The Intellectual Property Audit - Finding What You Have (Part V of V)
By Nancy Delain
An Overview of How an Intellectual Property Audit Works
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.” 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.
Benefits of an Intellectual Property Audit
An intellectual property audit benefits intellectual property buyers, owners and investors.
Intellectual Property Owners
Intellectual property owners benefit from an intellectual property audit when they depend on that property as a component of the organization’s value (the greater the dependency, the greater the value of the intellectual property audit), when they license the property out, when there is a question that may involve litigation over the property, when they sell their stock or corporate assets, or when they engage in commerce involving the property.
Intellectual Property Buyers
If an intellectual property buyer is acquiring the stock or assets of a company, she should insist that an intellectual property audit be performed to determine the scope and level of protection in place and needed to make the investment worthwhile. This buyer should look at any licensing or distribution rights that are already in place in the company, and those that the company may be contemplating putting in place. The buyer is interested in determining what protections are available for the property, whether the property is adequately protected against any potential third-party claims to ownership (such as if it was developed by consultants, whether the consultant has properly assigned the property to the organization), whether the property is security guaranteeing a debt, whether needed federal and state registrations are in place and properly maintained, and, if any part was licensed or purchased from third parties, what rights to the third-party intellectual property the organization has purchased.
An intellectual property buyer may also be interested in simply acquiring rights to the intellectual property itself, without acquiring any part of the stock or assets of the organization that developed it. This buyer should look at what licenses exist already, whether trade secrets are available to increase the value of the property, whether any third party has any rights in the intellectual property that comprises any part of the property of interest, and, if so, what rights does the organization own, whether the property is in any way related to a government-sponsored activity.
Intellectual Property Investors
An intellectual property investor should demand an intellectual property audit when they consider funding a start-up company or financing an existing business. Often, the intellectual property is the sole asset of a start-up company, and it often forms a major part of the value of an existing company. Due diligence requires that the investor ensure that the property is fully protected. Investors also would find the information gleaned through an audit to be useful in a debtor/creditor situation where the investor accepts an intangible asset as security on a loan.
The intellectual property audit is a necessary and important management tool in today’s knowledge economy. Indeed, it is the only way to assess the true value of an organization, and it is the only way for an organization to maintain and grow its intangible assets. Gone are the days when the corporation was valued at the price of its real and personal property. Today, managers and investors need to have a good understanding of the intangible side of the business as well as the tangible side. The intellectual property audit is the way for them to get a grip on reality.
Nancy Baum Delain, a registered patent attorney, is the managing member of Delain Law Office, PLLC, an intellectual property and business law firm located in Clifton Park, NY. Nancy's expertise lies in patent, trademark and copyright prosecution, contract, licensing, and general business matters at www.ipattorneyfirm.com.