Session # 309<br />Intellectual Property Audits for Non-Tech Businesses<br />
Panelists:<br />David Bolton – Associate General Counsel, United Space Alliance, LLC<br />Eunice  Lin – Executive Vice Pre...
<ul><li>TOPICS
Introductions
  Overview
  Related material available from ACC resources by title 
  What is an intellectual property audit
  Why do an intellectual property audit
  When to do an intellectual property audit 
  The patent assessment
  The trademark assessment
  The copyright assessment
  The domain name assessment
  The trade secret assessment
  Questions</li></li></ul><li><ul><li>  OVERVIEW
Many businesses, especially those not in 'technology' industries, do not have significant IP assets and the in house couns...
But that's no reason to ignore some fundamental practices that can help the business capture or protect the value of its t...
  Or, perhaps more importantly, to protect the business from exposure to the IP claims of others
  What questions should you be asking to evaluate and improve the business's IP sophistication?</li></ul>“Intellectual cap...
<ul><li>  RELATED MATERIAL AVAILABLE FROM ACC RESOURCES BY TITLE</li></ul>http://www.acc.com/legalresources/index.cfm<br /...
  Trademark Policy
  Assignment of Trademark
  Invention Disclosure Form
  Trademark License Agreement
  Patent Manual, Acme Technology
  Confirmatory Assignment of Trademark
  Copyright Assignment and Release Form
  Notice of a Patent & Request for License
  Patent and Technology License Agreement
  Trademark/Service Mark Search Request Form
Copyright and Trade Secret License Agreement
Employee Confidentiality and Patent Agreement
  Internal and External Trademark Usage Guidelines
  License Agreement (for a patent by owner to XYZ)
  Model Copyright License for Presentations to Associations
  Model Copyright License for Articles in Association Publications
  Employee Intellectual Property Assignment and Confidentiality Agreement
  Top Ten Questions (and Answers) for Protecting Your Company’s Trade Secrets
  Intellectual Property Inventory Checklist and Other IP Tools for Managing Your Portfolio
  Request for Indemnification for Patent Infringement http://www.acc.com/legalresources/index.cfm</li></ul>ACC InfoPAK - I...
<ul><li>  WHAT IS AN INTELLECTUAL PROPERTY AUDIT?
An inventory of known intellectual property
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  • Copyright registration – Are they still valid? Are they accurate? Confirm accuracy and make necessary updates/corrections.
  • Remember to keep in mind that a work does NOT have to be registered to claim copyright protection.
  • Copyright vs. License – I have included license rights because many contractors will refuse to assign copyright. Therefore, the scope of the license is very important. [Example – BNA’s alternative author language]
  • [CITE BNA EXAMPLE, when it’s part of a product that is not sold]
  • [CITE BNA EXAMPLE, when it’s part of a product that is not sold]
  • [CITE BNA EXAMPLE, when it’s part of a product that is not sold]
  • [EXAMPLE – ATTACH BNA CUSTOMER AGREEMENT AND COPYRIGHT FAQS – EDUCATION IS IMPORTANT; TELL PEOPLE WHAT YOU CAN DO AND NOT DO]
  • Employee Training [REFER TO BNA POLICY AND MY COPYRIGHT SALES PRESENTATION]Employee policies?How often?Internal home page?
  • Intellectual Property Audits for Non-Tech Businesses

    1. 1. Session # 309<br />Intellectual Property Audits for Non-Tech Businesses<br />
    2. 2. Panelists:<br />David Bolton – Associate General Counsel, United Space Alliance, LLC<br />Eunice Lin – Executive Vice President & General Counsel, BNA<br />Kathleen Mac Mahon Crannell (Moderator) – Associate General Counsel and Director of Global Export Compliance, United Space Alliance, LLC<br />Paul McQuade– Shareholder, Greenberg Traurig, LLP<br />
    3. 3. <ul><li>TOPICS
    4. 4. Introductions
    5. 5. Overview
    6. 6.  Related material available from ACC resources by title 
    7. 7. What is an intellectual property audit
    8. 8. Why do an intellectual property audit
    9. 9. When to do an intellectual property audit 
    10. 10. The patent assessment
    11. 11. The trademark assessment
    12. 12. The copyright assessment
    13. 13. The domain name assessment
    14. 14. The trade secret assessment
    15. 15. Questions</li></li></ul><li><ul><li> OVERVIEW
    16. 16. Many businesses, especially those not in 'technology' industries, do not have significant IP assets and the in house counsel may not live or breath IP issues
    17. 17. But that's no reason to ignore some fundamental practices that can help the business capture or protect the value of its trademarks, trade secrets, patentable innovations, web presence, and other IP assets
    18. 18. Or, perhaps more importantly, to protect the business from exposure to the IP claims of others
    19. 19. What questions should you be asking to evaluate and improve the business's IP sophistication?</li></ul>“Intellectual capital is recognized as the most important asset of many of the world’s largest and most powerful companies; it is the foundation for the market dominance and continuing profitability of leading corporations. It is often the key objective in mergers and acquisitions and knowledgeable companies are increasingly using licensing routes to transfer these assets to low tax jurisdictions.” World Intellectual Property Organization<br />
    20. 20. <ul><li> RELATED MATERIAL AVAILABLE FROM ACC RESOURCES BY TITLE</li></ul>http://www.acc.com/legalresources/index.cfm<br /><ul><li>Copyright Policy
    21. 21. Trademark Policy
    22. 22. Assignment of Trademark
    23. 23. Invention Disclosure Form
    24. 24. Trademark License Agreement
    25. 25. Patent Manual, Acme Technology
    26. 26. Confirmatory Assignment of Trademark
    27. 27. Copyright Assignment and Release Form
    28. 28. Notice of a Patent & Request for License
    29. 29. Patent and Technology License Agreement
    30. 30. Trademark/Service Mark Search Request Form
    31. 31. Copyright and Trade Secret License Agreement
    32. 32. Employee Confidentiality and Patent Agreement
    33. 33. Internal and External Trademark Usage Guidelines
    34. 34. License Agreement (for a patent by owner to XYZ)
    35. 35. Model Copyright License for Presentations to Associations
    36. 36. Model Copyright License for Articles in Association Publications
    37. 37. Employee Intellectual Property Assignment and Confidentiality Agreement
    38. 38. Top Ten Questions (and Answers) for Protecting Your Company’s Trade Secrets
    39. 39. Intellectual Property Inventory Checklist and Other IP Tools for Managing Your Portfolio
    40. 40. Request for Indemnification for Patent Infringement http://www.acc.com/legalresources/index.cfm</li></ul>ACC InfoPAK - Intellectual Property Primer - Patents, Trademarks, Copyrights, and Trade Secrets - An Introduction to Intellectual Property for In-House Counsel 3rd Edition <br />
    41. 41. <ul><li> WHAT IS AN INTELLECTUAL PROPERTY AUDIT?
    42. 42. An inventory of known intellectual property
    43. 43. An analysis of the protection of intellectual property assets
    44. 44. A search for unknown or unprotected intellectual property
    45. 45. A review of known or threatened intellectual property claims of others
    46. 46. A search for likely intellectual property claims of others
    47. 47. A review of processes and procedures to spot sources of potential claims and unprotected intellectual property</li></li></ul><li><ul><li> WHY DO AN INTELLECTUAL PROPERTY AUDIT?
    48. 48. Impending valuation, merger, acquisition, sale, investment or financing event
    49. 49. Do it before someone else does it to you (e.g. Business Software Alliance, enterprise software vendors, patent trolls, etc.)
    50. 50. Identify intellectual property claims of others and curtail or mitigate them
    51. 51. Identify intellectual property that is not sufficiently protected
    52. 52. Identify gaps in policies and procedures that lead to potential liabilities or wasted intellectual property assets</li></li></ul><li><ul><li> WHEN TO DO AN INTELLECTUAL PROPERTY AUDIT
    53. 53. Long before you “need it” – intellectual property issues can take time to redress
    54. 54. If you foresee third party due diligence in the near future, conduct the audit before the due diligence begins to get in front of issues
    55. 55. Do a baseline audit
    56. 56. Revise policies and procedures as necessary
    57. 57. Re-audit annually to ensure compliance</li></li></ul><li>THE PATENT ASSESSMENT<br />ADDITIONAL SESSION #309 MATERIAL AVAILABLE ON THE ACC WEBSITE<br />Greenberg Traurig – Intellectual Property Audit and Due Diligence Checklist<br />
    58. 58. What is a Patent?<br />A patent for an invention is the grant of a property right to the inventor, issued by the Patent and Trademark Office. The term of a new patent is 20 years from the date on which the application for the patent was filed in the United States or, in special cases, from the date an earlier related application was filed, subject to the payment of maintenance fees. US patent grants are effective only within the US, US territories, and US possessions.<br />The right conferred by the patent grant is, in the language of the statute and of the grant itself, “the right to exclude others from making, using, offering for sale, or selling” the invention in the United States or “importing” the invention into the United States. What is granted is not the right to make, use, offer for sale, sell or import, but the right to exclude others from making, using, offering for sale, selling or importing the invention.<br />Source - United States Patent and Trademark Office<br />http://www.uspto.gov/web/offices/pac/doc/general/whatis.htm<br />
    59. 59. <ul><li> PATENT DUE DILIGENCE CHECKLIST – ISSUED PATENTS
    60. 60. Documents verifying ownership of patents
    61. 61. Patent assignments
    62. 62. USPTO or foreign patent authority documents confirming that any assignments have been properly recorded
    63. 63. Identify any joint owners of patent rights
    64. 64. Documents reflecting any security interests or judgment liens have been recorded
    65. 65. Documents pertaining to any patent maintenance and foreign annuity payments
    66. 66. Describe the Company’s systems for paying maintenance fees and annuities in all countries
    67. 67. Identify patents that are expired and/or no longer enforceable
    68. 68. For key patents, copies of all prior art and prosecution history in Company files</li></li></ul><li><ul><li> PATENT DUE DILIGENCE CHECKLIST – PATENT APPLICATIONS
    69. 69. Documents verifying ownership of applications
    70. 70. Describe whether any security interests or judgment liens have been recorded
    71. 71. Describe status of pending applications
    72. 72. List of all provisional patent filings and expiration date for filing application
    73. 73. Office Actions and Responses
    74. 74. Clearance materials and non-infringement opinions evaluated prior to filing applications
    75. 75. Identify any statutory bars to filing patent applications on active invention records
    76. 76. Describe reasons for abandoning prior applications</li></li></ul><li><ul><li> PATENT DUE DILIGENCE CHECKLIST – PAST, CURRENT AND POTENTIAL LITIGATION
    77. 77. Describe Company’s enforcement policy regarding its patents
    78. 78. Identify all known or suspected infringements of Company’s patents and any actions taken
    79. 79. Identify all third-party patents known to Company that relate to the business
    80. 80. Describe whether the Company has modified its technology to avoid infringement
    81. 81. Describe any pending litigation in the industry which may affect the Company
    82. 82. Review all cease and desist letters, both sent and received
    83. 83. Identify all license offers made to Company
    84. 84. List and provide copies of all patent licenses (inbound and outbound)
    85. 85. Identify any current or anticipated disputes
    86. 86. Describe the results of any audits conducted by or against the Company</li></li></ul><li>THE TRADEMARK ASSESSMENT<br />The power of your trademark to drive brand recognition, customer loyalty and goodwill makes it one of your company's most valuable assets<br />
    87. 87. What Is a Trademark or Servicemark?<br />A trademark is a word, name, symbol or device which is used in trade with goods to indicate the source of the goods and to distinguish them from the goods of others. A servicemark is the same as a trademark except that it identifies and distinguishes the source of a service rather than a product. The terms "trademark" and "mark" are commonly used to refer to both trademarks and servicemarks.<br />Trademark rights may be used to prevent others from using a confusingly similar mark, but not to prevent others from making the same goods or from selling the same goods or services under a clearly different mark. Trademarks which are used in interstate or foreign commerce may be registered with the Patent and Trademark Office. The registration procedure for trademarks and general information concerning trademarks is described in a separate pamphlet entitled "Basic Facts about Trademarks".<br />Source - United States Patent and Trademark Office<br />http://www.uspto.gov/web/offices/pac/doc/general/whatis.htm<br />
    88. 88. <ul><li> MAINTAINING TRADEMARK RIGHTS
    89. 89. Trademarks rights must be maintained through actual lawful use of the trademark
    90. 90. These rights will cease if a mark is not actively used
    91. 91. In the case of a trademark registration, failure to actively use the mark in the lawful course of trade, or to enforce the registration in the event of infringement, may also expose the registration itself to become liable for an application for the removal from the register after a certain period of time on the grounds of "non-use"
    92. 92. It is not necessary for a trademark owner to take enforcement action against all infringement if it can be shown that the owner perceived the infringement to be minor and inconsequential
    93. 93. TRADEMARK WATCH SERVICES
    94. 94. The services find trademarks that may be confusingly similar to yours, including word marks, logos and slogans </li></li></ul><li><ul><li> TRADEMARK WATCH SERVICES cont.
    95. 95. Trademark watches focus on a wide range of activities including:
    96. 96. Newly filed trademark applications
    97. 97. Recently approved trademark applications and new registrations
    98. 98. Domain name registrations
    99. 99. Unauthorized use of a mark on the Internet or on Internet auction sites
    100. 100. Changes in ownership of registrations
    101. 101. New trademarks filed by competitors
    102. 102. New company names
    103. 103. Other uses of trademarks in business
    104. 104. The rise of globalization has created more opportunities to leverage IP, but also more markets in which companies must protect it
    105. 105. CONSIDER DEVELOPING A TRADEMARK GUIDELINES WEBSITE
    106. 106. Develops brand guidelines to encourage proper trademark use by employees, vendors, partners and media outlets </li></li></ul><li><ul><li> EXAMPLE OF A TRADEMARK GUIDELINES WEBSITE </li></li></ul><li><ul><li> TRADEMARKS DUE DILIGENCE CHECKLIST
    107. 107. List all U.S., foreign and state trademarks and service marks registered to Company
    108. 108. Copies of documents verifying ownership, such as assignment documents or asset purchase agreements
    109. 109. Copies of all registration documents
    110. 110. Identify all pending trademark applications and all applications that were abandoned or rejected
    111. 111. Copies of any clearance search reports for important marks
    112. 112. Description of prosecution history and opposition proceedings for important marks
    113. 113. List all unregistered marks and servicemarks, together with date of first use and jurisdictions where such marks are used
    114. 114. List of any assumed or fictitious names or other business names which the Company has used during last five years
    115. 115. Provide copies of any associated filings</li></li></ul><li><ul><li> TRADEMARKS DUE DILIGENCE CHECKLIST cont.
    116. 116. Copies of any trademark licenses (inbound and outbound)
    117. 117. Copies of specimens of marks
    118. 118. Describe all past, current or potential litigation
    119. 119. Copies of all cease and desist letters (both sent and received)
    120. 120. Description of status of settlement, litigation or other resolution</li></li></ul><li><ul><li> BE AWARE</li></li></ul><li>THE COPYRIGHT ASSESSMENT<br />ADDITIONAL SESSION #309 MATERIAL AVAILABLE ON THE ACC WEBSITE<br />Copyright @ BNA – Do You Know Your Copyright?<br />
    121. 121. What Is a Copyright?<br />Copyright is a form of protection provided to the authors of “original works of authorship” including literary, dramatic, musical, artistic, and certain other intellectual works, both published and unpublished. <br />The 1976 Copyright Act generally gives the owner of copyright the exclusive right to reproduce the copyrighted work, to prepare derivative works, to distribute copies or phonorecords of the copyrighted work, to perform the copyrighted work publicly, or to display the copyrighted work publicly.<br />The copyright protects the form of expression rather than the subject matter of the writing. For example, a description of a machine could be copyrighted, but this would only prevent others from copying the description; it would not prevent others from writing a description of their own or from making and using the machine. Copyrights are registered by the Copyright Office of the Library of Congress.<br />Source - United States Patent and Trademark Office<br />http://www.uspto.gov/web/offices/pac/doc/general/whatis.htm<br />
    122. 122. <ul><li>WHAT IS A COPYRIGHT AUDIT?
    123. 123. Assessment of what copyrighted works you own or license
    124. 124. Review of agreements to ensure ownership or sufficient rights
    125. 125. BENEFITS OF AN AUDIT
    126. 126. Protection of IP assets
    127. 127. Demonstrate company value (e.g., M&A)
    128. 128. Employee awareness and training
    129. 129. Protection of third party IP</li></li></ul><li><ul><li>WHY CONDUCT AN AUDIT – “I’M NOT A PUBLISHER!”
    130. 130. All companies should conduct an assessment of their copyrights and processes
    131. 131. If your client engages in any of the following activities, it should conduct some type of copyright assessment:
    132. 132. Does it have a Web page?
    133. 133. Do employees ever write articles or contribute to blogs?
    134. 134. Does it advertise or send out marketing/promotional materials?
    135. 135. Does it develop software for internal use? For distribution? Customized?
    136. 136. Does it have outside consultants prepare written reports, assessments, designs, logos, etc.?</li></li></ul><li><ul><li>COPYRIGHT NOTICES
    137. 137. Are copyright notices placed on works (e.g., © 2010 Acme, Inc.)?
    138. 138. Standard works, e.g., articles, books
    139. 139. Marketing materials
    140. 140. Web sites
    141. 141. COPYRIGHT REGISTRATIONS
    142. 142. List of all U.S. or foreign copyright registrations, including date of registration
    143. 143. Confirm that registrations are correct
    144. 144. Make a copy of each registration
    145. 145. Determine what works should be registered
    146. 146. Benefits of registration (ability to sue; statutory damages)
    147. 147. How to decide whether to register</li></li></ul><li><ul><li>INVENTORY COPYRIGHTED WORKS – CAST A WIDE NET
    148. 148. General - Identify key works developed by Company, public domain works incorporated into the works, works that Company seeks to protect by registration, works to which Company has acquired rights to, either by assignment, license or otherwise, and works to which Company has transferred rights thereto, either by assignment, license or otherwise
    149. 149. Computer software developed by (or for) your company
    150. 150. Publications
    151. 151. Websites
    152. 152. Articles
    153. 153. Marketing materials
    154. 154. Pictures, photos, videos, recordings
    155. 155. Logos, slogans, designs (note overlap with trademarks)
    156. 156. Other key works of authorship</li></li></ul><li><ul><li>REVIEW AGREEMENTS
    157. 157. Know what agreements to look for
    158. 158. Make sure they contain the necessary provisions to protect your copyright
    159. 159. EXAMPLES OF AGREEMENTS TO LOOK FOR
    160. 160. Customer/License Agreements
    161. 161. Vendor/Consulting Agreements
    162. 162. Freelancer/Author Agreements
    163. 163. Escrow Agreements
    164. 164. Web Design or Hosting Agreements
    165. 165. Software Licenses
    166. 166. Copyright Assignments
    167. 167. M&A Agreements</li></li></ul><li><ul><li>WHAT TO LOOK FOR
    168. 168. Basic questions to ask
    169. 169. What are they providing you?
    170. 170. What are you providing them (e.g., custom content or designs, software)?
    171. 171. Do you want to retain copyright or a license?
    172. 172. Is it something that you will want to use in the future?
    173. 173. BASIC TERMS TO INCLUDE
    174. 174. “Work for hire” language and assignment
    175. 175. General rule copyright vests initially in the author of a work
    176. 176. However, if work is prepared by a third party, then copyright will be owned by the customer if the parties agree in a signed written document that the work is a “work for hire”</li></li></ul><li><ul><li>Basic terms to include, cont.
    177. 177. Sample “Work for Hire” language</li></ul>Ownership and Copyright. All right, title and interest, including but not limited to copyright, trademarks, and any other intellectual property rights, in and to any materials or other deliverables produced or provided by Vendor under this Agreement (“Works”), alone or in combination with Client or its employees, shall be deemed works made for hire for Client under the copyright laws of the United States and these Works shall, upon their creation, be owned exclusively by Client. To the extent that any of these Works may not be considered works made for hire for Client under applicable law, Vendor assigns to Client the ownership of such Works, including but not limited to all copyright, trademarks, and any other intellectual property rights.<br />
    178. 178. <ul><li> Basic terms to include, cont.
    179. 179. If copyright is not retained, include broad license to use, modify, etc.
    180. 180. Right to use the material in any format/media
    181. 181. Right to use, modify, sell, distribute, license, make derivative works, etc.
    182. 182. Require the vendor to return content,/files/materials/data upon termination
    183. 183. IP warranty and indemnification
    184. 184. In the M&A context
    185. 185. Retain a license to use the materials after the sale (e.g., asset sale – some materials may be incorporated into products retained by seller)
    186. 186. Right to freely assign the license without consent
    187. 187. REVIEW AND IDENTIFY PAST, CURRENT AND POTENTIAL LITIGATION/CLAIMS
    188. 188. Copies of all cease and desist letters (both sent and received)
    189. 189. Description of status of settlement, litigation or other resolution</li></li></ul><li><ul><li>REVIEW CORPORATE POLICIES
    190. 190. Policies included in the “Legal” section of your company’s website
    191. 191. Copyright policy – make it easier for customers to comply with the copyright laws by providing them with guidance on what they can do and can’t do (e.g., BNA Copyright Guidelines, http://www.bna.com/corp/)
    192. 192. REVIEW EMPLOYEE POLICIES
    193. 193. Conduct periodic employee training and education
    194. 194. Overview of copyright laws
    195. 195. Protection of company’s copyright
    196. 196. How to avoid/minimize infringement of third party copyrights
    197. 197. When to seek permission for copying/reprints and internal procedure
    198. 198. What “fair use” and “public domain” really mean
    199. 199. Establish process for handling copyright violations, e.g., who to notify, what information to provide, cease and desist template, when do attorneys get involved</li></li></ul><li><ul><li>REVIEW/DEVELOPMENT PROCEDURES
    200. 200. Process to determine originality of works, contributions by third parties, etc.
    201. 201. IP warranty and indemnification
    202. 202. USE OF THIRD PARTIES TO PROTECT YOUR COPYRIGHT
    203. 203. Copyright Clearance Center (CCC)
    204. 204. CCC was created in 1978 by a group of authors and publishers
    205. 205. Today, they represent tens of thousands of authors, publishers and creators from nearly every country in the world, and license the rights to millions of books, journals, newspapers, websites, ebooks, images, blogs and more
    206. 206. CCC offers content providers ways to register their content, allow authorized licensees to copy/distribute the content and receive royalty payments</li></li></ul><li>THE DOMAIN NAME ASSESSMENT<br />
    207. 207. <ul><li> DOMAIN NAMES DUE DILIGENCE CHECKLIST
    208. 208. List all domain names registered to the Company for generic top level domains (.com, .net, .org and .info) and international extensions (.uk, .jp, .de)
    209. 209. Identify whether any key trademarks are registered to third parties as domains
    210. 210. List the expiration date of all domain names registered to the Company and identify the registrar of record
    211. 211. Confirm that payment for such domain names is current
    212. 212. Determine whether the Company has registered third party trademarks as domain names
    213. 213. Identify all domain names registered to certain people associated with Company, such as the marketing director, CTO, legal department, IT department, or founder
    214. 214. Review WHOIS (who is) information to verify ownership and to determine that registration has not expired
    215. 215. Identify past, current or potential litigation involving Company domain names, including Uniform Domain-Name Dispute-Resolution Policy (UDRP) or other similar proceedings
    216. 216. Copies of all cease and desist letters (both sent and received)
    217. 217. Description of status of settlement, litigation or other resolution</li></li></ul><li><ul><li> BE AWARE</li></li></ul><li>THE TRADE SECRET ASSESSMENT<br />
    218. 218. <ul><li> TRADE SECRETS
    219. 219. A trade secret is information that companies keep secret to give them an advantage</li></ul>over their competitors<br /><ul><li> Educating your employees is important
    220. 220. One of the benefits of trade secret protection is that there is no limitation on the length of </li></ul> time that the trade secret can be protected<br /><ul><li> There is no formula for what constitutes reasonable efforts to maintain the secrecy of the information
    221. 221. Enter into confidentiality agreements with suppliers and customers when disclosing trade secrets</li></li></ul><li><ul><li> TRADE SECRETS DUE DILIGENCE CHECKLIST
    222. 222. Copies of all Agreements of the Company pertaining to any unpatented inventions, designs, styles, know-how or technical assistance whether owned by the Company or licensed by a third party to the Company
    223. 223. List key trade secrets developed by Company employees
    224. 224. List of all employees past and current and date of each agreement relating to confidentiality and assignment of works created during employment
    225. 225. Copies of all standard confidentiality agreements and assignment of works or non-compete agreements
    226. 226. Provide Company policies prohibiting disclosure of third party confidential information
    227. 227. List of any employees that previously worked for a competitor of Company
    228. 228. Describe whether any employees may have brought materials or other IP from a prior employer and whether such employees were subject to any enforceable non-competes affecting their employment after termination of employment
    229. 229. Asses the reasonableness of the procedures protecting the trade secrets </li></li></ul><li><ul><li>TRADE SECRETS DUE DILIGENCE CHECKLIST cont.
    230. 230. List of trade secrets developed by independent contractors
    231. 231. List of all independent contractors past and current and date of each agreement relating to confidentiality and assignment of works created during service
    232. 232. Copies of all standard Agreements relating to confidentiality, assignment, non-competition and non-solicitation
    233. 233. Describe whether any consulting agreement include any licenses of preexisting technology owned by consultant
    234. 234. Describe whether any consultants or employees have claimed any rights against the Company for the technology they developed
    235. 235. Identify past, current or potential litigation, relating to Company’s trade secrets
    236. 236. Copies of all cease and desist letters (both sent and received)
    237. 237. Description of status of settlement, litigation or other resolution</li></li></ul><li><ul><li>NON-DISCLOSURE AGREEMENTS
    238. 238. Process for keeping track
    239. 239. Keeping track – Excel spreadsheet with party, expiration date, etc.
    240. 240. Have a template contract – mutual vs. unilateral
    241. 241. Who should sign? Officer/department head
    242. 242. Who gets a copy?
    243. 243. Give to everyone who will be receiving information
    244. 244. Keep track of who got a copy
    245. 245. Depending on circumstances, may want to have everyone sign acknowledgement
    246. 246. Who is receiving confidential information?
    247. 247. Only employees or also third parties (e.g., consultants, contractors)?
    248. 248. Are they subject to an NDA with your company?</li></li></ul><li>Questions<br />

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