Practice Area:
IP Audits
Ensuring that the intellectual property (IP) which inventors or buyers of business are acquiring is valid, subsisting, broad in scope and enforceable has never been more important. Questions of patent and trademark enforceability cannot be answered by untrained businessmen, even when the patent and trademarks are registered.
What is an IP Audit?
An IP audit provides an investor, buyer or business owner with a comprehensive assessment of the scope, validity and enforceability of intellectual property holdings, such as patents, trademarks copyrights, and domain names. It must be done a registered patent attorney in most cases, and focuses on four key areas:
• Identifying the IP assets within the organization being audited;
• Identifying any problems that exist with the IP ownership;
• Identifying any defects in title or enforceability of the IP; and
• Identifying any unprotected intellectual property assets.
“Business owners, investors, and buyers are quite often confused about not just what IP they actually have, but what the scope of its enforceability is.”
Contact
311 S. State Street, Suite 450
Salt Lake City, UT 84111
801-347-5173
steve@westernip.com
When Should an IP Audit Be Done?
IP Audits are often conducted when a business is about to be sold or a substantial investment in the business is about to be made. They are often ordered by venture capitalists, brokers, buyers, or busineess owners during the due diligence period of a business sale. They may be conducted in connection with mergers and acquisitions, assets purchases, private equity purchases or subscriptions, or preparatory to listing a business for sale.
What is the Process?
We first prepare a plan for the audit and define the scope of the audit, including the types of IP to be audited (i.e., patents, trademarks, domain names, copyrights, etc.). We correspond with a representative from management with of the business owner, investor, or buyer to define the areas of inquiry for the audit, and establish the time schedule within which the audit will take place. We provide a list of the preliminary documents for review which we need, and then acquire the file wrappers of patents and trademarks from the U.S. Patent and Trademark Office (USPTO). We also decide which members of the organization — present and past — to interview.
We review corporate documents and corporate formation to determine which branches within a corporation should ownn IP assets and the class of the asset. We determine whether renewal fees, maintenance fees, and licensing fees have been paid, and when expiration dates for the IP fall. We determine a status of each IP asset.
We analyze vulnerabilities with the IP, including whether trademarks on the supplemental register, whether patents have gone abandoned, and whether copyright have been disclaimed and to what extent. We produce a comprehensive report identifying not just the strengths and weaknesses with the IP, but also the scope of each IP along with recommendations for strengthening the IP.
The audit team then documents the audit results and presents them to the organization, with recommendations as to where, if at all, intellectual property protection is inappropriately thin and where, if at all, protection can be augmented.
We have handled many IP audits, and offer RESULTS-ORIENTED REPRESENTATION® to our clients (a slogan we have trademarked).