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DUE DILIGENCE

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  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.