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There may already be industry knowledge as to what can and can't be done, but there may be a need to confirm by patent search to avoid infringement. A freedom- to-operate search can be difficult, depend- ing on the subject area, particularly if the product uses intermediaries that have changed forms and are now embedded in the product. Typically when doing a patent search, you would develop patent search strate- gies around key players or chief com- petitors to assess what might already be out there in the market. This process might also involve inquiries with sup- pliers — sometimes these can be "deli- cate" inquiries, says Ingram, since they might not be interested in sharing their processes. However, this is important, especially if there has already been liti- gation with respect to those processes, or if there are known alternatives that could be used. In-house counsel under control by doing an initial selec- tion of patents that could be an issue, but it can be a formidable project, says Mendes da Costa. In a freedom-to-operate search, exter- nal counsel can give an opinion of what says Mendes da Costa. "You want to do some degree of due diligence but you are still potentially at risk, unless you know everything a sup- You want to do some degree of due diligence but you are still potentially at risk, unless you know everything a supplier is doing — but they may not want to tell you. You may or may not know how it's been made. SUSAN BEAUBIEN, Macera & Jarzyna LLP can keep costs they think a court will make of a particu- lar situation, but there's no guarantee you won't get sued. "In some cases litigation can be used as part of a strategy by a company to obtain or maintain its market position, so patent litigation can have strategic external business considerations besides the fact 'we think you infringe.' Just because we give an opinion on some- thing doesn't mean litigation won't arise," plier is doing — but they may not want to tell you. You may or may not know how it's been made," says Beaubien. However, while this process may be time-consuming and expensive, it's become a necessary part of doing busi- ness. As Beaubien puts it: "Due diligence and freedom-to-operate searches are a lot less expensive than infringement litigation." IH TAP INTO CANADA'S MOST AUTHORITATIVE SOURCE ON PRODUCTS LIABILITY PRODUCTS LIABILITY, FIFTH EDITION STEPHEN M. WADDAMS, B.A., M.A., Ph.D., LL.B., LL.M., S.J.D., F.R.S.C. Canada has seen a rise in products liability claims in recent years due to increased consumer activism and the growing availability of class actions. For more than 35 years, Products Liability has been the leading authority on the subject of products liability law in Canada. The fifth edition of this highly respected book effectively pulls together legislation and case law that cuts across several legal disciplines including negligence, strict liability, warranty and public policy. Products Liability, Fifth Edition has been updated to include new case law, legislative references and commentary. It addresses the significant developments in Canada and other jurisdictions including those relating to class actions, punitive and restitutionary damages, causation and economic loss. Renowned legal scholar Stephen M. Waddams clearly and concisely examines these concepts and their practical application with a historical context. He considers their development in other jurisdictions, and sets out the current state of Canadian law. AVAILABLE RISK-FREE FOR 30 DAYS Order online at www.carswell.com Call Toll-Free: 1-800-387-5164 In Toronto: 416-609-3800 ORDER # 983484-65199 $160 Hardcover approx. 300 pages April 2011 978-0-7798-3484-6 Shipping and handling are extra. Price subject to change without notice and subject to applicable taxes. INHOUSE APRIL 2012 • 33

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