Ip audit and strategy studentcopy
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The document discusses the importance of conducting an intellectual property (IP) audit. An IP audit identifies a company's IP assets, how they are used, who owns them, and how they can add value. It is important because companies and their IP are constantly changing. An audit ensures a company's IP strategy aligns with its goals and accounts for changes. A comprehensive audit considers all categories of IP as well as related processes, policies, and procedures to understand a company's complete IP situation. This information allows a company to realize the full value of its IP assets.
Ip audit and strategy studentcopy
- 1. { 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
- 2. 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.
- 3. • 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
- 4. What IP you use Who Owns it How it can add value How do I realize that value What You Want to Know
- 5. 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?”
- 6. 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…
- 7. 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
- 8. 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
- 9. 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.”
- 10. 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
- 11. 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
- 12. 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
- 13. Production Licensing Partnerships / Joint ventures Marketing Direct sale Financing / Investments Realizing Your IP’s Value
- 14. 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
- 15. 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….
- 16. 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