1.
The basic project determines the content of the investigation. As can be seen from the above summary, the basic project can be a transaction, a specific legal act or a patent infringement lawsuit. The content and emphasis of patent right are different for different basic projects. For example, in the patent pledge financing project, the stability of patent right and its economic value (asset evaluation) are the focus of due diligence; However, in the patent infringement litigation, whether the technical characteristics of the product belong to the scope of patent claim protection is the focus of investigation. Setting the focus of patent due diligence reasonably will significantly improve the efficiency and quality of investigation and effectively save the investigation cost.
2.
Due diligence should be detailed and appropriate, but it should not be more unfocused than other investigations. A complete patent due diligence should include the confirmation of patent assets, related risks and evaluation of patent transactions, risk avoidance, coordination of related interests of patent assets, effective utilization of patent assets after merger and acquisition, etc. For example, many project teams often ignore the risks and tips on how to effectively use patent assets after mergers and acquisitions. It is not easy to conduct a comprehensive and systematic due diligence on the entrusting party. Under the condition of meeting the key points of investigation, the patent lawyer in charge of due diligence should cover the above aspects as quickly and accurately as possible to make the investigation report more comprehensive and quality.
3. Four-step retrieval method: patent family retrieval, patent legal status retrieval, patent validity retrieval and patent infringement risk retrieval. [ 17]
The four-step retrieval method can greatly improve the efficiency of patent lawyers' patent due diligence after patent literature informatization.
Patent family usually refers to patents of the same family. Patents of the same family are a group of patent documents with the same or basically the same contents applied, published or approved by patent organizations in different countries or regions and between regions. For example, after applying for a patent in China, the same patent is applied to a foreign country; In addition, a patent previously applied in a joint case is divided into several patents, and a patent applied in a separate case can be called a patent of the same family.
The legal status of patent usually includes the legal status of application submission, disclosure, authorization, invalidation, payment, seizure, transfer and pledge in the process of patent application.
Patent validity retrieval usually aims at the stability of the patent, that is, trying to find the existing technology or conflicting application that can make the patent lose novelty or creativity and then lead to the invalidation of the patent.
The purpose of patent infringement risk retrieval is usually to compare whether the technical characteristics of one's own products belong to the protection scope of others' patent claims, and the premise of this comparison is to retrieve others' related patents.
(2) Contents of patent due diligence
Patent due diligence can be roughly divided into four levels: formal level, legal level, technical level and FTO project.
1. Formal due diligence can be done by ordinary lawyers.
The content of due diligence at this level includes but is not limited to confirming the type of patent right, the effective period of patent, the payment of patent fee, the existence of patent ownership, whether the patent is authorized, whether the subject matter is patent right or patent application right, the regionality of patent, patent pledge, seizure and invalidation, etc.
2. Due diligence at the legal level usually needs to be conducted by lawyers who are proficient in patent law.
The content of due diligence at this level includes but is not limited to the ownership of the patent right, the stability of the patent right, whether others can claim the patent or scientific and technological achievements, the validity period of the patent, whether the patent claim has been amended, whether the patentee has abandoned the invention technical scheme, whether it is facing potential infringement litigation, whether there is external authorization, whether there is an ongoing legal dispute, etc.
3. Technical due diligence usually needs to be presided over by a patent agent or a patent lawyer with patent agent qualification.
The content of due diligence at this level includes but is not limited to whether the patent depends on other patents, whether there is alternative technology, the monopoly degree of technology in the industry, the implementation cost of technology, the scope of claims, whether there is mature patented technology, whether it depends on background technology, whether there is improved technology, whether there is supporting technology, whether it meets the buyer's demand, whether there are substantive conditions for authorization, whether there are defects in the patent application documents, whether it is easy to avoid design, whether the inventor supports the implementation of the patent, and whether the patentee supports it.
4.FTO special investigation.
The investigation on the implementation of technical freedom is best presided over by a dual-certificate lawyer with the qualification of patent agent. The main purpose of FTO is to avoid patent infringement litigation and punitive damages when new products or enterprises are listed, so a patent lawyer with dual certificates is the best person to organize FTO investigation. The contents of FTO special investigation include but are not limited to: whether the products we are developing or producing infringe others' China patent rights and foreign patent rights; If there is infringement risk, how to avoid design from the technical aspect, how to avoid the risk area and risk market of patent infringement, how to initiate an application or lawsuit that leads to the invalidation of others' patents, how to prevent others from declaring their own patents invalid, and how to prevent "patent attacks" in the process of financing or listing in the capital market.