Intellectual Property (IP) Audits

One of the functions that an attorney can provide, and that The Griess Law Firm, LLC offers to clients, is the IP Audit.  Many of the fundamental assets held and used by businesses are intellectual property assets.  However, many times, businesses have not taken the actions they are able to take to fully protect or realize the value of their assets.  This can be as simple as registering the copyright for a software application to secure enforcement rights, modifying contracts to make sure the ownership rights of IP assets are clear, or carefully drafting limited licenses for copyrighted design work to better realize the value of each of the rights being licensed.

The Process

The process of doing an IP Audit is relatively straight forward.  The attorney conducts interviews with key persons within the business to identify the potential intellectual property issues within the business.  Then the attorney collects and reviews basic documentation related to the intellectual property.  As the interviews and documentation lead, the attorney identifies the intellectual property, catalogs it, and and researches its current legal status and use.  The attorney takes this information and prepares an IP Audit Report or letter which outlines the IP in the business, its current status, and provides a list of recommendations or action items for the business to implement over the next months or years.

The Highlights

An IP audit can cover a lot of territory including patents, trademarks, copyrights, trade secrets, use of confidentiality agreements, non-disclosure agreements, and licenses or independent contracts.  Generally, there are common highlights from an IP Audit.  These can include the following:

• Identifying potential IP such as patents, copyrights, or trade secrets not previously recognized or treated as such;
• Taking steps to harness the value and rights associated with IP assets such as investigating and filing patents, implementing licenses for use of copyrighted material, putting in place confidentiality agreements related to trade secrets, or registering a trademark;
• Educating the business and management on the rights and obligations related to the IP assets;
• Ensuring appropriate ownership agreements are in place regarding IP with employees and contractors, particularly regarding patents and copyrights;
• Putting in place enforcement and monitoring programs for IP assets; and,
• Limiting exposure to potential liability from misuse or infringement of IP rights or licenses used by the business.

The Value Added

An IP Audit is worth the investment for several reasons.  First, it helps the business identify its IP assets.  Second, it helps the client manage and protect its assets so it can take full advantage of them.  Third, it puts the business in the position to enforce its rights regarding its IP assets and therefore maintain the value of those assets.  Fourth, it provides the business with an inventory of a key asset group that will be very important for any potential transaction involving the business such as a sale or merger.  And finally, the IP Audit Report itself is a documents the business and its managers can use for action regarding its IP asset development and business planning.

Conclusion

As the economy starts to gain more steam and businesses work on positioning themselves to take advantage of opportunities, businesses should consider putting their intellectual property assets in order to inform, and facilitate, their business plans.