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Patent due diligence: Process and priorities – A Canadian patent attorney’s perspective ☆

Paper ID Volume ID Publish Year Pages File Format Full-Text
38076 45647 2010 5 PDF Available
Title
Patent due diligence: Process and priorities – A Canadian patent attorney’s perspective ☆
Abstract

This article provides a broad-ranging Canadian patent attorney’s perspective of the highly challenging area of patent due diligence work and of how to manage the conflicting priorities of a due diligence project. It is suggested that the work be approached in stages, each of which is explored in some depth:1.Examine the formalities of filings of interest, focus on primary jurisdiction(s) and primary portions of technology, review any key licenses and permissions related to the technology.2.Carry out an in-depth review of file wrappers; consider whether any opinions are necessary and if so initiate searching; substantively review relevant assignments and employment contracts; expand the scope of investigations to additional filings/jurisdictions as appropriate.3.Prepare preliminary versions of any opinions, carry out any investigations required to go behind the documentation that has been reviewed.4.Expand and formalize any opinions as needed; carry out or request any remediation that may be appropriate; finalise any reporting letters that may be required.

Keywords
Patent due diligence; Patent searches; Licences; File wrappers; Opinion letters; Timescale; Patent jurisdictions; Duty of disclosure; Freedom to operate; Patent families; Translations
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Patent due diligence: Process and priorities – A Canadian patent attorney’s perspective ☆
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Publisher
Database: Elsevier - ScienceDirect
Journal: World Patent Information - Volume 32, Issue 3, September 2010, Pages 198–202
Authors
,
Subjects
Physical Sciences and Engineering Chemical Engineering Bioengineering
Get Full-Text Now
Don't Miss Today's Special Offer
Price was $35.95
You save - $31
Price after discount Only $4.95
100% Money Back Guarantee
Full-text PDF Download
Online Support
Any Questions? feel free to contact us