Due diligence

Typical areas

What are the typical areas of due diligence undertaken in your jurisdiction with respect to technology and intellectual property assets in technology M&A transactions? How is due diligence different for mergers or share acquisitions as compared to carveouts or asset purchases?

Due diligence in technology M&A transactions must cover the analysis of the situation of the assets and the rights, and consider any possible objection from third parties that may affect their property and exploration. In the case of carveouts or asset purchase, there is the additional concern of properly transferring property title before the INPI.

Customary searches

What types of public searches are customarily performed when conducting technology M&A due diligence? What other types of publicly available information can be collected or reviewed in the conduct of technology M&A due diligence?

The INPI offers public tools to search and verify the situation of assets and rights. Besides this, the main process of registration steps are available in the public records. Additionally, there are private companies that perform additional searches for competitors and potentially equivalent property.

Registrable intellectual property

What types of intellectual property are registrable, what types of intellectual property are not, and what due diligence is typically undertaken with respect to each?

Invention, innovation or utility models can be patented. Brands, logos, projects, and hardware and software can be registered. Personal creation and source codes of software can be copyrighted. Due diligence to each must verify title situation of the assets and identify possible upcoming conflicts with third parties.

Liens

Can liens or security interests be granted on intellectual property or technology assets, and if so, how do acquirers conduct due diligence on them?

There is no restriction to liens or security interest granted on IP or technology assets, nor a specific process to publicly record such grant. Contractual representation and warranties are commonly required to assure acquirers’ uncontested property.

Employee IP due diligence

What due diligence is typically undertaken with respect to employee-created and contractor-created intellectual property and technology?

Due diligence with respect to employee- and contractor-­created intellectual property and technology aims to ensure title over their rights. Parties must have formally agreed on the transfer to the target.

Transferring licensed intellectual property

Are there any requirements to enable the transfer or assignment of licensed intellectual property and technology? Are exclusive and non-exclusive licences treated differently?

Transfer or assignment of licensed intellectual property and technology shall be registered before the INPI, with specification on the term and exclusivity traits of the operation.

Software due diligence

What types of software due diligence is typically undertaken in your jurisdiction? Do targets customarily provide code scans for third-party or open source code?

Software due diligence aims to verify property of software developed or acquired by a target, and authorisation to explore software in use in the business. Open source codes are not provided to each other.

Other due diligence

What are the additional areas of due diligence undertaken or unique legal considerations in your jurisdiction with respect to special or emerging technologies?

Deals with special or emerging technologies and sensible to the point that regulation has been rapidly developing. Therefore, risk of restrictions to the application of the new technology ought to be searched, identified and considered before the deal is finalised.