Keeping the Momentum in M&A
Acquisition of a patent portfolio, whether in isolation or as part of a larger M&A deal, is a fast paced and high stakes endeavor. Counterparties on both sides are often under intense deadline pressure and are therefore anxious to close the deal. Any slowdown risks complicating,or even killing, the opportunity.
At the same time, comprehensive due diligence of the portfolio—including infringement, validity, subject matter eligibility, file history, and market—is required. In today’s environment where the existential risk of post-grant challenges such as inter partes review (IPR) looms large, killer prior art can render assets worthless. The sooner these issues can be understood, the sooner the deal team can decide whether to continue investing valuable time and resources into the deal.
For their most important deals, clients turn to Kevin Rieffel of Haley Guiliano LLP, an IP litigation, prosecution, and transactional lawyer with over a dozen years of experience. In one recent example, Kevin represented a large publicly traded client that was interested in acquiring a mid-sized portfolio before the end of the quarter. The client’s goals were ambitious, and their deadline was firm, but Kevin—armed with NLPatent’s advanced AI-powered search platform—was prepared to meet this challenge.
Long Turnaround and Lack of Flexibility Kills Momentum
The old workflow for M&A due diligence often included commissioning a prior art search firm to generate reports for several key assets. Using an outside search firm is less expensive than the time of a senior attorney, and can free up counsel to focus on other aspects of diligence, but the usual 7–14-day wait for the firm’s search results can kill momentum—particularly when those results must still be deciphered by the attorney so that the prior art story may be delivered to the client with confidence.
Moreover, much can change in an IP deal while the team awaits the search firm’s results. Emerging details and evolving deal structure may require re-prioritization of assets at a moment’s notice, making flexibility paramount. However, asking a third-party search firm, often operating in a different time zone, to change gears mid-search could incur additional expenses or restart the delivery clock. This is in direct tension with the M&A team’s desire to maintain control and confidence over all aspects of the due diligence process—including the timeline.
NLPatent Provides Confidence, Flexibility and Control
Given the importance and tight timeline of this recent transaction, Kevin turned to NLPatent, which provided him complete control over patent searches, streamlining the due diligence process. The quick validity diligence enabled by NLPatent’s AI-powered platform saved Kevin, and his client, valuable time and allowed the client to submit an offer on their targeted portfolio with time to spare.
By using natural language searching in NLPatent, Kevin sees the most pertinent references surface at once. As he reviews the results, he refines and revises his search instantly and repeatedly until he has a firm grasp on the state of the art. NLPatent’s interface provides direct access to full patent specifications and figures, which can be easily annotated and highlighted. Exporting those notes for the most relevant prior art results, Kevin can interpret and present a prior art landscape for key assets in a matter of hours, not weeks.
By diving into the prior art earlier, Kevin and his team no longer must spend days waiting and double-checking work performed by a third party. Potential hurdles for validity can be detected early and handled efficiently. Kevin uses the revision and filter tools of NLPatent to improve the search results until he is comfortable that he found the most relevant art for each key asset. More importantly, Kevin can apply the M&A team’s latest developments to filter and focus the search results on key limitations in each claim.
"Using NLPatent allows transactional attorneys to have full command over the timing and quality of a patent search, in order to keep IP due diligence swiftly moving in the right direction."
Attorneys do not typically share technical analysis, potential infringement reads, or file history interpretations with search firms. Armed with such information, counsel can conduct a better search than merely using keywords and classifications. NLPatent transforms the old, limited way of patent searching into a powerful, on-demand analysis tool that elevates the M&A team’s discussions of asset value and deal strategy.
John Holley | Principal, McKool Smith
How a D.C. litigator used NLPatent to Uncover Key Prior Art at the 11th Hour
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