There are many different types of business questions or issues in respect of which we can help clients from a due diligence perspective. Due diligence activities can include searches to verify ownership or chain of title, freedom to operate, validity of various IP rights, or many other questions which might contribute to valuation of IP. Another consulting service we can provide is to advise clients in grooming or preparing their IP portfolio to undergo a due diligence or a particular type of transaction.
One of the key areas in which companies sometimes desire to conduct due diligence activities is to conduct searches or obtain strategic advice around the scope , breadth or validity of the intellectual property rights of competitors. Competitive IP intelligence is used in many ways, from assessing the strength of a competitor’s IP position in a particular technology or even perhaps valuing the IP aspect of a takeover transaction of a competitor, through to perhaps even just conducting a watch of competitive IP activity to understand what is going on in the industry or industries of interest to you.
CHAIN OF TITLE
Some of the key factors that would contribute to the valuation in a transaction which had an intellectual property component may include the following: competitive landscape, industry developments involving the companies implicated by a transaction, strengths or possibility of third party claims to the intellectual property in question, etc.. Are there for example third parties that have any intellectual property rights that would interfere with the client or the targets use of their IP? Is the intellectual property adequately protected? These are some of the business level questions or concerns can be addressed with some searching and background research in this area.
Dependent upon the nature of the transaction, the parties may also want to look at litigation or risk profile issues. In terms of due diligence, it may also be worthwhile to consider whether there threats of IP infringement by third parties which would lead to a need to do any background research to assess the validity or strength of such a claim or whether it may be necessary to consider if the target’s IP may infringe third party rights (infringement opinions) or may be of lesser value than initially suggested in the context of negotiations (i.e. based on IP validity opinions), etc.
Interested in IP valuation and due diligence for your business? We can help.
Once you have spent the time and the money to obtain a patent registration, you then have a statutory monopoly which you can endeavor to enforce against competitors in cases of patent infringement. Enforcing the rights that are guaranteed by your patent is your responsibility – while the patent office authorizes or grants to you the monopoly to your invention, it is the responsibility of the patent owner to police and enforce their own patent rights.
Typically the patent is enforced by way perhaps first of a cease-and-desist strategy followed with the issuance of legal proceedings if necessary. In the Canadian context, proceedings for patent infringement can be undertaken either in the Federal Court or in the superior courts of the provinces. There are limitations and strategic differences to commencing an enforcement proceeding in either of those courts.
A patent enforcement lawsuit is typically a civil lawsuit, although some countries do have criminal penalties for some types of patent infringement or other patent related activities. Typically the damages or remedies which might be sought and rewarded in a patent infringement lawsuit would include monetary compensation for past infringement and/or an injunction which would prohibit the defendant from engaging in future acts of infringement.
The claims of a patent are what clearly and distinctly state the rights that a patent owner has claimed as their invention, and which the Patent Office has recognized and granted. The claims of the patent are what define the scope of the monopoly right granted under the patent, with the remainder of the document being intended to support the construction, interpretation or understanding of the claims. Any approach to patent infringement is effectively a two-stage analysis – firstly the issue of infringement must be determined, and then the issue of the validity of any parts of the patent which are potentially infringed must be addressed.
Often the defense which is put forth by an accused infringer of the patent is to challenge the validity of the patent on various grounds. A patent can be invalidated on grounds that vary from country to country but typically they are a subset of the patentability requirements for that country. Most often the primary grounds for invalidating a patent would be statute barred subject matter based on a prior publication by the inventor or a related party, availability of published prior art in the jurisdiction or elsewhere in the world that renders the invention obvious at the relevant time, or a failure to mention all of the inventors etc.
In many cases the commencement of a patent infringement lawsuit comes as the culmination of a great amount of strategic planning and foresight by the patent holder. There are often many different strategies which can be contemplated, either contentious they are amicably, to accomplish the objectives of the patent holder. Patent enforcement strategy is just one of the weapons we have at our disposal in the development of full sum intellectual property plans and strategies on behalf of clients.
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One of the key areas of trademark disputes is related to Internet domain names. One of the conceptual differences between domain names versus trademarks is that within each top-level domain e.g.com, .ca etc. only one person can use a particular domain name, whereas in trademark law multiple parties can use the same trademark in a different channel of trade. As such there are multiple people in that circumstance who potentially are entitled to a good-faith domain name registration but only one who can have it. Domain name clearance and domain name availability has thus become more important in the trademark clearance process for many projects.
A domain name can actually constitute a trademark depending on how it is used but one of the other things that companies find from time to time is that third parties will use inappropriately or in an infringing fashion a domain name which encroaches upon your trademark rights. There is a dispute resolution process which can be used to endeavor to acquire domain names which are being used in bad faith by a third-party. We can provide assistance and further information on this as required.
We can assist with domain name registration, policing and enforcement as required.