IP Due Diligence and Assessment

About service

In today's innovation-driven world, the strength of the company's intellectual property determines its value.

 

We conduct IP due diligence to assess the value of the involved assets (trademarks, patents, designs, copyright, etc.) by examining their business relevance, validity, ownership, and enforceability.

 

We begin the IP due diligence with establishing the client's ultimate business objectives and the role intangible assets play in achieving them. We do so by studying the competitive landscape and identifying potential threats and opportunities existing IP presents to the company's strategy.

 

We then move to an actual study of subject matter intellectual property by analyzing its scope of protection, ownership issues, the extent to which it is enforceable, and whether it is capable of conflicting with the competitors' IP.

 

Finally, we evaluate the results by assessing whether the risks and benefits uncovered are adequate to the client's business objectives. This results in final recommendations for the client on what should be done to mitigate risks and maximize potential benefits from the intellectual property under scrutiny.

 

Our expertise in this area includes the following:

 

·        Assessing the validity and enforceability of the IP

·        Evaluating the scope, geographical extent, and term of the IP rights and their relation to the company's business objectives

·        Designing the chain of title (ownership) of the IP

·        Assessment of the existence and relevance of non-registered rights

·        Assessing contracts or contractual obligations involving IP

·        Assessing the likelihood of IP-related litigation

·        Developing the IP strategy

The first-class product must have not only quantitative market share, but also its qualitative value, profitability, and brand image, all of which must rise to the world’s top level

- Lee Kun-hee

It takes 20 years to build a reputation and five minutes to ruin it. If you think about that, you'll do things differently

- Warren Buffett

Key contacts

Oleksandr Mamunya

Founding Partner

Oleksandr Mamunya is an Attorney-at-law and a Patent and Trademark Attorney. Since 2003 Oleksandr has been practicing in the area of Intellectual Property, including patents, trademarks, trade names, designs, copyright, and related rights, domain names, as well as IP enforcement, litigation and anti-counterfeiting. His experience covers litigation and out-of-court dispute resolution, including patents, trademarks, and trade names for major Ukrainian and international companies. In addition, he handles complicated trademark and patent prosecution matters and works on complex IP assignments and licensing deals, and manages big clients’ IP portfolios. Oleksandr works in close cooperation with the Ukrainian PTO and is involved in projects to improve mechanisms of intellectual property rights protection, and in elaborating and implementing IP reform in Ukraine. Oleksandr is a member and active participant of the International Association for the Protection of Intellectual Property ( AIPPI ) (since 2012), International Trademark Association ( INTA ) (since 2008) (member of the Anticounterfeiting Committee (2022-2023), the Parallel Imports Committee (2017-2021), and the leader of the Case Law Development Working Group (2021), Ukrainian Bar Association ( UBA ) (Chair of IP Committee (since 2017), National Association of Patent Attorneys of Ukraine (admitted to practice as Patent and Trademark Attorney since 2010), European Business Association (since 2012) (Сouncillor of the Agrochemical Committee and Consumer Electronics Committee), Kyiv City Bar Association (admitted to Bar since 2005). Education Ukrainian School for Political Studies, 2016 State Institute of Intellectual Property, 2009 World Intellectual Property Organization (WIPO) Academy, 2005 Taras Shevchenko National University of Kyiv, Law, 2004​

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Anastasia Mindrul

Patent and Trademark Attorney

Anastasia is a registered Patent and Trademark Attorney of Ukraine working in IP since 2004. She primarily focuses on legal strategies for protecting and enforcing IP rights, patent and trademark prosecution, pre-trial counselling, copyright enforcement, geographical indications, trade names, industrial designs, and representing clients before the Chamber of Appeals of the UA PTO. Anastasia provides a diverse range of services at every stage of the IP life cycle, from pre-filing consulting (preparatory work) to post-grant oppositions, further assignment, and licensing. Anastasia is the author of many academic articles regarding IP and is the co-author of several monographs on the protection and enforcement of IP rights. Moreover, she participated in a number of working groups to develop, improve, and enforce intellectual property legislation in Ukraine. Her recent matters: Advising one of the world fastest-growing direct selling companies on possible strategies against its key trademark infringement by the third party who attempted to register a similar mark in Ukraine for the goods related to non-medicated cosmetics and pharmaceutical preparations. The case included collection of evidence, preparing and filing an opposition against the conflicting mark. Advising a global health information technology and clinical research on available strategies for protecting against unfair competition, the case included collecting evidence, preparing and filing an opposition against the conflicting mark. Supporting a well-known US multi-level marketing (MLM) company that sells health, beauty, and homecare products in the complicated trademark prosecution matter. The project included not only drafting a reply to the Provisional refusal but negotiating with the owner of the opposing mark the terms and conditions of a possible co-existence agreement, drafting and filing the latter with the UA PTO. Assisting in the assignment of several patent applications and registrations to the global digital agricultural company, advising on the peculiarities of the applicable Ukrainian law. Education State Institute of Intellectual Property, 2005 Kyiv National Economic University named after Vadym Hetman (KNEU), Law, 2003

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Maksym Trykur

Associate

Maksym specializes in Intellectual Property advice and litigation. He also has a considerable experience in dealing with both domestic and foreign innovative businesses. Maksym has a particular focus on cybersecurity and data protection projects, as well as regularly assisting tech companies with regard to regulatory requirements, IP due diligence, and licensing. He is a recognized sector specialist, and was highlighted in the Legal 500 (2020) guide, which noted that “ Maksym Trykur is a strategic thinker, always keeping in mind the often complex and interconnected business goals of all our projects.” His recent matters include: Advising a group of logistics companies on establishing an international resource sharing platform on the blockchain. Supporting a global tech giant in ensuring compliance with cybersecurity and cloud computing regulations. Representing a leading global Internet company in IP-related and defamation disputes. Advising one of the world's leading automotive brands on issues relating to driverless technology. Advising an international geospatial intelligence company on classified information protection. Education The University of California at Berkeley School of Law (USA), 2016 Institute of Intellectual Property of the National University “Odesa Law Academy” (Kyiv), Innovation Management, 2016 Taras Shevchenko National University of Kyiv, Law, 2014

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