MANAGING THE IP AUDIT

Commencing An Intellectual Property Audit

All corporations benefit from having an IP audit performed in a way that is not disruptive and identifies problem areas and improvement opportunities relatively painlessly and in a cost effective way. It may be an excellent way to spend a limited amount to ensure that the very assets upon which the corporation relies, for assistance in market definition or preservation, or even for corporate existence, are not subtly and silently hemorrhaging or merely slipping through the corporate fingers. 

The fashioning of the audit will, of course, be affected by the motivation for it and, in situations in which a full blown audit is truly needed on a tight time schedule and the need justifies the cost, all the elements discussed here can be employed against the required schedule. However, where there is no such pressing need, the audit can be compartmentalized and performed over a substantial period of time allowing more of the work to be done by internal staff, commensurately avoiding the expense of external counsel. 

The detailed breakdown of what can be done by internal staff and what should be done by external staff is tightly related to the particular client's situation and the size and talents of the internal staff. In some acquisition of other casinos, etc., virtually everything will be done by external counsel, while in larger corporate reviews for assessment and improvement purposes, a large portion of the work may be done by internal IP counsel. Each such situation must be handled ad hoc. 

Whether narrow or broad in scope, and whether against a tight time schedule or a relaxed one, it is important that inside and outside counsel create strategies early in order to garner the full support of management for the audit. In addition, structuring the audit with a view to obtaining early management input may actually better fit the audit to the needs of management. Indeed, there may be management interest in using the process of the audit and its results for a presentation about the corporation's IP assets and program to the corporation's Board of Directors. Boards are focusing increasingly on having processes and procedures in place to ensure that IP assets are being properly managed. 

8 Phases Of The Intellectual Property Portfolio Audit

The IP audit will be discussed below in terms of the phases that may be used to effect it efficiently. The phases may be run in immediate sequence, or they may be separated by days, weeks, or in some instances months, to ease the burden on internal staff and the budget. Where practicable and applicable, the assets audited in any given phase should be effectively inventoried if that has not been done already. Unknown or inaccessible assets may be practically unusable and significant market advantages may be lost.   Our Dallas IP Portfolio attorneys work with each client to understand their business plan, and assist in developing strategies which protect intellectual property. An IP portfolio audit can generally be summarized in a series of 8 phases: 

• Phase I: Structural Familiarization 

• Phase 2: Utility patents (including Business Method/Process Patents)

• Phase 3: Trade Secrets and Proprietary Information

• Phase 4: Trademarks 

• Phase 5: Designs, Design Patents, Mask Works and Utility Models 

• Phase 6: Copyright 

• Phase 7: Dispute resolution

• Phase 8: The Intellectual Property Audit Completion

Intellectual Property Portfolio Attorneys

Our Dallas intellectual property portfolio  attorneys specialize in the area of law protecting the property rights of inventors and we can assist you in analyzing your patent portfolio.  We work with you to developed and maximize your IP portfolio and, once developed, assist you in monitoring your portfolio such that your goals remain met now and into the future. 

A Texas Lawyers Article written by our Dallas intellectual property attorneys concerning IP audits for corporate management and in house legal counsel can found at the following link: What In-House Corporate Management Needs To Know About IP Audits.