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Intellectual Property Audits — Do You Have a Plan to Protect your Intellectual Property?

October 5, 2022

This means, first and foremost, assessing what confidential information and intellectual property it owns and uses.  Has that intellectual property been properly registered or otherwise protected? Have registrations been properly monitored and maintained?  Are the marketing and advertising claims accurate and verifiable?  Are employees handling confidential information and intellectual property correctly?  Are third parties using it without permission?  The wrong answer to any of these questions could mean the loss of rights.

You also need to be concerned with confidential information and intellectual property owned by competitors and other third parties.  Are new products, designs and logos vetted for IP infringement before they are brought to market?  Are new employees bringing intellectual property or trade secrets with them?  If your company is infringing on another’s IP or misusing confidential information to which it has been entrusted, the consequences can be severe.

Here is a simple checklist to quickly assess where your company stands on the issue of protecting its intellectual property:

Incoming and Departing Employees
  • Are new employees interviewed regarding preexisting materials that they may wish to bring to their new job?
  • Are new employees interviewed regarding any contracts with former employers to which they remain subject, such as non-disclosure agreements or non-compete agreements?
  • Are all employees required to sign non-disclosure agreements restricting their use of company information to purposes related to company business?
  • Are key employees required to sign non-compete agreements to prohibit them from leaving the company and immediately begin working for a competitor?
  • Does the company have an employment manual that discusses confidential information and intellectual property matters?
  • Are departing employees interviewed regarding their involvement in any creations during the course of their employment, whether they have assigned their creations to the company and whether they leaving all company confidential information and intellectual property at the company?
Names and Marks
  • Have the company’s name, brands, tag lines, logos and other marks been cleared from possible infringement claims by others?
  • Has the company registered its name, brands, logos, tag lines and other marks to protect them from infringement by others?
  • Does the company have a process to monitor how others may be using the company’s name, brands, tag lines, logos and marks in their businesses or on the Internet?
  • Does the company have a process to keep trademark and domain name registrations valid and up to date?
Products and Inventions
  • Are employees who may invent or create things of value for the company monitored regarding their creations and are they encouraged to document and report those creations?
  • Does the company have a plan in place to protect its trade secrets?
  • Are confidential information and company trade secrets made available to only those employees who need access and are subject to a trade secret agreement?
  • Does the company monitor the use by employees of open-source software or other software that the company may not further license?
  • Are newly developed products cleared against possible claims of infringement from competitors?
  • Does the company protect and register the copyrights it owns in its important printed, graphic, video, software and web-based materials?
  • Does the company protect and register its patent rights in new inventions?
Marketing
  • Can the company verify the claims and statements made in its marketing and advertising materials?
  • If the company or its products/services are referenced in competitor’s marketing and advertising materials, are the claims accurate and are the company’s marks being used properly?
  • Does the company refer to its competitors or their products/services in its marketing and, if so, are those references accurate and are competitor’s marks being used correctly?
  • Is the company subject to specialized state or federal regulation regarding its business or its marketing?
Internet Domain Names
  • Do competitors use the company’s names or marks in their Internet domain names or on their websites?
  • Has a cyber-squatter registered a domain name that should logically be available to your company?
International Issues
  • Are counterfeit goods coming in from outside the U.S. that infringe on your copyrights, trademarks or patents?
  • Are your goods intended only for export sales returning to the U.S. and being sold in competition with your domestic goods?

This is only a sampling of the questions you should be asking yourself.  If you need assistance determining the answers, or your answers indicate that you already have a problem, we invite you to contact the intellectual property lawyers at Kerr Russell to help you develop solutions.

About the author:

Max Sneyd focuses his practice on assisting clients with intellectual property protection, contract formation and negotiation, and entrepreneurial growth. With 20 years of experience, he leads the firm’s Intellectual Property practice group. He also assists clients on intellectual property litigation, licensing, business torts, entertainment law, supplier disputes.

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