EXECUTIVE GUIDE: IP STRATEGY FOR SCALE AND EXIT

As R&D-focused companies evolve, from early discovery to late-stage commercialization, intellectual property becomes more than protection; it becomes a strategic asset. Whether you're preparing for a global launch, a licensing deal, or an eventual exit, aligning your IP portfolio with growth goals is critical.

This guide outlines key legal considerations and best practices to ensure your IP strategy supports enterprise value, compliance, and transaction-readiness.

1. Strengthen Global Enforcement Readiness

• Territorial Alignment: Ensure patent and trademark filings align with your go-to-market jurisdictions, manufacturing sites, and major licensing territories.

• Freedom to Operate (FTO) Mapping: Conduct updated FTO analyses before new clinical phases, international expansion, or third-party deals.

• Customs & Border Protection: Register patents and trademarks with U.S. and foreign customs agencies to enforce against infringing imports.

2. Harmonize IP and Licensing Strategy

• Clear IP Ownership in Collaborations: For co-development or sponsored research, clearly delineate ownership, rights of use, and sublicensing rights in all agreements.

• License Stack Simplification: For outbound licensing or M&A, ensure IP isn’t encumbered by unclear sublicenses or unassignable contracts.

• Diligence-Ready Documentation: Keep a secure, audit-ready archive of invention disclosures, patent filings, assignments, and license agreements.

3. De-Risk for Investors and Acquirers

• Chain of Title Audit: Confirm all inventor assignments and employment agreements are executed and enforceable.

• Publication Monitoring: Track public disclosures to avoid premature loss of rights (especially for international filings).

• IP Indemnification Review: Check liability terms in licenses or vendor contracts that could impose IP exposure on your company.

4. Optimize Patent Lifecycle and Portfolio Strength

• Prosecution Quality Control: Use patent prosecution counsel with technical depth and experience in your specific therapeutic class.

• Divisional & Continuation Planning: Maximize claim coverage over time through strategic continuation practice.

• Abandonment Strategy: Proactively trim low-value filings to reduce costs and signal portfolio confidence.

5. Trade Secrets and Data Governance

• Document What Is a Trade Secret: Maintain access logs, confidentiality agreements, and documentation policies for proprietary assays, algorithms, or formulations.

• Secure Digital Environments: Align internal IT practices with NIST/CISA data protection standards, especially for regulated data or CMC content.

• Cross-Border Considerations: Be aware of data transfer and trade secret rules when collaborating across jurisdictions.

Sophisticated investors and strategic acquirers now expect IP to be as well-managed as financial and regulatory functions. Proactively aligning IP with your business roadmap can elevate your company’s valuation, streamline negotiations, and avoid costly surprises during diligence.