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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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Sunday, March 16, 2008

[a business opportunity] Digest Number 39240

a business opportunity

Messages In This Digest (25 Messages)

1.: Genuine Lifetime Income!! , 3/16/2008, 10:00 am From: abusinessopportunity@yahoogroups.com

2.: Your Online Gift Store, 3/16/2008, 10:00 am From: abusinessopportunity@yahoogroups.com

3a.: MY POWER MALL really is FR*EE. There is no cost to you. EVER From: Michelle's Advertising Service

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18.1.: Get Paid to Do Things You Love! From: eliiiiiif

19.: Genuine Lifetime Income!! , 3/16/2008, 11:00 am From: abusinessopportunity@yahoogroups.com

20.1.: 100% FULL FREE EBOOKS FOR RESELL PROFIT! From: wichita_single

21.1.: New Passive World Wide Opp...Networkers You Will Love This...Must Se From: Brett Gurney

22.1.: Auto Submit To 3,000,000+ Websites From: Bee

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24.1.: Used Furniture for Almost FREE! From: eliiiiiif

25.: Best investment you can make for your future From: nethraa18

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1.: Genuine Lifetime Income!! , 3/16/2008, 10:00 am

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

Sun Mar 16, 2008 9:40 am (PDT)

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

Genuine Lifetime Income!!
Sunday March 16, 2008
10:00 am - 11:00 am
(This event repeats every day.)
Location: Genuine Lifetime Income!!

Notes:
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Check Your Mail ID - Inbox Immediately after logging in

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2.: Your Online Gift Store, 3/16/2008, 10:00 am

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

Sun Mar 16, 2008 9:40 am (PDT)

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

Your Online Gift Store
Sunday March 16, 2008
10:00 am - 11:00 am
(This event repeats every day.)
Location: http://www.webspawner.com/users/joegriffith/index.html

Notes:
Need to find a gift or a toy then this is your place to get the online bargains you are looking for
http://www.webspawner.com/users/joegriffith/index.html

All Rights Reserved
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Yahoo! Inc.
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3a.: MY POWER MALL really is FR*EE. There is no cost to you. EVER

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

Sun Mar 16, 2008 9:40 am (PDT)

MY POWER MALL really is FR*EE. There is no cost to you. EVER.

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- There are no meetings. People already know how to shop!

- All tools are FRE*E. You are given everything you need.
http://www.mypowermall.com/biz/home/2756

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4a.: Systems work, People fail....It's that simple

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

Sun Mar 16, 2008 9:43 am (PDT)

Systems work, People fail....It's that simple!

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5a.: www.equity.2ya.com

Posted by: "WaL HomE »(¯`v´¯)" willyjay44@yahoo.com willyjay44

Sun Mar 16, 2008 9:46 am (PDT)

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6a.: Discover the HOTTEST new home business opportunity online!

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

Sun Mar 16, 2008 9:48 am (PDT)

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7.1.: Make Money from Deregulated Electricity and Natural Gas in all 50 St

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

Sun Mar 16, 2008 9:50 am (PDT)

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8a.: Get paid for 100% of your website traffic

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

Sun Mar 16, 2008 9:52 am (PDT)

Get paid for 100% of your website traffic

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9.1.: Blast Your Ad To Over 3,000,000 Websites Daily!

Posted by: "zeeeeeeeeeeeeee" zeynep_marketing_004@yahoo.com zeynep_marketing_004

Sun Mar 16, 2008 9:56 am (PDT)

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

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

Sun Mar 16, 2008 10:02 am (PDT)

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11a.: Would An Extra $500 Dollars a Day Interest You?

Posted by: "eliiiiiif" cucubeda@yahoo.com cucubeda

Sun Mar 16, 2008 10:08 am (PDT)

Let A 17 Year Old High School Student Teach You The Secrets To Earning $500 A Day Online... Without a Website, Product, or List!
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12a.: __ E.arn 5K Per Day! InCrease In.come 500%

Posted by: "lorrae50@yahoo.com" lorrae50@yahoo.com lorrae50

Sun Mar 16, 2008 10:10 am (PDT)

__ E.arn 5K Per Day! InCrease In.come 500%

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IN ONE SHORT WEEK!

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I hope and pray for all the best for you your family and
your loved ones
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Have a wonderful day
Lorna Thurston

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13.: HI Friends WATCH FULL XXX HOT HOLLYWOOD STUFF FREEE CONTINUOUS

Posted by: "ravigroups" ravigroups@yahoo.co.in ravigroups

Sun Mar 16, 2008 10:22 am (PDT)

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14.1.: Web Traffic Has Never Been Easier!

Posted by: "zeeeeeeeeeeeeee" zeynep_marketing_004@yahoo.com zeynep_marketing_004

Sun Mar 16, 2008 10:22 am (PDT)

Tired of only gettting a few hundred hits to your website every month
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If so read on…
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15.1.: TOP 1,000 D-A-T-I-N-G SITES LIST

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

Sun Mar 16, 2008 10:29 am (PDT)

Over 1,000 Dating Sites

http://www.singlessitedirectory.com

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16.1.: This weeks Ad Sale!

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

Sun Mar 16, 2008 10:30 am (PDT)

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17.: Earn *$100 a day with simple automated easy to run online business.

Posted by: "NetWorkTeam" afsreturn8@yahoo.com afsreturn8

Sun Mar 16, 2008 10:38 am (PDT)

Earn *$100 a day with simple automated easy to run online business.If
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18.1.: Get Paid to Do Things You Love!

Posted by: "eliiiiiif" cucubeda@yahoo.com cucubeda

Sun Mar 16, 2008 10:38 am (PDT)

What if I told you it was possible to get paid $10 to $90 an HOUR just to go to your favorite mall to shop, eat at your favorite restaurant, golf at your favorite course, or enjoy a movie at your local theater AND get it all for FREE! And, not only get everything for FREE and get a paycheck for it, but someone pays for the gas in your car.
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19.: Genuine Lifetime Income!! , 3/16/2008, 11:00 am

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

Sun Mar 16, 2008 10:40 am (PDT)

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

Genuine Lifetime Income!!
Sunday March 16, 2008
11:00 am - 12:00 pm
(This event repeats every day.)
Location: Genuine Lifetime Income!!

Notes:
Genuine Lifetime Income!!
http://www.moreinfo247.com/9674877/CB
Earn!! 5000 US Dollars per month without Investment

By working only one hour per day from the cyber cafe or PC

Guaranteed Earnings for Lifetime!!

100% Legal
100% No Investment
100% No Scam
100% Free Training Support
100% No Door to Door Selling Products

For more details visit :
http://www.moreinfo247.com/9674877/CB
Check Your Mail ID - Inbox Immediately after logging in

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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20.1.: 100% FULL FREE EBOOKS FOR RESELL PROFIT!

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

Sun Mar 16, 2008 10:56 am (PDT)

100% FREE TO DOWNLOAD NO REGISTRATION!
RESELL FOR PROFIT!
MANY TOPICS!

http://www.g-lks.com

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21.1.: New Passive World Wide Opp...Networkers You Will Love This...Must Se

Posted by: "Brett Gurney" brettgurney@yuhknow.com brett.gurney

Sun Mar 16, 2008 11:00 am (PDT)

Greetings Everyone...Brett Gurney here with a big heads up

This is huge and it is passive...meaning no sponsoring to earn....early positioning is not mandatory, but it helps

Those who know me well enough know that I am a full time network marketer earning a comfortable living working from home and that I help others do the same

You also know that I do not send junk... and if I say something is new, or just in pre-launch, or that we are taking pre-registration before launch, or that it can be a passive income with no sponsoring required...then that means just exactly that...and if you follow my lead you will get the jump on everyone else

Well folks this is one of those times...this IS new, but it has been in development for over a year..it IS passive, and it IS early bird registration

This is your invitation...you need to ask for the special link...you can do that right now, and get registered right now by replying to this email and asking me for the Early Bird URL...and include your phone number if you would like a call from me to answer any questions

Heres your chance to align yourself with the next internet giant

Not only will this not interfere with whatever it is you are presently doing, but you can use it to advertise whatever it is you are presently doing

If you join the program YOU WILL BE PAID.

Sponsoring is NOT REQUIRED....BUT you do get a 100% matching bonus on everyone you sponsor

This is a new Global phenomenon and a Home for EVERY Network Marketer!

Never Been Done Before

Reply to this email right now and ask me for the Early Bird URL ...and include your phone number if you would like a call from me to answer any questions

You will then receive all the information needed to make an informitive decision

Thanks

Brett Gurney
Home Based Business Entrepreneur
678-516-1927

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22.1.: Auto Submit To 3,000,000+ Websites

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

Sun Mar 16, 2008 11:03 am (PDT)

Auto Submit To 3,000,000+ Websites

Place your ad on 3,000,000 websites daily!

All members receive Life-Time Memberships and have total access to our members area 100% of the time! We make it easy to get your ads out on the Internet with minimal work.

You will not be required to sign up to 10 different services in order to get the maximum amount of traffic like many of our competitors require from you. With Total Advertising Network you can radically reduce the hours you spend each day advertising. Just insert your ad and hit blast one time and your done!

http://tinyurl.com/2tltmx

==========================
Blast your ads to 2,300,000 opportunity seekers only $5.95 or less!
http://groups.yahoo.com/group/AdvertisingBiz/message/2403

----------------------------
New Groups to post your ads FREE!!!
http://groups.yahoo.com/group/free_net_advertising
http://groups.yahoo.com/group/e_Ads
http://groups.yahoo.com/group/advertize_anything
http://groups.yahoo.com/group/biz-for-all
http://groups.yahoo.com/group/Ad_Exchange_4_All
http://groups.yahoo.com/group/1st_New_Biz_Opps
http://groups.yahoo.com/group/PostWorkAtHomeAdsHere
http://groups.yahoo.com/group/home_biz_opps_2008
http://groups.yahoo.com/group/HomeBizOpps_1
http://groups.yahoo.com/group/Post_Your_HomeBizOpps_Here
http://groups.yahoo.com/group/PostAdsHere4FREE

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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23a.: SHHHH.....it is a Secret...

Posted by: "tom staszewski" coldduck@safelist-mail.com coldduck24

Sun Mar 16, 2008 11:05 am (PDT)

Hi

Ok here it is I just got this from a person
person in australia I am in other internet ventures with.
Brand new get in if you can.

http://secretmlm.com/index.php?spon=1069

One time payment of $50 be turned into $50,000? For many it doesnt make sense. The answer is quite simple. It is based on leverage. that is it.

http://secretmlm.com/index.php?spon=1069

The masses of people lead lives of quiet desperation,
because they lack a sound plan through which to accumulate a fortune.

-Napoleon Hill, Think and Grow Rich

Sincerely,

Tom Staszewski.
tom@homecash.ws

doing business at
http://www.homecash.ws

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24.1.: Used Furniture for Almost FREE!

Posted by: "eliiiiiif" cucubeda@yahoo.com cucubeda

Sun Mar 16, 2008 11:05 am (PDT)

Click to Enter The Ultimate Source for Discount Used Furniture Nationwide
Where you can find used furniture ANYONE can afford!
http://clickst.FURNITURE.hop.clickbank.net/
*
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25.: Best investment you can make for your future

Posted by: "nethraa18" nethraa18@yahoo.com.au nethraa18

Sun Mar 16, 2008 11:06 am (PDT)

invest your money on life insurance, mutual funds,...
http://www.way2victory.com

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Sunday, March 16, 2008

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

Sun Mar 16, 2008 9:40 am (PDT)

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

Sun Mar 16, 2008 9:40 am (PDT)

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

Sun Mar 16, 2008 9:40 am (PDT)

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

Sun Mar 16, 2008 9:43 am (PDT)

Posted by: "WaL HomE »(¯`v´¯)" willyjay44@yahoo.com willyjay44

Sun Mar 16, 2008 9:46 am (PDT)

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

Sun Mar 16, 2008 9:48 am (PDT)

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

Sun Mar 16, 2008 9:50 am (PDT)

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

Sun Mar 16, 2008 9:52 am (PDT)

Posted by: "zeeeeeeeeeeeeee" zeynep_marketing_004@yahoo.com zeynep_marketing_004

Sun Mar 16, 2008 9:56 am (PDT)

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

Sun Mar 16, 2008 10:02 am (PDT)

Posted by: "eliiiiiif" cucubeda@yahoo.com cucubeda

Sun Mar 16, 2008 10:08 am (PDT)

Posted by: "lorrae50@yahoo.com" lorrae50@yahoo.com lorrae50

Sun Mar 16, 2008 10:10 am (PDT)

Posted by: "ravigroups" ravigroups@yahoo.co.in ravigroups

Sun Mar 16, 2008 10:22 am (PDT)

Posted by: "zeeeeeeeeeeeeee" zeynep_marketing_004@yahoo.com zeynep_marketing_004

Sun Mar 16, 2008 10:22 am (PDT)

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

Sun Mar 16, 2008 10:29 am (PDT)

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

Sun Mar 16, 2008 10:30 am (PDT)

Posted by: "NetWorkTeam" afsreturn8@yahoo.com afsreturn8

Sun Mar 16, 2008 10:38 am (PDT)

Posted by: "eliiiiiif" cucubeda@yahoo.com cucubeda

Sun Mar 16, 2008 10:38 am (PDT)

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

Sun Mar 16, 2008 10:40 am (PDT)

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

Sun Mar 16, 2008 10:56 am (PDT)

Posted by: "Brett Gurney" brettgurney@yuhknow.com brett.gurney

Sun Mar 16, 2008 11:00 am (PDT)

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

Sun Mar 16, 2008 11:03 am (PDT)

Posted by: "tom staszewski" coldduck@safelist-mail.com coldduck24

Sun Mar 16, 2008 11:05 am (PDT)

Posted by: "eliiiiiif" cucubeda@yahoo.com cucubeda

Sun Mar 16, 2008 11:05 am (PDT)

Posted by: "nethraa18" nethraa18@yahoo.com.au nethraa18

Sun Mar 16, 2008 11:06 am (PDT)

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