Beyond specialized IP law practices, business, commercial, tax and estate practioners are increasingly involved in identifying, protecting, applying, and defending intangible assets owned by clients.
Legal Due Diligence: Integrating the Legal and Business Parts of the ProcessNow Dentons
This presentation gives an overall look at the due diligence process. It examines the key details of the process and why it is critical for any transactions as well as covers topics including: how a business deal guides the process, the transaction structure, and identifying risks.
Software audit strategies: how often is enough? Protecode
With the widespread use of open source software in proprietary software projects, organizations are looking for ways to mitigate licensing, security and quality vulnerabilities related to open source code. These organizations are increasing deploying software audits which involve scanning a software portfolio to uncover all software packages as well as their associated licensing and copyright obligations, security vulnerabilities and other code attribute information.
Beyond specialized IP law practices, business, commercial, tax and estate practioners are increasingly involved in identifying, protecting, applying, and defending intangible assets owned by clients.
Legal Due Diligence: Integrating the Legal and Business Parts of the ProcessNow Dentons
This presentation gives an overall look at the due diligence process. It examines the key details of the process and why it is critical for any transactions as well as covers topics including: how a business deal guides the process, the transaction structure, and identifying risks.
Software audit strategies: how often is enough? Protecode
With the widespread use of open source software in proprietary software projects, organizations are looking for ways to mitigate licensing, security and quality vulnerabilities related to open source code. These organizations are increasing deploying software audits which involve scanning a software portfolio to uncover all software packages as well as their associated licensing and copyright obligations, security vulnerabilities and other code attribute information.
Intellectual Property Strategy - Drive Oregon Event - February 2014Forth
Presentation by John Russell and Anna McCoy, of Alleman Hall McCoy Russell & Tuttle LLP. More information about the presenters and their firm is available at: http://www.ahmrt.com/
Intellectual Property Considerations in M&A TransactionsRiveles Wahab LLP
M&A transactions often live or die on the basis of well thought out and executed legal due diligence. Indeed, due diligence often shapes core deal terms, transaction structure, and whether the deal itself even moves forward. For traditional businesses with physical assets, due diligence may come with reasonably obvious do’s and don’ts. However, in M&A deals where intellectual property (“IP”) is the key or sole asset, due diligence becomes even more critical yet far less obvious in terms of best practices.
In such deals, often unique and powerful transaction structure and drafting considerations come into play that are unfortunately overlooked as practitioners often make unwarranted assumptions regarding IP ownership and/or curing defects. Moreover, there are often misconceptions about the applicability of ordinary representations, warranties, and other M&A provisions to IP as a “one-size-fits-all” solution to the often unique array of defects and other “wrinkles” attached to the IP. In these cases, valuing and structuring the transaction can be adversely affected, the post transaction operations of the target business can be compromised, and the rights of both purchaser and seller can be significantly undermined.
This course, presented by Kaiser Wahab, partner in the law firm of Riveles Wahab LLP, which is dedicated to M&A transactions in the private equity space for IP driven early-stage/mature companies, is designed to arm the practitioner with the vocabulary, skill set, and overall understanding of best practices in IP driven M&A transactions.
Preparing Your Portfolio for Prime Time: IP Due DiligenceMintz Levin
Due diligence helps potential investors know they are making a winning bet on your startup. Hence, investors conduct a detailed look “under the hood” of the company and the company’s IP is at center stage.
Attorneys Agnes Juang, Arsen Kourinian and, Mauricio Uribe hosted a virtual discussion interactive webinar regarding strategic considerations for data privacy, security and IP due diligence
A Step By Step Guide To Growing A Technology Business The Legal Aspects O...lisaabe
Whether you are an entrepreneur or an investor, this presentation sets out the legal and business framework on How to Grow Your Technology Business into a profitable success!
Overseas listing by unlisted indian companiesAkshat Pande
An overview of possibilities for unlisted Indian companies to raise capital through listing on overseas stock exchanges, highlighting latest Indian government policy on this topic.
Intellectual Property Strategy - Drive Oregon Event - February 2014Forth
Presentation by John Russell and Anna McCoy, of Alleman Hall McCoy Russell & Tuttle LLP. More information about the presenters and their firm is available at: http://www.ahmrt.com/
Intellectual Property Considerations in M&A TransactionsRiveles Wahab LLP
M&A transactions often live or die on the basis of well thought out and executed legal due diligence. Indeed, due diligence often shapes core deal terms, transaction structure, and whether the deal itself even moves forward. For traditional businesses with physical assets, due diligence may come with reasonably obvious do’s and don’ts. However, in M&A deals where intellectual property (“IP”) is the key or sole asset, due diligence becomes even more critical yet far less obvious in terms of best practices.
In such deals, often unique and powerful transaction structure and drafting considerations come into play that are unfortunately overlooked as practitioners often make unwarranted assumptions regarding IP ownership and/or curing defects. Moreover, there are often misconceptions about the applicability of ordinary representations, warranties, and other M&A provisions to IP as a “one-size-fits-all” solution to the often unique array of defects and other “wrinkles” attached to the IP. In these cases, valuing and structuring the transaction can be adversely affected, the post transaction operations of the target business can be compromised, and the rights of both purchaser and seller can be significantly undermined.
This course, presented by Kaiser Wahab, partner in the law firm of Riveles Wahab LLP, which is dedicated to M&A transactions in the private equity space for IP driven early-stage/mature companies, is designed to arm the practitioner with the vocabulary, skill set, and overall understanding of best practices in IP driven M&A transactions.
Preparing Your Portfolio for Prime Time: IP Due DiligenceMintz Levin
Due diligence helps potential investors know they are making a winning bet on your startup. Hence, investors conduct a detailed look “under the hood” of the company and the company’s IP is at center stage.
Attorneys Agnes Juang, Arsen Kourinian and, Mauricio Uribe hosted a virtual discussion interactive webinar regarding strategic considerations for data privacy, security and IP due diligence
A Step By Step Guide To Growing A Technology Business The Legal Aspects O...lisaabe
Whether you are an entrepreneur or an investor, this presentation sets out the legal and business framework on How to Grow Your Technology Business into a profitable success!
Overseas listing by unlisted indian companiesAkshat Pande
An overview of possibilities for unlisted Indian companies to raise capital through listing on overseas stock exchanges, highlighting latest Indian government policy on this topic.
LISTING IN USA INDIAN PERSPECTIVE, STRUCTURING AND LEGAL REQUIREMENTS
FaQs on IP Audit
1. FAQ’s on IP Audit
WHAT IS AN IP AUDIT?
As per World Intellectual Property Organisation (WIPO), an IP Audit is defined as a
systematic review of the IP assets owned, used or acquired by a business. Its purpose is to
uncover under-utilized IP assets, to identify any threats to a company’s bottom line, and to
enable business planners to devise informed strategies that will maintain and improve the
company’s market position.
Therefore, like financial internal audit, it is a fact finding exercise to know what exactly you
own, what you don’t but you still use, what are the threats and opportunities arising due to
such use or non-use and what can be done to increase value of your IP asset base.
WHY TO DO AN IP AUDIT?
The reasons can be many, some of which are the following:
• New intellectual property management
• Merger, acquisition, significant stock purchase, IPO or other corporate actions
• Transfer or assignment of interest in intellectual property
• Acquisition of new intellectual property
• In/out licensing program
• Significant change in law
• Financial transactions involving intellectual property
• New client program or policy
• Litigation
• Valuation of IP
• Building new IP strategies for the firm
• Government action
• Financial audit (internal or external); or
• Just to take a stock of things
WHEN TO DO AN IP AUDIT?
Answer to this question depends on the scope of the audit. If the audit is a specific event-
centric audit, it has to be done around that particular event, which may be one of the events
listed in ‘Why’ above. If it is a general enquiry into status of IP assets of an organisation, it
may be done whenever the management decides so. A general enquiry is generally done to
design or review the IP policies and procedures of an organisation and/or developing an index
of IP assets.
WHO DOES WHAT?
The importance of the role of an IP auditor is primary. An IP auditor is generally a person
having legal or technical background, or both. The audit team also includes representative(s)
from the management, in-house IP/legal team, if any. IP audit is a process to analyse the legal
2. status of the IP assets of an organisation and to assess the value of the assets. Therefore, IP
audit team must have legal, financial and if patents are involved, technical personnel.
WHAT TO AUDIT?
In order to conduct a comprehensive IP audit, one must analyse each element of company’s
inputs, resources, process, outputs and relationships. This will discover the company’s
intangible asset. Thereafter, the intangibles have to be classified into one of the protectable
intellectual property rights. These include two categories:
• Statutory: patents, copyright, designs, trademarks, plant varities, geographical
indications.
• Non-statutory/common law: know-how, technical information, confidential
information, brands, trade names, trade dress, secrets, databases, client information,
business methods and processes etc.
Another category and probably one of the most important category is the contracts which the
company has entered into with third parties. This will ascertain to a large extent as to what IP
rights does it hold and what it can use. Generally this includes following type of categories:
• Employment contracts, NDA’s and assignment contracts,
• All in-bound and out-bound IP licenses,
• Joint-ventures, M&A and other corporate transactional documents,
• Distribution agreements,
• Marketing agreements,
• Sales representative agreements,
• Original equipment manufacturer, value added reseller and other reseller agreements,
• Standard form customer agreements,
• Shrink wraps or click wraps,
• Government contracts,
• All other contracts in which there is a possibility of licensing/assigning any IP right.
AUDIT PROCESS
Audit process will generally depend on the answers to the above questions. However,
broadly, the following steps may be involved:
• Make an Audit Plan
• Collect the Relevant Information
• Analyze the Information
• Write the Audit Report