Hi folks, am helping a start-up before jumping ship from big law to join them full time. They are getting some technical designs for a piece of kit (related to enhancing solar energy efficiency) from abroad (we're based in the UK). Is there any way to ensure the designs we are getting do not breach patents? We don't want to pay for something that is reverse engineered and will get us in trouble. Any advice appreciated and happy holidays! :D

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Also, pay close attention to tax law and taxation. You'll want those patents in a low tax jurisdiction.

smarthelpful

There is no way to be sure that something doesn’t infringe a patent, even if they have patents covering the invention and/or offer a covenant that they do not infringe anyone’s patents (a patent is a right to exclude, not a right to practice). That said, if they are a financially stable organization, the covenant and indemnification may mitigate as much of your risk as is possible. You should make sure someone did a clearance search but there is always more prior art out there.

helpful

I'm not sure I fully understand what you're looking for, but two things that come to mind:

Reps and indemnification from the sellers of the designs you're getting.

Freedom to operate analysis.

helpful

Indemnification only works if there is any there there. Can't get blood from a stone.

funny

Hope this helps

http://www.patenttrademarkblog.com/how-to-avoid-patent-infringement/

helpful

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