The Intellectual Property Audit: Finding What You Have (Part II of V)

Website design By BotEap.comA traditional definition of an intellectual property audit is “a listing of an organization’s intellectual property assets.” An organization is required to meet its due diligence requirements for mergers, acquisitions, or other transfers. Today, organizations view an intellectual property audit not only as a balance of intangible assets, but also, more importantly, as a self-assessment in which the organization constantly and consistently engages to determine the value of its own assets. assets, determine how to best capitalize on those assets, and stay abreast of the changing values ​​of your assets in the face of the ever-changing economic and legal ecosphere.

Website design By BotEap.comWho Should Conduct an Intellectual Property Audit?

Website design By“Intellectual property audit” is perhaps a misnomer. It indicates that the audit is a mere count of assets, and the person conducting the audit simply adds up the intellectual property found in the organization and reports the value. Could not be farther from the truth. An intellectual property audit is an inherently legal undertaking and therefore must be performed by a team consisting of at least one attorney with experience in intellectual property law, either an internal or external attorney, or by internal staff. of the organization, if they have sufficient knowledge of the organization’s intellectual property to perform the activities required for an organization’s intellectual property audit. An intellectual property audit is not an accounting function. Intellectual property auditing is an assessment of the legal status and value of an organization’s intellectual property, especially in those areas where the organization’s marketing and management objectives and the organization’s existing protection of intellectual property in some way they do not adapt well to each other. The attorney (s) and other team members (the team may consist of the IP attorney and at least one representative from each of the management, marketing, and technology areas; due to the inherent legal importance of the audit of intellectual property, at least one member of the team must be an intellectual property attorney) selected to perform the audit must therefore have some experience with the organization’s technology, marketing and management objectives of the organization, and be somewhat familiar with what the protection of intellectual property entails: processing the application for registration, maintaining the property, and defending the intellectual property through the litigation and appeal process.

Website design By BotEap.comWhen to conduct an intellectual property audit

Website design By BotEap.comWhen should an organization consider conducting an intellectual property audit? Attorney Leslie J. Lott has identified several appropriate times in the life of an organization for intellectual property audits; In this subsection, I borrow a lot from your listing and comment.

Website design By BotEap.comNew intellectual property management

Website design By BotEap.comIf the organization has a new IP management, the new IP manager should conduct a thorough IP audit to become familiar with the status of the portfolio.

Website design By BotEap.comMerger, Acquisition, Purchase of Significant Shares

Website design By BotEap.comA significant corporate change (merger, acquisition, significant purchase of shares) can affect the ownership of intellectual property; this is another sign for an intellectual property audit.

Website design By BotEap.comTransfer or assignment of interests in intellectual property

Website design By BotEap.comA transfer or assignment of intellectual property from one organization to another requires an intellectual property audit of the intellectual property of both organizations. In this case, the intellectual property audit enables organizations to ensure that the transfer or assignment satisfies the interests of both by ensuring that the intellectual property is properly protected and enhances the existing intellectual property interests of the acquiring organization, and that the intellectual property leave nothing unplanned. vulnerabilities for the organization transferring the interests.

Website design By BotEap.comLicensing program

Website design By BotEap.comAn intellectual property audit should be performed when an organization establishes an intellectual property license or licensing program, and on a regular basis thereafter. This is important whether the organization is the licensor or the licensee.

Website design By BotEap.comIf the organization licenses its intellectual property to others, of course, it must own the intellectual property that it is licensing. Also, there should be no existing licenses that interfere with the proposed new license.

If the organization is the licensee obtaining the intellectual property rights of another, the audit determines that the scope and extent of the license to be obtained is adequate for its purposes.

Website design By BotEap.comSignificant change in the law

Website design By BotEap.comA significant change in the case or statutory law may require an organization to reevaluate its intellectual property.

One of those statutory law changes occurred when Congress passed the federal anti-dilution statute. This change in the law significantly impacts the analysis of an organization’s potential liability for infringement of the trademarks of others and also affects the analysis of whether or not others are infringing the rights of the organization.

Website design By BotEap.comFour examples of jurisprudence that raise the need for an intellectual property audit are the Qualitex case (dealing with the protection of color as a registered trademark), the Sony case (dealing with the question of whether a device that can be used for copyright infringement is itself a copyright infringement), the Festus case (dealing with the Doctrine of Equivalents in patent processing), and the KSR case (dealing with the concept of obviousness in patent law).

Website design By BotEap.comFinancial transactions involving intellectual property

Website design By BotEap.comFinancial transactions involving intellectual property may include loans, public offerings, private investments, or any other transaction that directly involves an organization’s intellectual property, or in which the organization’s intellectual property is or may be significant.

Website design By BotEap.comProgram or policy for new clients

Website design By BotEap.comAn organization must conduct an intellectual property audit in relation to new programs or policies, such as an aggressive overseas filing program, a new marketing approach or direction, expansion of a product or service line, corporate reorganization or any other corporate change that may affect the interaction between the organization’s intellectual property and the market.

Website design By BotEap.comContinued in Part III.

Website design By BotEap.comCopyright 2003, 2007, Nancy Baum Delain. All rights reserved.

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