GOVERNMENTAL & LEGAL AFFAIRS

This streamlined checklist is provided to help quickly and efficiently identify intellectual property issues early in any due diligence analysis involving a large medical device company buying or merging with a start-up or small medical device company. Areas addressed are: ownership of intellectual property rights and agreements, patent due diligence, and litigation and claims threatened.

Ownership of Intellectual Property Rights and Agreements

1. Identify and review all employee proprietary information, nondisclosure, and invention
    agreements.
2. Identify and review contractor agreements.
3. Identify and review all inbound license agreements.
4. Identify and review all outbound license agreements.
5. Identify and review all development agreements pursuant to which any intellectual property
    has been jointly developed with any third party.
6. Identify and review all agreements relating to patents, trademarks, software technology,
    know-how, and trade secrets.

Patent Due Diligence

1. Identify all issued patents and pending applications owned by or licensed to seller.
2. Identify any applications in progress.
3. Identify any pending invention disclosures.
4. Identify and review all assignments for such patents and patent applications.
5. Confirm that the maintenance fees for all issued patents have been timely paid.
6. Identify process for disclosing invention disclosures.
7. Identify process for filing patent applications.
8. Identify existence of any material and relevant prior art.

Litigations and Claims Threatened

1. Identify all opinions of counsel regarding validity, infringement, or noninfringement of seller's
    intellectual property rights, and of any third party's intellectual property rights.
2. Identify all litigation and claims threatened or asserted against seller involving any alleged
    infringement by seller of any third party's intellectual property rights.
3. Identify all litigation and claims threatened or asserted by seller involving any alleged
    infringement by any third party of any of seller's intellectual property rights.
4. Identify all settlement agreements entered into by seller.
5. Identify all potential claims of infringement by any third party of any of seller's intellectual
    property rights.
6. Identify all administrative proceedings threatened or asserted against seller involving any
    intellectual property rights of seller.

Copyright ©2007 MX