By Kevin Houchin
on Monday, February 20th, 2006 | No Comments
Intellectual Property Audits
The Intellectual Property Audit is the first step toward an integrated intellectual property management system for your business. An IP Audit is a hunt for under-utilized assets, waste, and potential legal exposures. An IP Audit has four basic purposes:
Protection of company-created assets
Leveraging income generating intellectual property
Compliance with existing licenses to and from the company
Avoiding infringement of the intellectual property of others
Companies should conduct a partial or complete IP Audit as a regularly scheduled process, or when:
Conducting strategic planning initiatives
Facing a significant stock purchase or debt financing
Merger, acquisition, sale, or closure
There have been significant changes in applicable laws
Beginning a branding campaign
Types of Assets
Our IP Audits focus on the following company-created intellectual assets:
Work Made For Hire
Trademarks and other Branding Elements Product Names
Internet Domain Names
Colors, Scents, Shapes
Other indicators of source.
Copyrighted Materials Documents, Articles, Marketing Materials, etc.
What would you NOT want your competitors to know?
What are you doing to protect those secrets?
What should you be doing to protect those secrets?
Patents (if applicable)
Master Works (if applicable)
Materials Used WITHOUT Express License
Assets Used WITH Express License Software
What We’ll Look For
The IP Audit is designed to discover and document:
Income Generating Assets
Ownership of Assets
Records of Transfers
Perfection of Security Interests
Compliance with Statutory Formalities
Potential Infringement Issues
Defenses to any Potential Infringement Issues
We approach the project as follows:
Define the Scope of the Audit. Will it be comprehensive, or just a look at your trademarks and trade secrets?
Develop the Schedule
Gather Information General Questionnaires
IP Inventories (as defined in scope of work) Registered Copyrights
General Business/Strategic/Marketing/Sales Plan
Graphic Standards Manual
Software License Inventory
Trade Secret Information
Employee Invention Journals (when appropriate)
Response Planning Policy Development
Employee Education Programs
Registration of Assets
License Development, Planning, Negotiation.