Intellectual property rights audit - find what you have (Part II)

One of the traditional definitions of intellectual property audits is "cataloging the intellectual property assets of the organization". Organizations need to meet the company's due diligence requirements for mergers, acquisitions, or other transfers. In today's organization, the audit of intellectual property rights is important not only as a balance sheet of intangible assets, but also as an important thing, self-evaluation that the organization consistently and consistently participates in judging the value of their assets Take advantage of those assets and face the constantly changing economic and legal ecosphere so as not to be late for the changing value of the assets.

Who should conduct intellectual property audits?

"Intellectual property rights audit" is a misunderstanding. This indicates that the audit simply counts up the assets and the person performing the audit simply adds intellectual property within the organization and reports its value. There must not be something different from the truth. Intellectual property rights audit is essentially a legal business conducted by a team of at least one attorney contract by a lawyer with experts in intellectual property laws of in-house or outside lawyers, or by an internal personnel It must be before it is done. If you have sufficient knowledge of the organization's intellectual property to carry out the activities necessary for the organization's intellectual property audit, the organization. Intellectual property audit is not an accounting function. Intellectual property rights audit is the assessment of the legal status and value of the organization's intellectual property, in particular the organizational marketing and management goals and the protection of the organization's intellectual property rights Somehow, it does not suit each other well . Lawyers or lawyers and other team members (Teams may consist of intellectual property lawyers and at least one representative from each of the management, marketing and technical fields; the specific law of intellectual property audit Depending on the significance, you must have prior knowledge of at least one member organization's technology, organizational marketing and management goals, and you must be familiar with something relevant to intellectual property to a certain extent: registration application Prosecution of property, maintenance of property, protection through intellectual property protection through litigation and appeal process.

When to conduct intellectual property rights audit

When is the time when the organization should consider implementing intellectual property audits? Lawyer Leslie J. Lott has identified several specific times in the life of the organization for intellectual property audits. In this subsection, I am borrowing greatly from her listing and commentary.

New Intellectual Property Management

If the organization has new intellectual property management, the new intellectual property manager needs to conduct thorough intellectual property audits conducted to familiarize the status of the portfolio.

Merger, acquisition, important stock purchase

Significant changes in the company (mergers, acquisitions, important stock purchases) may affect intellectual property rights. This is another signal of intellectual property audit.

Transfer or transfer of intellectual property rights

The transfer or transfer of intellectual property from one organization to another requires an audit of the intellectual property rights of both organizations. intellectual property. Here, the intellectual property audit can confirm that relocation or transfer fulfills the interests of both, by guaranteeing that the intellectual property is adequately protected, and it is possible for the intellectual property audit We do not leave unplanned vulnerabilities in organizations that strengthen existing intellectual property rights and transfer profits.

License program

After organizations set intellectual property licenses or licensing programs, it is necessary to conduct intellectual property audits on a regular basis. Whether your organization is a licensor or a licensee, this is important.

If an organization licenses its intellectual property to others, it must of course possess the intellectual property that it licenses. Also, existing licenses that hinder the proposed new licenses shall not exist.
If the organization is a licensee and you acquire the intellectual property rights of another licensee, the scope and extent of the license you acquire are deemed suitable for your purpose.

Important changes in law

Due to significant changes in judicial precedents or laws, organizations may require revaluation of intellectual property.
Such changes in laws of law occurred when Congress passed federal anti-dilution law. Changes in this law will have a major impact on the analysis of the organization's potential liability for infringement of trademark rights by others and will also affect the analysis of whether other persons infringe the rights of the organization.

Four examples of case laws evoking the need for intellectual property audits are: Qualitex Case (dealing with color protection as a trademark), Sony (Dealing with the question as to whether the device subject to copyright is infringement), the case where it is itself a copyright infringement), Fest Case (dealing with equivalent doctrine in patent litigation), and KSR Case (dealing with the concept of obviousness in patent law).

Financial transactions on intellectual property

Financial transactions, including intellectual property, may include loans, public offerings, private placement, or the organization's intellectual property directly, or the organization's intellectual property may be important or other important Transactions are included.

New client program or policy

Organizations are concerned with new programs and policies such as aggressive foreign filing programs, new marketing approaches and directions, expansion of product lines and services, corporate restructuring, or corporate changes that may affect companies It is necessary to implement intellectual property rights audit. Interaction between the intellectual property of the organization and the market.

Continue to Part III.