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April 2, 2009 - Tom Irving

IP Due Diligence

Tom Irving, Partner, Finnegan, Washington, D.C.

April 2, 2009, 11:45 AM - 1:15 PM
Denver Chop House, Large Banquet Room




Mr. Irving discussed IP due diligence investigations, with a particular emphasis on issues relating to U.S. patent law.  He discussed the best practices for conducting investigations, including how to proceed on the following issues:

(1) Who actually owns the intellectual property, and whether a 3rd party has a claim on it?

(2) Will the claims of the IP be construed to literally cover the key technology to be acquired? How much extra breadth is there to combat the inevitable design-arounds?

(3) Will those key claims that cover the key technology be sustained as valid? For example, were the key patents issued pre-KSR?  Will they survive post-KSR?  Should you be thinking reissue?

(4) Are the key patents enforceable? What are the chances a court will find inequitable conduct and sink each key patent, exposing your client to attorney fees and possible antitrust liability? Is there anything that can be done to improve the situation if clouds arise from the investigation?

He also addressed how to address resistance from the target, since the more they tell you, likely, the less your client will pay.  Mr. Irving discussed how to work around such intransigence including whether reps and warranties make sense.

Tom has more than 31 years of experience in the field of intellectual property law. He has served for more than 10 years as principal teacher of Kayton's PRG Chemical Patent Practice course. He has also originated and is teaching PRG’s Orange Book and Due Diligence courses. Mr. Irving also presents analyses of Federal Circuit patent decisions for many diverse groups, including the Ohio State IP Institute, the Michigan IP Institute, the Houston IP Institute, the North Carolina IP bar, the Utah IP bar, the Missouri IP bar, the combined South and North Carolina IP bars, and the combined Oregon and Washington IP bars. Mr. Irving has also served as the keynote speaker on patent law developments at the annual meeting of the Intellectual Property Owners Association (IPO). He serves as a lecturer to the Chemistry Examination Department of the Patent Office of the State Intellectual Property Office (SIPO) of the People's Republic of China.