Why is it important to ensure all due diligence is done on patents? What negative impact can it have on clients if they miss something small yet important?
Of all of the types of intellectual property, patents are perhaps the largest driver of value in mergers and acquisitions, litigation and in the licensing marketplace. While trademarks and copyrights certainly have value, it is the monopoly right of a utility patent that allows a company holding a patent to exclude others from the commercial marketplace. Patents need the greatest of due diligence as a result; reviewing the patent itself is usually not enough. In addition to the claims in the patent, any due diligence must review the prosecution history and reviewing and understanding the competitive landscape. Failure to this can result in the acquisition of potentially worthless patents, or at the least, ones plagued with unforeseen problems.
If a company’s patent is found to be invalid by a US court, then, typically this allows competitors into the marketplace, thus obviating the monopoly.
In this case, a compulsory licence was denied: can you share the objective of a compulsory licence and when to apply for one?
A compulsory license under US law is right granted against certain intellectual property usually in cases of national emergency, vital public health, or strong societal interest. In the patent realm they are defined by various Federal statutes, but unlike most foreign countries, not in the patent statutes themselves.
What can be the impact for companies to which their patents are ruled as invalid? How can they overcome the damage?
If a company’s patent is found to be invalid by a US court, then, typically this allows competitors into the marketplace, thus obviating the monopoly. In the pharmaceutical industry particularly where companies have spent millions of dollars on researching and developing a chemical formulation and then getting the formulation approved as a treatment by the FDA, the consequences of having a competitor can be tremendous and directly impact the company’s overall value.
Thomas Dunlap
Partner
Phone: 703.777.3885
Email: tdunlap@dbllawyers.com
Office: Leesburg, London, Puerto Rico, Toronto, Vienna
Tom’s practice focuses on patent, trademark, trade secret, commercial, entertainment law, business and government contracts disputes, litigation and transactions. Tom has authored numerous books and appeared on national television and radio including Fox, Sundance TV, and NPR speaking a variety of subjects in his fields of practice. In addition to the state and Federal courts of DC, VA, and MD, he is a member of the Federal Courts in Puerto Rico, Colorado and Texas, as well as the Court of Federal Claims, the Federal Circuit, where he has recently argued and won three appellate matters), the Veteran’s Court of Appeals, and the United States Supreme Court, where he was lead counsel on a False Claims Act case (See United States ex rel. Carter v. Halliburton Co.) and in the TC Heartland LLC v. Kraft Foods Group Brands LLC, (U.S. May 22,. 2017) (No. 16-341) case involving jurisdiction in patent infringement cases.
Dunlap Bennet & Ludwig is a veteran-owned law firm with local presence and global knowledge that boasts over 75 attorneys who are licensed to practice in over 40 states and multiple countries outside of the United States. Our team prides itself on prioritizing and caring for our clients, not only offering a full array of business and estate legal services, but – more importantly – by establishing and investing in long-term relationships with the individuals and businesses which we represent.
