Tech Transfer Central

Critical Issues in Due Diligence and Freedom to Operate Analysis for University IP

Format: On-Demand Video/Transcript, or DVD
Originally presented: Wednesday, September 22, 2021

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Price: $197
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Intellectual property due diligence and freedom to operate (FTO) analyses can be critical to assessing potential licensing transactions and can be equally important for start-up investors. These analyses are also key factors in developing patent prosecution strategies for new disclosures.  However, due diligence and FTO analyses can often be sheathed in a cloud of mystery because of the broad scope of issues involved and the inherent variability in the information they uncover. In addition, the potential for spiraling costs from poorly devised or conducted inquiries can further confound the process.

In this practical and detailed webinar, patent attorney Jonathan B. Roses of Wolf, Greenfield & Sacks will demystify due diligence and FTO inquiries by explaining not only what they explore, but also how they are best conducted and the particular importance of each constituent inquiry. 

Critical Issues in Due Diligence and Freedom to Operate Analysis for University IP

Attendees can expect to gain an understanding of why and when these activities are required, what information they can yield, and how to distinguish issues that are critical to the analyses from those that are simply “nice to have” or even unnecessary for a given project.

Here is a look at the program agenda:

    • Overview of Due Diligence
      • What is due diligence?
      • Why is due diligence needed?
      • Different due diligence postures
    • Key Aspects of Due Diligence Inquiries
      • Assessing scope of coverage
      • Assessing strength of the portfolio
      • Evaluating ownership and other rights
    • Freedom to Operate Analysis
      • Goals
      • Identifying third party IP risks
      • Evaluating and managing risk
    • Scope
      • What to search
      • Where to search
      • How to triage results
      • Evaluating search results
      • Post-search activities

Your expert presenter

Jonathan RosesJonathan Roses
Wolf, Greenfield & Sacks PC

Jonathan counsels an array of clients, including life sciences companies, universities, and not-for profit research institution, with a focus on the areas of small molecule pharmaceuticals, pharmaceutical formulations, medical devices and surgical methods.  Jonathan is highly skilled in conducting and managing domestic and foreign patent prosecution and pre-litigation investigations, including worldwide freedom to operate, patentability and exclusivity analyses.  He is also experienced in representing clients in federal district court litigation and in post-grant proceedings before the United States Patent and Trademark Office and foreign counterparts.  Jonathan has also provided regulatory advice and representation to clients relating to patent term extension and Orange Book listings under the Hatch-Waxman Act.

Prior to joining Wolf Greenfield, Jonathan served as Counsel at Wilmer Hale, where he prosecuted and managed prosecution of patent applications worldwide for domestic and foreign life sciences, universities and consumer clients in the chemical, pharmaceutical, biotechnology and materials science arts.

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