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1. How is intellectual property identified and located? Please outline the main components of ‘Intellectual Property Law’.
2. What distinguishes the ownership of the intellectual property from the right to use that property? What rights are granted through the use of patents?
3. Are there any considerations that should be taken into account when registering a copyright? What assurance can be given to copyright owners that their rights are known to the public?
4. Are there any difficulties in the recognition of common law trademark rights across countries?
5. What particular ownership issues do patents present in the United States? What precautions should be taken when completing a patent application?
6. Under what circumstances should ‘due diligence’ investigations be conducted? When during a due diligence investigation, should an intellectual property counsel be consulted and when is it advisable to conduct a ‘dilution’ search?
7. What search reports should be performed to determine ownership of a piece of intellectual property (eg the government agency records)? How is the remaining life of patents or registrations taken into consideration in the process of conducting due diligence for intellectual property?
8. What guidelines should be considered in order to maintain confidentiality during a due diligence engagement? What activities conducted during due diligence can breach confidentiality (eg in the assessment of customer satisfaction through contacting customers)?
9. What measures should be undertaken to retain the benefits of the attorney/client privilege? Please outline the steps that can be taken to limit the number of people involved in the investigation? In what ways can a breach of privilege make a company vulnerable to future litigation?
10. What issues arise through the joint ownership of copyright? What are the consequences if one party breaches the copyright?
11. To what extent is a patent attorney relevant if the target company has no patent portfolio (ie the company does not own its patents but may own patentable assets)?
12. Please explain the basis for placing intellectual property in ‘IP holding’? How could a holding affect the value of the intellectual property?
13. What particular intellectual property rights (IPR) issues arise during a merger or acquisition? What have been the most recent developments in connection to intellectual property claims? Please outline the transaction and post-transaction considerations (ie the valuation of intangible assets).
14. Please explain the role of ‘warranties’ and ‘indemnities’. What legal rights do these provide the purchaser against the licensor or vendor? Under what circumstances may the licensor sue for breach of contract?
15. How is a licensing agreement enforced? What are the potential liabilities if an infringement suit were to arise?
16. Please provide an overview of the regulatory framework for intellectual property claims in the US (ie applicable statutes and regulations). What steps should be taken in order to protect Intellectual Property rights abroad?
17. What financial support and advice can the U.S. Government provide in IPR Infringement Cases? How have these issues been addressed by the World Intellectual Property Organization (WIPO)?
18. What compliance programs should be considered by a company engaged in due diligence? Are there any relevant resources involved in the creation, audit, and maintenance of an effective compliance program (ie government internet resources)?
19. What considerations should be taken into account when organising the due diligence (eg Record keeping)?
20. What particular issues are raised by third party ownership of intellectual property? To what extent can third party collaborators who have made subsidiary contributions (eg commercial partners, universities or government agencies) claim rights to the invention?
21. Under what circumstances may the intellectual property due diligence process provide the grounds to renegotiate the price or other key terms of the transaction?
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