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Intellectual property plays an integral role in the modern M&A transaction. It is critical to conduct a thorough due diligence study for both sides of the transaction before the acquisition. Whether of the intellectual property itself, rights to a product associated with the intellectual property, or the entity owning the intellectual property. KramerAmado partners with its clients to conduct due diligence of intellectual property for investigating potential acquisitions as well as preparing intellectual property for monetization. They are there to answer the critical questions necessary to accurately evaluate the transaction.
We can help you answer these critical questions to accurately evaluate your transaction.
Prior to any product launch, the likelihood of patent infringement should be appropriately addressed. Whether conducting a Freedom to operate or a clearance Study, KramerAmado applies a rigorous standard necessary to provide business certainty.
KramerAmado conducts a thorough and in-depth search to identify intellectual property that is at risk for infringement and addresses each of those risks appropriately. By analyzing the individual claims of each identified patent and application, the firm counsels its clients with regard to Non-Infringement, Design Around, Licensing and Invalidity where appropriate.
While the basic features of each Freedom-to-Practice study remain the same, KramerAmado partners with its clients to provide the specific product that meets their needs.
In order to meet the requirements for each unique study, the team seeks to identify the relevant market, the value of the product or service subject to review, the relevant competitors and competing products, upstream suppliers and downstream customers. This is all done with a belief that understanding the client’s business allows them to appropriately tailor the scope of the study, the depth of the analysis, the cost, and the nature of the finished opinion to meet the client’s specific needs.
KramerAmado conducts in-depth analyses to accurately determine the likelihood of patent infringement. This includes detailed interpretation of the patent claims, together with the technical expertise necessary to understand the requisite skill in the art. The same technical expertise is required to property understand the client’s technology as compared to the patent claims, or a potential infringer’s product as compared to the clients’ patents.
Scenarios where the detailed investigations are necessary to determine whether the patent claims are infringed:
An investigation must be made comparing the accused product to the patent claims.
Right-to-Market studies, industry knowledge, or information in the public domain may uncover a patent that poses a threat to launching or acquiring a new product or service. Early detection allows for design-around options once the patent is properly interpreted.
Whether receiving notice from a competitor or a Non-Practicing Entity a detailed analysis of the patent claims against the accused product is necessary to properly value the patent.
KramerAmado’s investigations produce independent opinions that allow in-house counsel decision-makers to properly weigh the risks of infringement or move forward with a patent suit against a possible infringer.
KramerAmado believes that its in-house search team has the experience and expertise necessary to make sure there are no hidden dangers, or in the alternative, find the prior art describing the claimed invention that threatens its client’s business.
In addition to finding and applying the most relevant prior art, KramerAmado professionals have the legal and scientific know-how to properly understand the relevant technology in order to recognize and apply the closest prior art. Moreover, its professionals are abreast of the constantly changing landscape of intellectual property law and investigate patent claims for fulfilling the requirements of patent eligibility, definiteness, written description and enablement, as well as identifying double-patenting and inequitable conduct.
The end result is an opinion that is useful for business planning, can be relied on for defending against willful infringement, can be used as a basis for a re-examination, can be used to prepare a Hatch-Waxman notice letter, or can be used to ensure a strong and assertable patent as needed.
THIRD PARTY INFRINGEMENT
KramerAmado seeks to ensure that its client’s Intellectual Property interests are protected before any patent litigation takes place. For this reason, KramerAmado practices the full range of options available to give the USPTO the best information available to promote the issuance of high quality patents.
Third parties may now submit relevant prior art documents and a concise description thereof to the USPTO with regard to any published application within six (6) months after publication or prior to the first substantive office action, whichever is later. KramerAmado uses its patent research, prosecution, and opinion expertise to identify claim-limiting prior art and prepare directly applicable descriptions to maximize the effectiveness of such filings thereby preventing unpatentable claims from being granted.