Mrs. C. Arthi Gandhimathi Dr. K. Gopalakrishnan
Research Scholar Member, Board of Governors
Anna University Coimbatore National Design and Research Forum Coimbatore – 641 047Bangalore – 560 001
The single most compelling reason for any company, particularly an SME, to conduct an intellectual property (IP) Audit. But what should be measured and how can we begin the process? An IP Audit is defined as a systematic review of the IP assets owned, used or acquired by a business. Its purpose is to uncover under-utilized IP assets, to identify any threats to a company’s bottom line, and to enable business planners to devise informed strategies that will maintain and improve the company’s market position. In many cases SME’s do not have the resources to conduct a full audit of all its IP and will find it difficult to put a value to each of the components making up an IP portfolio. Putting aside these difficulties, and at the risk of reducing the exercise to the “too-hard basket” it is important for every business to document and value what is, in many cases, its most important intangible assets. According to the literature I have read, an IP audit can be initiated for any number of reasons. The common theme in all of these reasons is that the IP audit is initiated in response to an event that requires the company to REALLY know what is going on with its IP – as though IP didn’t matter all that much before.
Unfortunately, the IP audit will tell companies about mistakes they’ve already made, or opportunities they’ve already missed, but it won’t necessarily prevent them from making mistakes in the first place.
Scope of the Audit
If the purpose of an IP audit program is to identify what IP a company owns, its current status and its commercial potential, the audit will be extensive. It might include: • Questionnaires for present and former employees and contractors to acquire information on, for example, inventions, know-how and methodologies acquired, and computer software developed; • Interviews with employees to uncover information about discoveries and creations; • Review of contracts to which the company is, or has been, party. This will determine whether or not normal business activities could have given rise to the creation of IP, and if so, that there are contracts in place stating who owns that IP. Contracts to be reviewed should include agreements with employees and independent contractors, joint venture, licence and research and development agreements; • Documents of Title as evidence of current registrations; • Database searches, including commercial patent databases and searches of public registers such as IP Australia's database of patent, trade marks and designs. Court registries could be searched to identify any infringement actions against an audited company; and • Publication reviews of trade journals and government gazettes (particularly in relation to applications for patents, trade marks and designs), as well as competitors' brochures and other marketing material, information memoranda and prospectuses to be kept informed of possible developments, infringements and compliance with legal requirements.
Conducting an IP Audit
When to do an IP audit
IP audits are commonly undertaken either:
• As part of an ongoing IP asset management program;
• When a business is being bought, or sold; or
• When you are enforcing or defending your IP rights.
IP as part of a management strategy
All viable businesses seek to preserve and generate increasing returns on their assets. Failure to preserve and enhance your IP may result in missing opportunities for growth and possibly jeopardise your company's viability. Once you have set up your IP register, you can develop policies and procedures to ensure that each time you create new IP it can be identified and effectively maintained and...