Intellectual Property Checklist

Intellectual Property Checklist
By R. Stone


An intellectual property audit (IP Audit) aims to identify what IP is owned by our clients and how important those assets are to them. Once identified, those items can then be attributed a value, and if required can be transferred, licensed or assigned.

An IP Audit can provide significant competitive advantages as it forms the basis of IP management, exploitation and commercialisation. An IP Audit also allows informed decisions to be taken in the event any intellectual property infringement occurs.

1. Have you registered a trademark for your brands and business name for each country in which you do business?

2. Have you registered a design to protect the visual appearance of your products?

3. Do you use Non-disclosure agreements (NDA) or confidentiality agreements before disclosing your valuable IP to third parties?

4. Is your business part of a group of companies?

5. Are your employees subject to a written employment agreement?

6. Have your contractors and suppliers created intellectual property for you? If so, have they assigned that intellectual property to you in writing?

7. Are your contractors subject to a Work For Hire agreement?

8. Does your business have a privacy policy, and is it clearly displayed on your website?

9. Does your business clearly display terms and conditions on its website?

10. Are you in business with others, and if so how is your business structured?

11. Are your trademarks and designs registered to your trading entity, or a separate intellectual property holding company under your control?

12. Do you monitor your competitors' trademark and design applications?

13. Have you lodged Customs Notices for goods bearing your valuable trademark?

14. Have you registered all available variants of your business' domain name?

15. Do you allow third parties or suppliers to use your business' IP without a signed Licence Agreement or Distribution Agreement in place?

Legal fees may in reality comprise only a very small percentage of your overall investment in an IP audit and IP protection. If you are (or were) prepared to spend tens or even hundreds of thousands of dollars on commercialising your intellectual property, then you would be wise to commit a relatively small percentage of your funds to ascertaining the scope of your IP assets.

Engage a lawyer with commercial business experience to advise you on the risks and opportunities of a transaction and protect your interests. Stone Lawyers assists clients from a range of industries across the spectrum of their commercial activities and in a variety of specialised areas. Find out more at http://www.stonelawyers.com.au