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Intellectual Property Due Diligence

Submitted By: David Dawsey | Word Count: 849 | Views: 134

The importance of due diligence in any investment, merger, or acquisition decision cannot be understated. Decisions can no longer be made based solely upon a good business plan. In today's knowledge based economy intellectual property (IP) is often a company's single most valuable asset. However, IP due diligence is typically an afterthought.

The Goals

The goals of IP due diligence should be collaboratively identified by the organization leading the general due diligence investigation and the IP due diligence team. The goals should then be reduced to an IP due diligence plan.

The IP due diligence team should consist of independent IP counsel. The target company's IP counsel should not be used as one can never fully critique their own work, in addition to the potential conflicts of interest.

Several factors must be considered in identifying the goals of the plan. First, the team should discuss the nature of the transaction. IP due diligence goals will differ for investments, mergers, and acquisitions. Secondly, the financial value of the transaction must be considered. There is no use in completing $1 million in due diligence for a $1 million dollar transaction. Third, the risk associated with the transaction must be analyzed. For instance, a $1 million venture capital (VC) investment in a high-tech start-up has a much higher probability of loss than a $100 million merger of established companies. Fourth, the underlying reason for the transaction should be discussed. For example, if a company is acquiring a target company for a particular product line or technology there should be a primary focus on the IP protecting that interest.

The Scope

The scope of IP due diligence investigations is limited by the goals identified above. The scope of IP due diligence should include investigations into the patents, trademarks, copyrights, and trade secrets of the target company to identify weaknesses, potential liabilities, and potential opportunities.

There are some general considerations applicable to all forms of IP. For instance, all of the target company's current IP should be identified and cataloged, including current patent and trademark applications. This process should identify the dates of application, issuance, expiration, required maintenance payments, and whether foreign IP protection has been obtained. Additionally, the true ownership of each piece of intellectual property must be identified. This is particularly true for IP that has been licensed or assigned to the target company. Ownership verification requires meticulously analyzing assignments and licensing agreements, as well as cross-referencing the Patent & Trademark Office files. A golden rule of IP due diligence is to independently verify everything!

There are several aspects of IP due diligence that are unique to situations wherein the target company possesses a patent portfolio. A complete investigation into a company's patent portfolio can be expensive, yet the cost is typically a drop in the bucket when compared to the cost of litigating a patent infringement claim. Carefully identifying the goals of the IP due diligence investigation will often eliminate the need to completely analyze over half of a company's patents. After all, there is no need to perform due diligence on outdated IP that the company no longer uses. Alternatively, IP that is essential to a company's operations should be afforded additional scrutiny.

An IP due diligence plan should include an infringement analysis of the company's key IP assets. Key patents should be analyzed first to determine if they sufficiently cover the product line of interest. It is not uncommon to find that a company's patent portfolio does not adequately protect their main product lines.

The analysis should then turn to competitor's products. It is essential to identify potential infringement lawsuits during the due diligence investigation. One must determine both whether competing products infringe the target company's patents and if the target company's products infringe patents owned by third parties. During this investigation the IP due diligence team can also identify whether the target company's patents are very broad and strong or narrow and weak. The strength of patents has a direct relationship to their value.

A target company may be willing to contribute to the cost of the infringement analysis portion of the IP due diligence. This is because a non-infringement opinion from counsel can protect a company from claims of willful patent infringement. When a company relies in good faith on a competent opinion of an attorney that the company's product does not infringe a third party's patent, the company will not be held to be a willful infringer. This is important because actual damages can be increased threefold in cases of willful infringement.

Comprehensive due diligence investigations into trademark, copyright, and trade secret matters are not nearly as involved as patent investigations. However, when mergers or acquisitions involve ownership transfer of valuable trademarks it is imperative to investigate the validity, ownership, and potential infringement claims of the mark.

Conclusion

IP due diligence is necessary to avoid costly mistakes and properly determine the value of business transactions involving IP. This is true for both traditional brick and mortar companies and high tech companies. The specialized nature of IP due diligence requires that an IP attorney be retained to properly perform the investigations.

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Tuesday, March 25, 2008

[a business opportunity] Digest Number 39389

Messages In This Digest (25 Messages)

1.: Genuine Lifetime Income!! , 3/25/2008, 12:00 pm From: abusinessopportunity@yahoogroups.com

2.: The pay per lead program, 3/25/2008, 12:00 pm From: abusinessopportunity@yahoogroups.com

3.: WealthToolbox can help you start earning this week. , 3/25/2008, 12: From: abusinessopportunity@yahoogroups.com

4.: Attention all Mom's!!!! From: Michelle's Advertising Service

5.1.: Start Earning NOW !!!! It's Quick and Easy! From: Business-Mart

6.: Become A Super Affiliate , 3/25/2008, 12:00 pm From: abusinessopportunity@yahoogroups.com

7a.: If you are looking for a love!! From: Gina

8a.: Check out: http://www.knowledge2freedom.com From: Diane Cleak

9a.: The Ultimate Email Spider!, 3/25/2008, 1:00 pm From: abusinessopportunity@yahoogroups.com
9b.: The Ultimate Email Spider!, 3/25/2008, 1:00 pm From: abusinessopportunity@yahoogroups.com

10.: Join our Group Your Advertising Forum and Post your Ads. From: youradvertisingforum

11.1.: Instantly Create High Profit Information Products to Sell On eBay! From: fornox

12a.: Email 5 Million Real Double Opt In Subscribers DAILY! From: Juan Novielli

13.: Attention All Home Business People! From: Michelle's Advertising Service

14.: Japanese Nude Girls Photos From: Japanese Nude Babes

15a.: Get Your Share of this budding BILLION Dollar Company From: Jeannette Leduc

16.1.: REAL HOME BUSINESS OPPORTUNITIES THAT REALLY PAY From: wyoming_singles

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18.: A Worldwide Recession Is Coming: Let Us Payoff ALL Your Bills!, 3/25 From: abusinessopportunity@yahoogroups.com

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20.: Genuine Lifetime Income!! , 3/25/2008, 1:00 pm From: abusinessopportunity@yahoogroups.com

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Messages

1.: Genuine Lifetime Income!! , 3/25/2008, 12:00 pm

Posted by: "abusinessopportunity@yahoogroups.com" abusinessopportunity@yahoogroups.com

Tue Mar 25, 2008 11:43 am (PDT)

Reminder from: abusinessopportunity Yahoo! Group
http://groups.yahoo.com/group/abusinessopportunity/cal

Genuine Lifetime Income!!
Tuesday March 25, 2008
12:00 pm - 1:00 pm
(This event repeats every day.)
Location: Genuine Lifetime Income!!

Notes:
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Note : If u want to make genuine and handsome Income, please login immediately otherwise please ignore.

Notice; u r receiving this message because u r the member of yahoo groups

Thank You

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2.: The pay per lead program, 3/25/2008, 12:00 pm

Posted by: "abusinessopportunity@yahoogroups.com" abusinessopportunity@yahoogroups.com

Tue Mar 25, 2008 11:46 am (PDT)

Reminder from: abusinessopportunity Yahoo! Group
http://groups.yahoo.com/group/abusinessopportunity/cal

The pay per lead program
Tuesday March 25, 2008
12:00 pm - 1:00 pm
(This event repeats every day.)
Location: http://lil-url.com/4677/

Notes:
I thought you might be interested in this little
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made $58 so far from it. OK! not a fortune but a pretty good return on my investment wouldnt you say?
PS If you buy it then PROMOTE it - you'll definitely make some
cash if you do.

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3.: WealthToolbox can help you start earning this week. , 3/25/2008, 12:

Posted by: "abusinessopportunity@yahoogroups.com" abusinessopportunity@yahoogroups.com

Tue Mar 25, 2008 11:46 am (PDT)

Reminder from: abusinessopportunity Yahoo! Group
http://groups.yahoo.com/group/abusinessopportunity/cal

WealthToolbox can help you start earning this week.
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12:00 pm - 1:00 pm
(This event repeats every day.)
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Notes:
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Your account will grow by $20 for each new member you personally refer (known as your Level 1 referrals). Plus, we'll add $20 to your account for each new member they refer (your Level 2), and so on for five levels of referrals

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4.: Attention all Mom's!!!!

Posted by: "Michelle's Advertising Service" michellesadbusiness@michellesadvertisingservice adservice1009

Tue Mar 25, 2008 11:49 am (PDT)

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5.1.: Start Earning NOW !!!! It's Quick and Easy!

Posted by: "Business-Mart" 41advertising@41marketing.com adby41marketing06

Tue Mar 25, 2008 11:49 am (PDT)

Get paid to click on ads and visit websites.

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Some days you will have more clicks available !!!

Start earning NOW! Click Here: http://bux.to/?r=maluisa

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6.: Become A Super Affiliate , 3/25/2008, 12:00 pm

Posted by: "abusinessopportunity@yahoogroups.com" abusinessopportunity@yahoogroups.com

Tue Mar 25, 2008 11:49 am (PDT)

Reminder from: abusinessopportunity Yahoo! Group
http://groups.yahoo.com/group/abusinessopportunity/cal

Become A Super Affiliate
Tuesday March 25, 2008
12:00 pm - 1:00 pm
(This event repeats every day.)
Location: http://lil-url.com/affiliatemarket/

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7a.: If you are looking for a love!!

Posted by: "Gina" gionalianagio@yahoo.com gionalianagio

Tue Mar 25, 2008 11:50 am (PDT)

If you are looking for a love!!
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8a.: Check out: http://www.knowledge2freedom.com

Posted by: "Diane Cleak" syst77@yahoo.com syst77

Tue Mar 25, 2008 11:55 am (PDT)

Hi Friend,

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We are living in the richest times in history. We earn more than our parents could imagine, and yet we have the highest rate of personal debt the world has ever seen!

Best wishes

Diane

http://www.knowledge2freedom.com

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9a.: The Ultimate Email Spider!, 3/25/2008, 1:00 pm

Posted by: "abusinessopportunity@yahoogroups.com" abusinessopportunity@yahoogroups.com

Tue Mar 25, 2008 11:58 am (PDT)

Reminder from: abusinessopportunity Yahoo! Group
http://groups.yahoo.com/group/abusinessopportunity/cal

The Ultimate Email Spider!
Tuesday March 25, 2008
1:00 pm - 2:00 pm
(This event repeats every day.)
(The next reminder for this event will be sent in 34 minutes.)
Location: http://www.myemailspider.com/extract/joined.aspx?afl=42574
Street: 2614 Harvey Road
City State Zip: Beaufort, S.C. 29902
Phone: 843-278-5289

Notes:
This is a fantastic program that can quickly collect thousands of targeted e-mail addresses -- all at the click of a button. Just enter a few keywords for the market you're trying to reach, and it'll search the Web and extract every e-mail address it finds. This is an in-expensive source of contacts and they give you a free trial period to test their system. Check it out at: http://www.myemailspider.com/extract/joined.aspx?afl=42574

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9b.: The Ultimate Email Spider!, 3/25/2008, 1:00 pm

Posted by: "abusinessopportunity@yahoogroups.com" abusinessopportunity@yahoogroups.com

Tue Mar 25, 2008 12:25 pm (PDT)

Reminder from: abusinessopportunity Yahoo! Group
http://groups.yahoo.com/group/abusinessopportunity/cal

The Ultimate Email Spider!
Tuesday March 25, 2008
1:00 pm - 2:00 pm
(This event repeats every day.)
Location: http://www.myemailspider.com/extract/joined.aspx?afl=42574
Street: 2614 Harvey Road
City State Zip: Beaufort, S.C. 29902
Phone: 843-278-5289

Notes:
This is a fantastic program that can quickly collect thousands of targeted e-mail addresses -- all at the click of a button. Just enter a few keywords for the market you're trying to reach, and it'll search the Web and extract every e-mail address it finds. This is an in-expensive source of contacts and they give you a free trial period to test their system. Check it out at: http://www.myemailspider.com/extract/joined.aspx?afl=42574

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10.: Join our Group Your Advertising Forum and Post your Ads.

Posted by: "youradvertisingforum" youradvertisingforum@gmail.com youradvertisingforum

Tue Mar 25, 2008 12:01 pm (PDT)

*http://finance.groups.yahoo.com/group/youradvertisingforum/join*

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11.1.: Instantly Create High Profit Information Products to Sell On eBay!

Posted by: "fornox" ayse_marketing_004@yahoo.com ayse_marketing_004

Tue Mar 25, 2008 12:02 pm (PDT)

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12a.: Email 5 Million Real Double Opt In Subscribers DAILY!

Posted by: "Juan Novielli" novatek2005@yahoo.ca computercampaign

Tue Mar 25, 2008 12:02 pm (PDT)

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13.: Attention All Home Business People!

Posted by: "Michelle's Advertising Service" michellesadbusiness@michellesadvertisingservice adservice1009

Tue Mar 25, 2008 12:06 pm (PDT)

Attention All Home Business People!

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14.: Japanese Nude Girls Photos

Posted by: "Japanese Nude Babes" ramkisuryan@gmail.com bizhyip

Tue Mar 25, 2008 12:16 pm (PDT)

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15a.: Get Your Share of this budding BILLION Dollar Company

Posted by: "Jeannette Leduc" yahoogrmail5@gmail.com maje255

Tue Mar 25, 2008 12:16 pm (PDT)

THE WIN NETWORK!

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16.1.: REAL HOME BUSINESS OPPORTUNITIES THAT REALLY PAY

Posted by: "wyoming_singles" wyoming_singles@yahoo.com wyoming_singles

Tue Mar 25, 2008 12:29 pm (PDT)

REAL HOME BUSINESSES WHICH EARN REAL MONEY

http://www.globefetch.com/X2aG9tZS1idXNpbmVzcw.html

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17a.: Get The Power To Control Your Destiny

Posted by: "Demis Kyprianou" costnonot@yahoo.ie costnonot

Tue Mar 25, 2008 12:35 pm (PDT)

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18.: A Worldwide Recession Is Coming: Let Us Payoff ALL Your Bills!, 3/25

Posted by: "abusinessopportunity@yahoogroups.com" abusinessopportunity@yahoogroups.com

Tue Mar 25, 2008 12:40 pm (PDT)

Reminder from: abusinessopportunity Yahoo! Group
http://groups.yahoo.com/group/abusinessopportunity/cal

A Worldwide Recession Is Coming: Let Us Payoff ALL Your Bills!
Tuesday March 25, 2008
1:00 pm - 2:00 pm
(This event repeats every day.)

Notes:
Try it risk-free, today!
www.we-pay-your-debts.biz/mar08

All Rights Reserved
Copyright © 2008
Yahoo! Inc.
http://www.yahoo.com

Privacy Policy:
http://privacy.yahoo.com/privacy/us

Terms of Service:
http://docs.yahoo.com/info/terms/

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19a.: ((((((((((((((( WITHOUT INVESTMENT JOB))))))))))))))))

Posted by: "**Bill**Gates** ." venkat_raja17@yahoo.co.in venkat_raja17

Tue Mar 25, 2008 12:41 pm (PDT)

((((((((((((((( WITHOUT INVESTMENT JOB))))))))))))))))
For more details please log on to

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19b.: ((((((((((((((( WITHOUT INVESTMENT JOB))))))))))))))))

Posted by: "**Bill**Gates** ." venkat_raja17@yahoo.co.in venkat_raja17

Tue Mar 25, 2008 12:42 pm (PDT)

((((((((((((((( WITHOUT INVESTMENT JOB))))))))))))))))
For more details please log on to

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PLEASE COMPLETE THE FOUR STEPS TO STEP UP YOUR FUTURE

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STEP 2.CLICK THE PROCEED BUTTON AT THE END OF THE
PAGE,

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STEP 4.CHECK UR EMAIL NOW, YOU WILL BE GET MAIL FROM
SFIMG

STEP 5.CONFIRM YOUR REGISTRATION

YOU CAN JOIN MEMBERS ONLY AFTER YOU CONFIRM YOUR
REGISTRATION

You will paid in US $ for each member joining
under uou. They also should confirm
thir registration. You can use free ads or yahoo
groups to reach members as i reached you.
Daily I am posting in 50 groups, and I am able to join
atleast 5 members a day.

Its easy way to earn money, So do not delay in
your decision of accept in it as your
full-time income. While you may not become rich
overnight, you will become rich gradually.

Thank you,

With Regards,

S.Raja

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19c.: ((((((((((((((( WITHOUT INVESTMENT JOB))))))))))))))))

Posted by: "**Bill**Gates** ." venkat_raja17@yahoo.co.in venkat_raja17

Tue Mar 25, 2008 12:42 pm (PDT)

((((((((((((((( WITHOUT INVESTMENT JOB))))))))))))))))
For more details please log on to

http://www.quickinfo247.com/9962547/cb
PLEASE COMPLETE THE FOUR STEPS TO STEP UP YOUR FUTURE

STEP 1.FILL THE FORM AND SIGN UP, NEXT WINDOW OPENS

STEP 2.CLICK THE PROCEED BUTTON AT THE END OF THE
PAGE,

STEP 3.FILL YOUR PROFILE,SUBMIT

STEP 4.CHECK UR EMAIL NOW, YOU WILL BE GET MAIL FROM
SFIMG

STEP 5.CONFIRM YOUR REGISTRATION

YOU CAN JOIN MEMBERS ONLY AFTER YOU CONFIRM YOUR
REGISTRATION

You will paid in US $ for each member joining
under uou. They also should confirm
thir registration. You can use free ads or yahoo
groups to reach members as i reached you.
Daily I am posting in 50 groups, and I am able to join
atleast 5 members a day.

Its easy way to earn money, So do not delay in
your decision of accept in it as your
full-time income. While you may not become rich
overnight, you will become rich gradually.

Thank you,

With Regards,

S.Raja

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20.: Genuine Lifetime Income!! , 3/25/2008, 1:00 pm

Posted by: "abusinessopportunity@yahoogroups.com" abusinessopportunity@yahoogroups.com

Tue Mar 25, 2008 12:42 pm (PDT)

Reminder from: abusinessopportunity Yahoo! Group
http://groups.yahoo.com/group/abusinessopportunity/cal

Genuine Lifetime Income!!
Tuesday March 25, 2008
1:00 pm - 2:00 pm
(This event repeats every day.)
Location: Genuine Lifetime Income!!

Notes:
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Note : If u want to make genuine and handsome Income, please login immediately otherwise please ignore.

Notice; u r receiving this message because u r the member of yahoo groups

Thank You

All Rights Reserved
Copyright © 2008
Yahoo! Inc.
http://www.yahoo.com

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http://privacy.yahoo.com/privacy/us

Terms of Service:
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21.1.: Discover How You Can Easily Make $4000/Week Without Selling Or Adver

Posted by: "Bisto" gionalianagio@yahoo.com gionalianagio

Tue Mar 25, 2008 1:03 pm (PDT)

Discover How You Can Easily Make $4000/Week Without Selling Or Advertising...

Imagine a money making system that requires absolutely no selling, advertising,
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==========================
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This is not a spam. You receive this e-mail because we are in the same group. Please change your group message delivery setting to "Web Only" or choose "Leave Group" if you wish to be removed from future mailings. Or forward the whole e-mail to zonta43@hotmail.com with the subject "remove" if you don't know how to do it, and then wait for our instructions. If you are a group ADMIN and no longer wish to receive our post, please remove us from your group. We don't own or even know your e-mail address, so please let us know which group you are in when you write to us and, most importantly, DO read our reply. Thanks for your understanding.

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22.1.: www.internetloanplace.com Home / Business Loans ( 70 ) Fin. Tools!

Posted by: "wyoming_singles" wyoming_singles@yahoo.com wyoming_singles

Tue Mar 25, 2008 1:10 pm (PDT)

Loans For All Reasons in All Regions!

http://www.internetloanplace.com

Over ( 70 ) Finance and RE Spreadsheet Tools To Download for FREE!

http://www.internetloanplace.com/calculators2.htm

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Tuesday, March 25, 2008

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Posted by: "abusinessopportunity@yahoogroups.com" abusinessopportunity@yahoogroups.com

Tue Mar 25, 2008 11:43 am (PDT)

Posted by: "abusinessopportunity@yahoogroups.com" abusinessopportunity@yahoogroups.com

Tue Mar 25, 2008 11:46 am (PDT)

Posted by: "abusinessopportunity@yahoogroups.com" abusinessopportunity@yahoogroups.com

Tue Mar 25, 2008 11:46 am (PDT)

Posted by: "Michelle's Advertising Service" michellesadbusiness@michellesadvertisingservice adservice1009

Tue Mar 25, 2008 11:49 am (PDT)

Posted by: "Business-Mart" 41advertising@41marketing.com adby41marketing06

Tue Mar 25, 2008 11:49 am (PDT)

Posted by: "abusinessopportunity@yahoogroups.com" abusinessopportunity@yahoogroups.com

Tue Mar 25, 2008 11:49 am (PDT)

Posted by: "Gina" gionalianagio@yahoo.com gionalianagio

Tue Mar 25, 2008 11:50 am (PDT)

Posted by: "Diane Cleak" syst77@yahoo.com syst77

Tue Mar 25, 2008 11:55 am (PDT)

Posted by: "abusinessopportunity@yahoogroups.com" abusinessopportunity@yahoogroups.com

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Posted by: "abusinessopportunity@yahoogroups.com" abusinessopportunity@yahoogroups.com

Tue Mar 25, 2008 12:25 pm (PDT)

Posted by: "youradvertisingforum" youradvertisingforum@gmail.com youradvertisingforum

Tue Mar 25, 2008 12:01 pm (PDT)

Posted by: "fornox" ayse_marketing_004@yahoo.com ayse_marketing_004

Tue Mar 25, 2008 12:02 pm (PDT)

Posted by: "Juan Novielli" novatek2005@yahoo.ca computercampaign

Tue Mar 25, 2008 12:02 pm (PDT)

Posted by: "Michelle's Advertising Service" michellesadbusiness@michellesadvertisingservice adservice1009

Tue Mar 25, 2008 12:06 pm (PDT)

Posted by: "Japanese Nude Babes" ramkisuryan@gmail.com bizhyip

Tue Mar 25, 2008 12:16 pm (PDT)

Posted by: "Jeannette Leduc" yahoogrmail5@gmail.com maje255

Tue Mar 25, 2008 12:16 pm (PDT)

Posted by: "wyoming_singles" wyoming_singles@yahoo.com wyoming_singles

Tue Mar 25, 2008 12:29 pm (PDT)

Posted by: "Demis Kyprianou" costnonot@yahoo.ie costnonot

Tue Mar 25, 2008 12:35 pm (PDT)

Posted by: "abusinessopportunity@yahoogroups.com" abusinessopportunity@yahoogroups.com

Tue Mar 25, 2008 12:40 pm (PDT)

Posted by: "**Bill**Gates** ." venkat_raja17@yahoo.co.in venkat_raja17

Tue Mar 25, 2008 12:41 pm (PDT)

Posted by: "**Bill**Gates** ." venkat_raja17@yahoo.co.in venkat_raja17

Tue Mar 25, 2008 12:42 pm (PDT)

Posted by: "**Bill**Gates** ." venkat_raja17@yahoo.co.in venkat_raja17

Tue Mar 25, 2008 12:42 pm (PDT)

Posted by: "abusinessopportunity@yahoogroups.com" abusinessopportunity@yahoogroups.com

Tue Mar 25, 2008 12:42 pm (PDT)

Posted by: "Bisto" gionalianagio@yahoo.com gionalianagio

Tue Mar 25, 2008 1:03 pm (PDT)

Posted by: "wyoming_singles" wyoming_singles@yahoo.com wyoming_singles

Tue Mar 25, 2008 1:10 pm (PDT)

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