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

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.