html5-img
1 / 14

DUE DILIGENCE

DUE DILIGENCE. FRANKLIN PIERCE LAW CENTER 1 7 th ANNUAL ADVANCED LICENSING INSTITUTE Concord, New Hampshire Wednesday, January 7, 2009 By Ronald I. Eisenstein Nixon Peabody LLP reisenstein@nixonpeabody.com. WHAT IS A DUE DILIGENCE ANALYSIS?. Assessment of Risks Examination of IP

sakura
Download Presentation

DUE DILIGENCE

An Image/Link below is provided (as is) to download presentation Download Policy: Content on the Website is provided to you AS IS for your information and personal use and may not be sold / licensed / shared on other websites without getting consent from its author. Content is provided to you AS IS for your information and personal use only. Download presentation by click this link. While downloading, if for some reason you are not able to download a presentation, the publisher may have deleted the file from their server. During download, if you can't get a presentation, the file might be deleted by the publisher.

E N D

Presentation Transcript

  1. DUE DILIGENCE FRANKLIN PIERCE LAW CENTER 17th ANNUAL ADVANCED LICENSING INSTITUTE Concord, New Hampshire Wednesday, January 7, 2009 By Ronald I. Eisenstein Nixon Peabody LLP reisenstein@nixonpeabody.com

  2. WHAT IS A DUE DILIGENCE ANALYSIS? • Assessment of Risks • Examination of IP • Ownership Rights • Mistakes • What does IP cover? • Are there obstacles?

  3. Typically part of a Larger Process • Analysis of Science • Analysis of Commercial Success • Analysis of People

  4. What is required? • Think about other types of due diligence • How big is the deal?

  5. Who are the players? • Counsel for both sides • Scientists • Inventors • Management

  6. Now, Step Back … • Before you get involved in a Due Diligence do an Internal Audit! • Check for problems • Correct problems • Coordinate IP story with other parts of the company’s story • Know what to say and what not to say

  7. WHY? • Minor IP issues can get blown out of proportion • Minor mistake can be corrected, e.g., reissue – correction of inventorship, priority claims, claiming issue, payment of maintenance fee • Opinions can be prepared, expanded, updated

  8. What Type of Documents Should You Review? • Schedule of patents, including corresponding foreign applications, continuations, divisionals, (IPs, reissues and reexamination of ownership right? • Do you have assignments? • Are maintenance fees paid? • Are annuities paid? • Schedule of patent applications, corresponding foreign applications, continuations, divisionals, and CIPs • Is ownership right? • Do you have assignments? • Are annuities paid?

  9. Licenses and cross-licenses • Technology research and development agreements such as sponsored research agreements • Material Transfer Agreements • Are there restrictions? • Employee agreements re assignment • Vendor agreements re confidentiality • Requests for licenses • Notices of infringement

  10. Third Party claims • Claims of infringement • Unfair competition • Brach of confidentiality or non-disclosure agreement • Prosecution files • Opinion letters • Non-infringement opinions

  11. Invalidity opinions • Freedom to operate opinions • Settlement or Consent Agreements affecting the use of IP owned or licensed by the Company • Product Descriptions

  12. What Are Some Things You Look At? • Product Description • Do you have IP covering it? • How broad are the claims? • Do you have freedom to operate? • What are your competitors doing?

  13. Third Party Counsel • Looks at similar things • Needs to know what the purpose of due diligence is • It’s a risk assessment situation • Common sense is really important

  14. Important: No deal is without risk – Counsel must understand the risk and place it in perspective.

More Related