar identifiers that could be confused with the target's brand; and reviewing any domain or trademark infringement disputes involving the target's digital brand assets. In technology company acquisitions where the brand and digital presence are commercially significant, domain and social media IP review is an important but sometimes overlooked component of comprehensive IP due diligence.
Question: What is an IP due diligence timeline and how does it fit into a typical M&A process?
Answer: IP due diligence timing in an M&A process depends on the transaction size, IP portfolio complexity, and the overall deal timeline. In a typical process, IP due diligence begins after the letter of intent is signed and the data room is opened — typically running concurrently with financial, legal, and business due diligence. A focused IP due diligence review for a seed or Series A stage startup can be completed in one to two weeks when the data room is complete and responsive. Comprehensive IP due diligence for a growth-stage company with a substantial patent portfolio may require four to eight weeks. For strategic acquisitions where IP is the primary value driver, the IP due diligence team may be the largest component of the overall due diligence effort with commensurately longer timelines. I plan IP due diligence timelines based on the specific portfolio complexity and deal timeline — communicating regularly with the deal team about progress and any significant findings that require early attention.
Question: What is an IP due diligence questionnaire and what should I provide to the buyer's diligence team?
Answer: An IP due diligence questionnaire is the document the buyer's diligence team uses to systematically request information and documents about the target's IP assets, IP agreements, IP disputes, and IP practices. Standard IP due diligence questionnaire requests typically include: a complete schedule of all patents, patent applications, trademark registrations, copyright registrations, and domain names; copies of all IP assignment agreements, employment IP agreements, and contractor IP agreements; copies of all IP licenses — both licenses-in and licenses-out; documentation of all IP disputes, demands, assertions, and litigation; FTO analysis reports previously prepared; inventor notebooks and invention disclosure documentation; chain of title documentation for key IP assets; documentation of government funding and any Bayh-Dole obligations; and open source software usage and compliance documentation. I help Austin startup and technology company clients prepare for IP due diligence by organizing this documentation proactively — ensuring that responses to diligence questionnaires are comprehensive, accurate, and presented in a way that supports rather than undermines the transaction's IP value thesis.
[ Related Services ]
Clients conducting IP due diligence often also work with me on:
[Patent Validity & Invalidity Opinions] · [Freedom To Operate Opinions] · [Patent Valuation] · [IP Assignment Agreements] · [IP Agreements & Contracts]
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IP Due Diligence Services
For technology companies where intellectual property is a primary value driver, thorough IP due diligence before an investment or acquisition is not optional — it is essential for understanding what you are actually buying.
I offer a free 30-minute consultation to discuss the transaction context, scope, and timeline, and to assess what a comprehensive IP due diligence review would involve for the specific portfolio and technology areas in question.
My engineering background makes IP due diligence in semiconductor, software, optics, and medical device technology areas significantly more accurate than purely legal portfolio review — I can assess claim scope and prior art risk at an engineering level rather than simply reviewing patent documents for formal completeness.
Serving investors, acquirers, and companies preparing for transactions across Austin and Central Texas. Call or text (512) 293-0710, email sconnolly@austin-patent-attorney.com, or fill out the form.
Phone: 512-293-0710
Email: sconnolly@austin-patent-attorney.com
Location: Austin, Texas
Serving Austin, Round Rock, Cedar Park, Georgetown, and all of Central Texas.
USPTO matters are federal — I work with clients throughout Texas and nationwide.