Every business, regardless of size or sector, and many creative or talented individuals, will have valuable Intellectual Property (“IP”).
Whether it takes the form of a logo or brand name, a software application, a new design or invention, creative works or know-how, IP is becoming more and more critical to business success. To protect and realise the full commercial potential of your IP assets it is essential that they are properly understood and safeguarded.
The most effective means of establishing exactly what IP a business has or needs to support its operations is to conduct an audit. Since IP is an intangible asset this is not as straightforward as it sounds and it requires comprehensive expert analysis of the products, services, information, know how and ideas used by a business.
Moore Law has significant experience advising on commercial and Intellectual Property matters and has developed a form of IP Audit designed to investigate the IP which is owned and used by a business or individual and to evaluate its current status and any steps which need to be taken to protect it. Some IP is automatically protected by law without the need for registration (for example original artistic and literary works through copyright, confidential information through secrecy and controlled non-disclosure and certain names and logos by virtue of their use and association in the minds of the public) whereas other IP rights such as patents and registered trade marks are governed by strict rules and technical applications.
The Moore Law IP Audit involves a two stage process to first identify and then advise upon the IP in a client’s portfolio:
STAGE 1 IDENTIFY THE IP
Moore Law will help you identify the IP by asking a series of questions about the IP that your business owns and uses and your responses will help us evaluate the IP in the business and whether or not you own it and/ or hold the requisite rights to use it.
STAGE 2 ASSESS THE IP
By asking a further series of questions and investigating your contracts and third party arrangements we will be able to assess what your rights are in relation to each item of IP identified.
SOME KEY QUESTIONS AND CHECKLISTS
As part of the Audit we will investigate your business and its contractual arrangements and relationships to establish:
- Whether or not you own the IP
- If you do not own it, whether you have adequate rights over it to match your business requirements (including any rights to sublicense it)
- Whether adequate steps have been taken to protect the IP in relation to your staff and contractors. As a basic rule under UK law any IP created by employees in the course of their employment will be owned by the employer but, in the absence of an express written assignment the opposite is true of contractors so to secure IP from a contractor the commissioner of the works needs to address this in a contract.
- Whether there are any restrictions affecting your ability to freely use the IP; such as joint ownership. Joint ownership is problematic under UK law and a co-owner can block the commercialization of IP by refusing to give consent to the venture.
- Whether you allow third parties or suppliers to use your IP without an appropriate license or distribution agreement in place.
- Whether you have trademarks and designs have been registered to your trading entity, or a separate IP holding company which you control.
- Whether you require third parties to sign Confidentiality Agreements before you disclose valuable IP to them.
At the end of the audit Moore Law will present a report including:
- An inventory of all your IP; and
- A review of all areas including issues which have been flagged as requiring further attention, improvement or action.
We use a “traffic light” system which divides items into the following categories:
RED: Areas of critical importance where immediate corrective actions are required
AMBER: Areas which have been addressed in the past but which still require attention and/or remedial action now or may need revisiting in the future
GREEN: Areas which are in good or satisfactory order but which should be kept under review
COSTS:
The cost of the initial Audit is dependent on the size of the company and will be agreed once the likely scope and range of the intellectual property is understood. Each item which requires further work is accompanied by a costs estimate.
INDEPENDENT EXPERTISE:
Moore Law is experience in commercial and IP legal matters but none of its lawyers are Patent or Trade Mark Attorneys so where certain elements of the Audit require input from specialist attorneys we will advise and incorporate into the costs estimate and Audit plan.
