Realize the value of IP
IP due diligence involves the review and analysis of intellectual property assets and related rights and obligation.
IP due diligence is a key priority for companies at many stages of maturity – from early-stage companies seeking venture capital investments, to more advanced companies preparing to license or commercialize IP assets or preparing for an initial public offering, to established companies seeking to expand existing markets, enter new markets, divest a business unit or technology, or optimize or reorganize IP assets. IP due diligence is also more critical than ever in any form of merger or acquisition.
Our highly specialized lawyers work with clients to advise them on all aspects of IP due diligence and guide them through the process, including accurately documenting the existence of IP assets and related agreements in the business, assessing the validity and enforceability of IP assets, reviewing chain of title (e.g. ownership) of the IP assets and possible encumbrances and other risk factors, and reviewing contractual rights and commitments related to IP assets.
Our services in this area include:
- Reviews and assessments of IP agreements and commercial agreements to assess IP strengths and weaknesses including:
- ownership, control and transferability,
- licensed rights and obligations, and
- confidentiality and rights of use
- Assessment of scope, validity & enforceability of IP portfolios
- Patent clearances & freedom to operate advice
- Trademark searches
- Brand strength reports
- Acquisition, divestment or financing counselling
- Investigations of IP disputes
- Infringement and validity of rights investigations and reports
Key Contacts
Client Success
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IP advisor to perinatal safety company PeriGen Inc. in acquisition by Halma plc for US$58M
IP advisory counsel to perinatal safety company PeriGen Inc., defending the value of the company's patent portfolio value during and IP Due Diligence in its acquisition by Halma plc in an deal va...Read More -
Related Publications & Articles
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Infringement based on making/selling under existing NOC for one strength struck from action under the PMNOC Regulations triggered by NOA based on different strength
The Federal Court has granted in part Pharmascience’s motion to strike out portions of Teva’s statement of claim under subsection 6(1) of the Patented Medicines (Notice of Compliance) Regulations (PMN...Read More -
FCA upholds issuance of NON-W letter and cancellation of reconsideration process for Apotex omeprazole magnesium tablet ANDS
On April 24, 2019, the Federal Court of Appeal (FCA) affirmed the Federal Court’s (FC) dismissal of Apotex’s application for judicial review of a decision by the Minister of Health relating to its Apo...Read More -
Federal Court finds invalidity allegations relating to patent for metformin formulations not justified
On March 8, 2019, Justice Fothergill granted Valeant Canada’s application for an order prohibiting the Minister of Health from issuing a notice of compliance to Generic Partners for its generic versio...Read More -
Orders of prohibition relating to polymorphic form patent for PRISTIQ upheld on appeal
As previously reported, the Federal Court, in a pair of decisions, granted orders prohibiting Apotex and Teva from marketing their generic o-desmethyl-venlafaxine (ODV) products (Pfizer’s PRISTIQ) unt...Read More -
Abbott/Takeda permitted to plead that a third party’s patent would be infringed by alleged non-infringing alternative
On the eve of a section 8 trial, the Ontario Superior Court granted Abbott and Takeda leave to amend their pleadings to assert that Apotex’s purported non-infringing alternative (NIA) was unlawful as ...Read More -
FCA overturns cefaclor damages decision on prejudgment interest issue, provides guidance on NIA defence
On November 23, 2018, the Federal Court of Appeal (FCA) allowed in part Apotex’s appeal of a decision awarding Eli Lilly over $100 million for Apotex’s infringement of eight process patents related to...Read More -
Ontario Court of Appeal allows Sanofi and Schering to plead that Federal Court ramipril patent invalidity decision was flawed due to “promise doctrine”
In an action by Apotex for compensation from Sanofi and Schering under the Ontario Statute of Monopolies, U.K. Statute of Monopolies and the Trade-marks Act, the Ontario Court of Appeal has overturned...Read More -
Apotex not permitted to plead promise-based invalidity grounds in Ontario section 8 lansoprazole action
This motion arose in the context of a section 8 action in which Apotex claims damages for delay in the issuance of its notice of compliance for its generic lansoprazole product (Takeda's PREVACID), du...Read More
Related News & Media
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Smart & Biggar advises perinatal safety company PeriGen Inc. in acquisition by Halma plc in a deal valued at US$58M
Smart & Biggar advised perinatal safety company PeriGen Inc., defending the value of the company's patent portfolio and providing expert IP counsel during due diligence in its acquisition by Halma...Read More -
Smart & Biggar named IP 'Law Firm of the Year' and leads the rankings with 31 lawyers recognized in The Best Lawyers in Canada 2021 edition
Smart & Biggar is pleased to share that we have been named 'Law Firm of the Year' for expertise in Intellectual Property Law in the 2021 Edition of The Best Lawyers in Canada.Read More -
Andrea Berenbaum joins Smart & Biggar bringing her patent expertise to Vancouver
Smart & Biggar is pleased to announce that Andrea Berenbaum has joined the firm as a senior associate in Vancouver.Read More -
Smart & Biggar receives praise as ‘best-in-class for high stakes IP litigation and counseling’ in 2020 edition of The Legal 500 Canada
Smart & Biggar is pleased to share its distinction as a ‘Tier 1’ firm for Intellectual Property in the 2020 edition of The Legal 500 Canada.Read More -
5 Smart & Biggar lawyers attend IPO Annual Meeting in Washington, D.C.
Smart & Biggar partners, Daphne Lainson, Nancy Pei, Matthew Zischka and Jean-Sébastien Dupont, with associate, Artemis Lai, will travel to Washington, D.C. to attend the 47th Annual Meeting of the...Read More -
Smart & Biggar partners join IP and licensing experts in Boston at LES Annual Meeting
Partners Sanro Zlobec and Theodore (Ted) Sum will attend the Licensing Executives Society (LES) Annual Meeting from October 14 - 17 in Boston, MA.Read More -
Smart & Biggar builds on strengths in Montreal with new additions in Litigation, Transactions and Patents
Smart & Biggar announced today that it has recently expanded its team of professionals in Montreal to include new team members in the following practice areas: Litigation, Transactions and Patents...Read More -
Smart & Biggar/Fetherstonhaugh announces new partners for 2018
The partners of Smart & Biggar/Fetherstonhaugh are pleased to announce that Jean-Sebastien Dupont, Daniel Davies and Urszula Wojtyra have joined the partnership.Read More