Droit de la Propriété Intellectuelle

OLN Intellectual Property Audit Checklist

We assist our clients with the creation, development, and ultimate sale of businesses and corporations and we are always surprised at how little importance is placed on the Intellectual Property (IP) of these businesses, even though at the end of the day it often forms the largest value component of our clients’ companies.

Most people think of IP as being trademarks and designs. It covers in fact all the assets that form the value of your company, be it customer price lists, Licence Agreements, website domains, marketing materials, software, and distribution methods.

Why Audit Your IP?

While conducting due diligence, we find glaring omissions to safeguard trade secrets or confidential information and the use of such by employees. We also come across restrictive covenants that are unenforceable or non-existent. We frequently see cases where trademarks have been used for years but not registered in all of the applicable countries nor in the relevant categories. We find instances where copyright is claimed but is impossible to prove, or discover it has been developed but that third parties claim ownership. We usually see little effort being made to protect know-how and few steps being taken to manage the risks surrounding such proprietary expertise.  

Protecting your IP is an ongoing effort, evolving as your business expands and develops. However, the first step is to assess the current IP belonging to your organisation, by thoroughly auditing your trademarks, copyright, patents, trade secrets, registered designs, IP-relevant contracts and undertaking a SWOT analysis of all these IP assets.

Our IP Audit Fixed Fee Packages

As part of our drive to assist our clients to safeguard their Intellectual Property, we undertake a robust IP Audit for you on a fixed fee basis, customised to the size and attributes of your business. 

Contact us: If you would like to learn more about our IP Audit Service, please contact Ruby Ng, Director of Operations, on ruby.ng@oln-law.com.

A Selection* of the 48 Questions from the OLN Intellectual Property Audit Checklist^TM

Trademarks

• What brand names, slogans, and/or logos does your business use? Do you know you can register a sound, colour or motion?
• Have you applied to register your trademark in all of the countries where you are doing business or intend to do business in the future? Have you chosen the right categories?
• When are your trademarks due to be renewed?
• Have your key web domains been registered and who is responsible for maintaining them? Do you have any Chinese mark in use and registered to correspond with your English word marks, especially if you are doing business in China?  

Copyright

• If your Brand is so important what are you doing to protect it? 

Trade secrets

• Can you identify the confidential information that has commercial value (e.g. customer lists, advertising strategies, distribution methods, data compilations, manufacturing processes, recipes/formulas)? Can Marjorie the tea lady come in and with a USB take all your information and walk away with it? Can your staff recreate your business? 
• What steps has your company taken to protect these trade secrets (e.g. non-disclosure agreements, firewalls, read only, restricted access)?  
• Are systems in place to limit the access to trade secrets to only those employees who need it?  How often do you review?

Licensing agreements

• Does your company have any Licensing Agreements?

Employment and independent contractor agreements

• Have you reviewed your employment and independent contractor agreements to ensure that there are provisions governing the transfer of the IP rights from employees/contractors to the company?

Other agreements

• Has your company entered into any franchise agreements, royalty agreements, marketing agreements, distribution agreements, consulting agreements, outsourcing agreements, and if so, have you reviewed them?

Evaluating and managing risks

• Do you keep a register of such? Who is your IP go-to person? Would it be nice to have it all in one place?

SWOT analysis

We would also undertake a SWOT analysis of your Intellectual Property:

• S – What are the Strengths of your IP?
• W – What are the Weaknesses? 
• O – What are the available Opportunities?
• T – What are the Threats that are appearing on the horizon? 

*A full version of this questionnaire is available for our clients on a complimentary basis.