When Should an M&A Advisory Firm Engage an IP Law Firm?

By George Likourezos, Esq.

Partner, Intellectual Property Attorney at Carter, DeLuca & Farrell LLP

In today’s deal landscape, intellectual property (IP) is often a central component of enterprise value—especially in sectors like software, life sciences, consumer brands, and advanced manufacturing. Yet, many M&A advisory firms delay or overlook the need for dedicated IP legal expertise during a transaction. This can lead to missed opportunities, valuation missteps, or unforeseen liabilities post-closing. Understanding when and why to involve an IP law firm can give advisors and their clients a competitive edge.

IP: More Than Just a Checkbox

For decades, due diligence focused primarily on financials, operations, and legal structure. But as the global economy shifts toward knowledge-based businesses, intangible assets—patents, trademarks, copyrights, trade secrets, and data—now account for the lion’s share of enterprise value in many transactions. According to some estimates, intangible assets make up over 80% of corporate value in S&P 500 companies.

Despite this, IP diligence is often treated as a post-term sheet formality or handled by general counsel unfamiliar with the nuances of IP strategy and enforcement. That’s a risky approach. IP issues can surface unexpectedly and derail a deal, or worse, lead to value destruction post-close.

Key Moments to Bring in IP Counsel

1. During Target Identification (Buy-Side)
When scouting acquisition targets, especially in technology-driven industries, it’s smart to involve IP counsel early. An IP firm can:

• Assess the strength and scope of a company’s IP portfolio
• Identify competitive advantages tied to proprietary technologies
• Flag potential infringement risks or freedom-to-operate issues This insight helps buyers prioritize targets based not just on market position, but on true innovation ownership.

2. During Initial Due Diligence (Buy- or Sell-Side)
IP attorneys play a critical role in due diligence, including:

• Verifying IP ownership (including assignments from employees or contractors)
• Reviewing pending or issued patents for scope, validity, and enforceability
• Identifying encumbrances (e.g., licensing obligations, liens)
• Assessing ongoing or threatened IP litigation If there are red flags—like co-owned IP, expired filings, or missing assignments—they need to be resolved before deal terms are finalized.

3. During Deal Structuring
The way IP is handled in a deal—transferred, retained, licensed, or escrowed—has real tax, liability, and operational consequences. For example, an IP firm can help:

• Draft and review IP representations, warranties, and indemnities
• Structure licensing arrangements for retained or shared IP
• Advise on international IP holdings and necessary filings

4. In Pre-Sale Prep (Sell-Side)
On the sell side, involving IP counsel well before going to market can enhance valuation and smooth diligence. A seasoned IP firm can:

• Conduct an IP audit to clean up title issues
• Strengthen filings or refile lapsed trademarks or patents
• Help position the IP portfolio as a strategic asset for buyers

The Strategic Advantage

Engaging IP counsel isn’t just about avoiding risk—it’s also about identifying upside. For example:

• A patent portfolio might be undervalued because it hasn’t been analyzed for licensing potential.
• A trademark with strong brand equity may justify a valuation premium.
• Clean IP ownership and a clear freedom-to-operate opinion can shorten deal timelines and reduce escrow amounts.

In cross-border deals, IP law firms with international expertise can also help navigate jurisdictional differences in patent law, enforcement, and regulatory filings.

What to Look for in an IP Law Partner

When choosing an IP firm to support M&A activity, advisory firms should look for:

• Experience with M&A-specific IP diligence
• Industry expertise relevant to the deal
• A team that includes both patent attorneys and transactional IP lawyers
• Strong communication skills for collaborating with deal teams and clients

Ideally, the IP team integrates seamlessly with financial, legal, and operational advisors to deliver a cohesive diligence product.

Conclusion

M&A transactions are complex, high-stakes endeavors where intellectual property can make or break value. By bringing in an IP law firm early—especially in deals involving technology, brand-driven businesses, or proprietary content—M&A advisory firms can provide smarter insights, protect their clients from costly oversights, and ultimately drive better outcomes. IP is no longer a niche consideration; it’s a core asset in modern dealmaking.

Why Work with Carter, DeLuca & Farrell

Carter, DeLuca & Farrell is a trusted IP law firm with deep experience supporting M&A transactions across a broad range of industries. Our team combines technical expertise with transactional acumen to deliver actionable IP due diligence, portfolio valuation, freedom-to-operate analysis, and deal structuring support. We’ve worked with investment banks, private equity firms, and corporate counsel to ensure IP is a driver of value—not a source of risk. Whether the goal is to unlock hidden IP value, resolve legacy ownership issues, or support cross-border transactions, Carter, DeLuca & Farrell provides responsive, strategic, and integrated legal support tailored to the M&A environment.

For a free consultation on any intellectual property matter by the law firm of Carter, DeLuca & Farrell LLP, made available through Spotlight Family Office Group, please contact us at Info@SpotlightFamilyOffice.com.