The VC’s playbook: Diligence essentials for technology-based IP

POSTED BY ipCG Team AT 12:38 P.M. March 24, 2017

Summary

VC investments can improve monetization options and mitigate risk when diligence considers IP assets from a holistic business perspective, beyond the traditional legal opinions.

When doing venture-stage diligence on a candidate’s IP rights, fundamental business questions should include:

• What is the intrinsic value of current and in-process IP?
• Does this IP provide an advantage in disrupting large market(s)?
• How and when can we realize the value given the current and projected environment?
• How do we balance investment in IP versus product development or marketing?

Yes, legal diligence should also inform investment decisions, with tests like ownership, pending third-party demands, assertion entity risk, and freedom-to-operate. But those legal opinions don’t answer the above questions.

The following steps of IP diligence go beyond the legal checkboxes to inform economic decision-making:

• Strategy: What are the business issues and is there a basic IP strategy that addresses these opportunities and threats?
• Assets: What is the inventory of technical IP, including patents, trade secrets, software?
• Alignment: How do the existing assets align with strategy, particularly the current and future products?
• Landscape: How are the assets positioned relative to others?
• Optionality: Could the IP extend to applications beyond the core business?

Across most VC-intensive sectors, candidate investments require higher quality and more focused IP rights to improve the likelihood of returns. With this broader, business-oriented perspective of IP diligence, investors can mitigate and/or diversify their risk. In addition, post-investment, they will have a stronger base of IP rights from which to capture opportunities.