The patent portfolio is one of the most important assets of a technology company, such as biotechnology, chemical, pharmaceutical and cosmetic companies.   The strength of the portfolio is most often the key concern for potential investors or partners.   Having a strong, well maintained patent portfolio will greatly enhance a technology company’s ability to attract investment or partners into the company.   Any weaknesses in the portfolio (such as problematic prior art, incorrect inventors, ownership and freedom to operate issues) can be less damaging if they are communicated by the company along with a strategy for dealing with the issue.   Being proactive, rather than reactive, will greatly facilitate the due diligence process and may increase your chances of success.

Due diligence on a patent portfolio is a certainty for a technology company.   For example, few biotechnology companies can bring a product to market without receiving venture capital and/or partnering with a larger company.   Any potential investor or partner will critically evaluate the patent portfolio of a biotechnology company before deciding whether or not to invest in, or partner with, the company.   While the due diligence process is rarely pleasant and is often costly, it should not uncover any surprises if you are prepared and have your patent portfolio ready for due diligence.   Townsend & Banta assesses the strength of the patents and applications in our client’s portfolio and evaluates whether or not there are freedom to operate issues with respect to the patent portfolio.

Further, it can be helpful to share your future research plans and proposals for new patent filings with the third party.   If there are weaknesses in the patent portfolio, there may be areas of current research that can form the basis of new filings in the future that may not have the same issues as the current portfolio.   For example, you may decide to alter the formulation to avoid freedom to operate and/or prior art issues and, at the same time, you can add new filings on the formulation to your patent portfolio.   Potential investors and partners will be happy to learn that there may be potentially stronger patent filings in the future.