TRADEMARK & DESIGN PATENT AUDIT

Phase 4: Performing Trademarks Audits

Phase 4 comprises the steps for review of all aspects of trademark law and practice, excluding the related dispute resolution issues, for the audited company. It is an extremely important area of review as inattention to details in this area can result in the loss of trademark rights or the enjoining of sale or license of a product under a trademark (or service mark) which has great value to the audited company. The perspective on the review must be coextensive with the markets into which the relevant products are sold or may be sold. This usually means a very broad international perspective. It may also include ancillary issues under state laws relating to publicity and privacy as well:

• Assessment of trademark registration status, and identify renewals and common law marks; 
• Assessment of how significant trademarks and other proprietary information can be to the business;
• Assessment of current trademark guidelines and licensee compliance;
• Assessment of protection strategies, awareness training programs, and general trademark compliance measures;
• Assessment of consultant or other third party compliance with trademark requirements;
  
• Additional steps as needed and appropriate.
  

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

Phase 5 comprises the review of the aspects of design protection in its various forms internationally as applied to the audited gaming company. It is of less importance than many other forms of IP to many companies. Nevertheless, it must be considered for those companies which may benefit from it and for which it is well suited because of its somewhat reduced expense. It may be a very important to ensure that the audited company has indeed benefited from the rights if they could be important. The following items should be considered as a patent of any design patent and mask work review:

• Review of internal training programs and patent awareness raising materials;
• Assessment of invention record keeping and reporting measures;
• Review of current disclosure procedures/process in relation to business application of inventions and/or disclosure to customers;
• Review of domestic filing strategies and business reasons for same;
• Review of foreign filing strategies and use of available conventions such as EPC and PCT;
• Review of current patent assets and methodologies for accessing the assets through summaries, etc;
• Review of patent marking procedures/policies;
• Review of patent/technology licensing in and out, process and guidelines;
• Review of patent assertion criteria against various kinds of adversaries (with and without significant portfolios of their own);
• Review of vehicles for finding patent infringements;
• Review of processes for responding to adverse assertions of patents by others, including the decision process for obtaining a non- infringement or other clearance opinion, from counsel or taking other appropriate steps, including notifying suppliers in a timely manner;
• Review of assignment recording processes, foreign and domestic, re acquired patents and review of terms of acquisitions vis-a-vis existing claims of infringement or preexisting infringement damages, etc;
• Assessment of role of software in emerging markets and need, and appropriateness of, protecting software by patents;
• Assessment of inventor invention/employment/assignment documents vis-a-vis state law and generally; determination of all locations where product development is done and how uniform the agreements are with employees; assessment of adequacy; and
• Additional aspects as needed and appropriate.

Intellectual Property Audit Attorneys

Our Dallas intellectual property audit 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.