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The proliferation of patent transactions in recent years places a large burden on patent due diligence and valuation services. Inequities of information in the market for patents abound. Persons involved in patent transactions and portfolio managers desire to have meaningful and accurate information on the health and ownership of a given patent or portfolio. Utilizing processes and skills refined over hundreds of patent transactions, the patent due diligence team at Berkley Law and Technology, LLP can quickly and effectively compile valuable information relating to the health and ownership of a patent or portfolio. Information that can greatly impact a particular transaction and assure the continuing health of your patents.
RELATED ASSETS: Identify any U.S. or foreign patents and patent applications that relate to a patent asset.
Patents are identified by searching publically available databases such as the USPTO,
WIPO, EPO and select foreign country databases. In addition, the file history
and other available documents may be examined to identify related assets. For
example, the specification, oath and/or declaration, application data sheet,
office actions, information disclosure statements, and third-party files may be
examined.
SUBSTANTIVE AND PROCEDURAL CONCERNS: Identify and evaluate whether a patent or application complied with, and continues to comply with, the substantive and procedural rules of the relevant examination country and/or examination entity.
Patent and application information in publically available databases, which may
include file histories and other available documents, is examined to identify
concerns relating to, for example:
- Information Disclosure Statement-
Determine if prior art, office actions, notice of allowance, international
search reports or other foreign search reports, etc., were cited and considered
during prosecution and appear on the face of the patent or publication, etc.
- Continuity-priority claim is appropriate for each asset and properly reflected on the face of the patent, spec, ADS, Oath/Dec or on a filing receipt, etc.
- Pending Prosecution- Response deadlines (i.e., Notice to File Missing Parts, Office Actions, Notice of appeal, issue fee payments, national application filing deadlines, validation and translation, etc.); substantive compliance; etc.
- Inventorship- Inventor(s) throughout family are consistent and properly identified; all inventors properly executed the declaration, etc.
- Entity Status- Change in entity status during prosecution and/or maintenance fee payments.
- Post-Grant- Maintenance Fees, renewals and annuities; patent term extensions or limitations; post-grant opposition, etc.
TITLE AND RECORDATION CONCERNS:Title of each patent and application is examined to identify title and recordation concerns.
Patent and application title information in publically available databases, which may
include title documents, is examined to identify concerns relating to, for example:
Encumbrances- Security interests, licenses, UCC interest, liens, government rights, etc.
Assignment Evaluation- grant language sufficient; limited duration, geographic scope, or causes of action, etc.
Fractional Ownership- All inventors assign; subsequent assignments cover all rights; etc.
Recordation- Gaps in chain-of-title; unrecorded assignments; correct application/patent number, entity name(s), inventor name(s); typographical errors, 37 CFR 3.21 compliance, etc. |
