by Erwan COATNOAN DE KERDU

Intangible Capital Value

Our core business: intangible capital valuation

IP Audit



     

    We ask several questions in order to be able to validate an adapted action plan and on the items chosen for your company.

    INDUSTRIAL PROPERTY AUDIT

    Before establishing an intellectual property protection strategy adapted to a particular company, it is useful to perform an intellectual property audit.

    Identification of existing rights

    Patents with classification, both according to the status of procedures, geographical scope, owners, but also according to the following criteria (exploited, non-exploited, exploitable in the future, barrage patents and high potential patents...). And above all define the strategic importance;

    - of patentable inventions kept secret with qualifications relating to the reasons for keeping secret and the above criteria relating to patents on strategic importance...
    - of patentable inventions kept secret with qualifications relating to the grounds for secrecy and the above criteria for patents on strategic importance...
    - of patentable inventions kept secret with qualifications relating to the grounds for secrecy and the above criteria relating to patents on strategic importance...

    titles or license rights taken from third parties.

    Identification of existing procedures and IP policy

    Verification of procedures for managing rights, media, protection, access to data, management and decision-making bodies relating to titles

    monitoring of commercial activity with respect to valid patents

    selection of patentability criteria vs. secrets

    invention declaration forms and disclosure procedure (inside or outside the company)

    filing strategy for the various territories (competitors, market applications, production sites),

    patent committee,

    training of employees in invention activities, counterfeiting problems and detection of counterfeiters;

    dissemination of rules and policies concerning IP (Corporate IP white paper)

    periodic database searches,

    maintenance of repository archives;

    existence of "white papers";

    procedures for computer protection and access controls;

    the existence of "IP charters";

    the existence of marking tools...

    The identification of the litigations

    listing current disputes and those settled in the past, potential disputes with an estimate of the difficulties of procedures and risks evaluated in financial terms and time.

    Controlling counterfeiting

    periodic review of the market on key activities

    employee reports

    Database searches and other sources

    expert reports on infringing facts

    case classifications according to legal proceedings, license negotiations or files to be consolidated

    organization of circular or dedicated letters to warn infringers

    Anticipating third party claims

    exposures and analyses of previously reported claims

    Periodic review of third party filings and registrations

    Dedicated letters to prevent complaints

    Measuring risks

    Qualifications of complainants

    the nature of the asset at issue

    the underlying contracts

    the possibility of finding a solution with a third party

    Establishing a policy of defence by

    analyzing the quality of claims

    opinion of an IP counsel

    legal action or attempted license negotiation

    INNOVATION AUDIT

    Verification of its patent portfolio, search for patents cited in research reports and similar patents held by competitors, quick documentation on identified competitors...

    Identification of contracts

    employee contracts

    inventor contracts and assignment contracts,

    confidentiality agreements,

    cooperation agreements (R&D, etc.),

    non-competition" agreements,

    agreements to waive IP rights (in the event of employee departures, etc.);

    licenses:

    the fields of application,

    exclusive rights,

    sublicenses,

    territories,

    royalties,

    payment methods,

    guarantees granted,

    limitations of guarantees,

    the duration of the contract,

    the method of dispute resolution,

    the terms and conditions for termination of contracts;

    joint venture agreements

    examination of agreements under Article 81 of the EC Treaty,

    examination of licences or transfers of rights arising from such agreements,

    agreements with suppliers,

    rights granted on the IP by the Fsseur,

    Protection of the contract on infringement indemnities;

    distribution agreements

    indemnity obligations,

    rights of use of rights granted to the distributor;

    pooling of resources agreements

    evaluation of bundles of rights,

    protection regarding compensation for infringement,

    rights granted to the partnership and limitations arising therefrom,

    the rights to use the IP resulting from the partnership,

    Periodic reviews and controls of the partnership's evolution,

    creation of IP rights by the partnership.

    THE INNOVATION MEMO

    Le titre

    In which field(s) can innovation be classified?

    The need and the existing solutions

    Proposed solutions: principles

    The proposed solutions: implementation

    How are or will these new solutions be implemented (means used, operation, results) for the basic solution and its variants?

    The users

    Who uses or could use the innovation?
    For what purpose?
    With what results?

    Information sources used

    What are the main sources of information used for the "state of the art"?

    What are the methods used (keywords, etc.)?

    What are the results obtained?

    The point of progress

    What is the status of the innovation (descriptive note, expertise, test, project in progress, operational implementation, etc.)?

    What are the corresponding documents?

    Limitations of the selected solutions

    What are the limitations/deficiencies of the selected solutions?

    What are the problems to be solved?

    Solutions not selected

    What other solutions have been devised/studied?

    Why were they not selected?

    Proposed developments (at the end of an innovation project)

    Should developments be considered?
    Which ones?

    THE MEMO-COOPERATION

    The title

    Context and preparation of the cooperation

    What do we want to cooperate on?
    Why do we want to cooperate?

    What is the purpose of the cooperation project?

    What need does the cooperation project meet?

    What existing solutions meet this need?

    What solutions are being considered/proposed?
    What benefits will they bring?

    Who are the potential users of these solutions?

    Who do we want to cooperate with?
    Why do we want to cooperate?

    Where are we now on this topic?
    What can we do without a partner?

    Why do we need a partner (for competence, time, cost, etc.)?

    Do we know of any potential partners?
    What do we know about them?

    Have we already chosen a potential partner?
    If so, why?
    Who exactly is he/she (company name, etc.)?

    Should we look for other partners?
    How do we do this?

    What type of cooperation do we want?
    Why do we want to do this?

    What can we gain from this cooperation?
    What can we lose?

    What do we want to gain from this cooperation (markets, competitive advantages, productivity gains, knowledge, network, etc.)?

    What are the risks of this cooperation?
    What can we lose?

    What can the partner gain?
    What can the partner lose?

    How will the results of the project be used?

    Who will own what?

    Who will be able to exploit what?

    Who will be able to communicate what?

    How to conduct the negotiation phase (strategy, steps, team, etc.)?

    How long can the negotiation last?

    What should be done in case of a "premature" stop of the project (during the negotiations or during the project)?

    Management of the cooperation project

    Who should contribute what?
    Who can contribute what?

    How to conduct the project?

    What will be the project schedule?

    Who will do what?
    Who will pay for what?

    Who will be responsible for what?

    How will decisions be made?

    How will disputes be resolved?

    What will be the project team?

    Information management before and during the project

    What do we want to keep secret?
    What do we want to keep secret during the cooperation?
    Why do you want to keep it secret?

    What can be communicated with a confidentiality agreement?

    What can be communicated after a confidentiality agreement has been signed?
    To whom specifically (which people? which entities?)?

    Is the information we are going to communicate ready to be communicated?

    What is the minimum we should disclose?
    At the most?

    Is this knowledge formalized?
    With a certain date?

    Do the documents presenting this knowledge include knowledge that we do not want to communicate?

    Should we protect this knowledge (patents, etc.) before communicating it?

     

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