Like due diligence searches for statutory and consensual liens on borrowers and debtors, confirming the owner and status of intellectual property in a transaction is critical.
When conducting due diligence searches, do you wonder…
“Should I be searching the U.S. Patent and Trademark Office and the U.S. Copyright Office?”
If intellectual property (IP) is involved in your transaction, then the answer – in most cases – is a resounding yes.
An entity that has a well-known trade name, service mark or logo, strongly distinguished from others in the marketplace, possesses valuable IP that may be of interest to a secured lender. If not a recognized mark, an entity may have patents or registered copyrights adding significant value to its portfolio. Uncovering information on assignments, liens and general ownership of that intellectual property is just as vital as searching for statutory and consensual liens on borrowers and debtors.
Typical UCC/Lien Searches Might Not Be Enough
Intellectual property falls within the scope of ‘general intangibles’ as defined in Section 9-102 of Article 9 of the Uniform Commercial Code. As such, searching for UCCs that may include IP as collateral is necessary but limiting your due diligence to a typical UCC and statutory lien search may not be enough. A thorough investigation should also include a search of the United States Patent and Trademark office (USPTO) and United States Copyright office (USCO). Only by conducting these additional searches can you determine who has the rights to the IP and whether other liens exist.
A thorough search strategy will typically include the following search types and locations:
- Secretary of State of the debtor’s state of formation for UCCs.
- If the debtor owns land, a search of the local land records for UCC fixture filings and other liens.
- State and local level filing offices in the state where the debtor’s chief executive office resides for statutory liens.
- State and federal level litigation searches.
- USPTO and USCO for intellectual property.
Intellectual property is increasingly more valuable, and more frequently encountered as collateral in an age dominated by intangible assets. As lenders continue to rely on counsel to conduct the most thorough due diligence possible, it is important to be mindful of how intellectual property plays into transactions. Searches of the USPTO and USCO are important pieces of the due diligence puzzle that provide a more accurate view of a debtors’ intellectual property assets – and should not be overlooked.
This content is provided for informational purposes only and should not be considered, or relied upon, as legal advice.