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),
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.
periodic review of the market on key activities
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
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
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
inventor contracts and assignment contracts,
cooperation agreements (R&D, etc.),
agreements to waive IP rights (in the event of employee departures, etc.);
the fields of application,
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;
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.