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.