Delain Law Office, PLLC, located in Clifton Park, New York, is an intellectual property law firm concentrating in providing intellectual property audits and intellectual property valuation to selected clients, both nationally and internationally. We partner with our clients to increase their income and improve their quality of life by providing comprehensive intellectual property services, including legal audit of their intellectual property positions, called an intellectual property audit.
You have a significant investment in your intellectual property. Isn’t it important to know what your intellectual property protection covers? Doesn’t it make sense to identify “holes” in your protection and know where you are vulnerable? Delain Law Office will work with selected clients to provide a full legal audit of their intellectual property holdings and comprehensively assess where the holdings are strongest — and where the holdings are weakest.
What Is an Intellectual Property Audit?
An intellectual property audit provides the intellectual property owner with a comprehensive assessment of his intellectual property holdings. It focuses on four key areas:
- Identify all the intellectual property assets within the organization being audited;
- Identify any problems that exist with the intellectual property ownership;
- Identify any defects in title or enforceability of the organization’s intellectual property; and
- Identify any unprotected intellectual property assets.
When Should an Intellectual Property Audit Be Done?
An intellectual property audit should be done at several key points in an organization’s life cycle:
- New Intellectual Property Management;
- Merger, Acquisition, Significant Stock Purchase;
- Transfer or Assignment of Interest in Intellectual Property;
- Implementation of a Licensing Program;
- Significant Change in Law;
- Financial Transactions Involving Intellectual Property;
- New Client Program or Policy
How Does an Intellectual Property Audit Work?
The first step in performing an intellectual property audit is to develop a plan for the audit. An audit committee (usually consisting of an intellectual property attorney, a representative from management, marketing, and technology or research and development) defines the areas of inquiry and establishes the time schedule which the audit will follow. They outline the responsibilities of each member of the audit team. They then define the preliminary documents for review and decide which members of the organization — present and past — to interview.
The attorney develops an intellectual property database which contains, at a minimum, “…owner of the intellectual property asset, class of asset, the inventors or authors, when the asset was created or acquired, the asset’s status (e.g., pending or issued patent, registered copyright, trademarks, domain names), on-going maintenance issues (e.g., payment of maintenance fees for patents, collection or payment of licensing fees), and the expiration or renewal date of the asset.”xxxi This database enables the organization to determine exactly what its intellectual property assets are and also to determine the status of each asset.
After the database has been developed, the attorney and the audit committee within the organization analyze the intellectual property and determine what action to take as to each piece of intellectual property. The committee and the attorney also identify mechanisms that the organization should use to identify and protect each new piece of intellectual property that the organization develops or otherwise acquires.
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 reduced.