Ip audit and strategy studentcopy

{

The First Step in Creating Your IP Strategy

The Business of the IP Audit

Wayne State University Law School Program for Entrepreneurship and Business Law

Purpose of your Intellectual Property Strategy

Your IP strategy, whether global or local, should aim to align your company’s use of its intangible assets with its overall goals.

• Changes in needs - gain/loss of line of business or

competitors.

• Changes in IP - new inventions, end of exclusivity

• Changes in the Law – AIA: first to file, increase in

fees, new NPE litigation rules, restrictions on

challenges to validity

• Changes in policies, procedures, and capabilities

- yours and everyone else’s, e.g., USPTO expanding the

office’s examiner corps from 7,000 to 11,000

Why You Need (another) IP Audit

What IP you use Who Owns it How it can add value How do I realize that value

What You Want to Know

Common categories include patent, copyright, trade secret, trademark, and trade-name.

• Patents - utility patents, design patents and plant

patents.

• Trademarks - service marks, certification marks, and

collective marks.

• Copyrights – illustrations, pictures, software,

website content, music, film

But don’t limit your audit to these categories

“What IP do I use?”

Franchise/license/distribution agreements publishing rights covenants not to compete customer/information databases software distribution networks Pricing data Business Plans Financial Data Manufacturing Processes Market Research Intellectual capital

Also identify…

Don’t overlook IP that will be acquired or developed, including:

• IP developed/or that will be developed by

employees using company resources,

contractors, joint ventures and

partnerships.

• Evolution of the line of business a

particular piece of IP supports

Your IP is a moving target

Your audit should include not just your IP, but also your internal procedures that relate to IP. How you capture IP as it’s created How you identify needed IP (internal and

external) How you acquire external IP (licensing) How you value IP

Clear policies require training, assignment of responsibility, and company wide communication of objectives.

Related Processes, Policies, and Procedures

History of creation or acquisition who what where when why & costs

Registration, past/future renewals Terms of use, including limitations

exclusive? non-exclusive? time limits? type of use?

Concurrent use by competitors

Not just “Who owns it, ” but “Who can use it.”

How do you track compliance with limitations?

How do you track registration/renewal compliance?

What are procedures for (non) disclosure by employees?

What are your procedures for non-disclosure by 3rd parties / disclosure to 3rd parties?

How do you monitor for possible infringers?

How do you determine your response to trolls and competitors?

Related Processes, Policies, and Procedures

Continued manufacturing operations. Pre-empting competitive market entry. Leverage in infringements disputes. Financing Partnerships Licensing Loyalty/Brand identification

Your IP may have different value in different markets.

How does it /will it add value

Cost of acquisition Possibility of infringement Cost of securing/maintaining registration Cost of defending infringement Loss of Freedom of Operation Disclosure requirements

Secondary Question – Consequences of ownership, non-ownership, and acquisition

Production Licensing Partnerships / Joint ventures Marketing Direct sale Financing / Investments

Realizing Your IP’s Value

Who sets priorities for use of IP? How are differing view reconciled

What is your process for establishing / evaluating / monitoring the costs and benefits of protecting or acquiring IP?

How do you evaluate the costs and benefits of sharing IP?

How do you determine what enforcement / protection mechanisms will be used

Related Processes,Policies, and Procedures

Within every company, there are a multitude of views on how to realize your IP’s value. Your company’s engineering, marketing,

and business development departments may have very different views on the function of IP.

Views also differ among lines of business and country of operation

Unfortunately….

A coherent and effective strategy requires identifying and reconciling differing views and priorities on the use of your company’s IP.

But you can’t reconcile these view unless you know what IP you use, how you can use it, and various stakeholder’s views on how they can add value.

A Comprehensive Audit is Essential