2015 Issue

14 It’s possible that a patent is no longer useful to a company, and it may not make sense to maintain it. This might occur if a patent no longer covers current products or if it does not effectively block competitors’ actions. Don’t continue to spend money on a patent that is no longer meeting business goals. A company might already have a process in place for determining whether an invention ought to be patented. A regular review of that procedure is warranted. Look at the products being made by other companies. Is the company infringing patents that belong to another company? Is the company developing products that might infringe? Often a company can change the design of a product sufficiently to prevent patent infringement by the company. Along the way, it must be determined whether competitors are infringing on the companies patents. Another question to ask is whether issued licenses cover all the patents that should be covered. Are the licenses being enforced? If there is no infringement on the part of the company, but the company is paying licensing fees as if it were, then payment on these licenses can stop. Trademarks The first step in a trademark audit is listing all company names, trademarks, trade names, and service marks that are currently being used by the company. Look at exactly how these marks are currently being used. Is there a need to register any new marks? Does the company have any registered marks not being used any more that could be allowed to lapse? Put company policies in place describing how these marks are to be used. In particular, review registration and maintenance procedures regularly. Is a docket being maintained describing filing deadlines? It’s possible that the company is also using trademarks that belong to other companies. Look at any material that the company pres- ents to the public. This includes advertising, cyber-marketing tools, social media websites such as LinkedIn or Twitter, mobile apps, and company websites. Ask whether the company has business cards, letterhead, or mar- keting materials that include words, phrases, pictures, or logos not used to identify the company. Look through offices, including the marketing department as well as stores or waiting rooms for any of these marketing documents. It’s important to sit downwith employees periodically and train them regarding the procedures you expect them to follow. Software license agreements often include trademark licenses. Review them, along with any other trademark licenses. Determine whether each mark is being used in accordance with company policy. Also determine whether third-party licensedmarks are used correctly. Has the company licensed any marks to third parties? If so, then are those third parties conforming to the agreement? Trade Secrets A trade secret is any information that derives actual or potential economic value from the fact that it is not known or readily ascer- tainable by others and is subject to reasonable efforts to maintain its secrecy. Rights in a trade secret can be maintained indefinitely as long as reasonable efforts are made to keep them secret. The first step in a trade secret audit is identifying whether the company has any trade secrets that ought to be protected. Once this is known, then a review of current security measures should be made; noting that improvements might be necessary. Some protective measures might be physical, while others might be electronic. Take the following preventive measures: • Limit the number of people who have access to trade secrets, and monitor their access. • Teach those employees who have access to the company’s trade secrets to value them and to keep them a secret. • Draft contracts that have commitments about nondisclosure and covenants not to compete. Review these often. Knowwhat is covered and whether these commitments are enforceable. Know whether the company is in compliance with any agree- ments that have been made with third parties regarding their trade secrets as well. • If any problems are discovered during the course of the audit, then fix them. Insurance Insurance can be purchased for just about any need, and IP is no exception. The company might already have a policy in place to take care of the cost if some third party claims the company is guilty of IP infringement. If such coverage exists, then review it during the IP audit. There are several specific areas to reviewduring the insurance audit. It is likely that one or more of the following exists: • A cyber risk policy • An errors and omissions policy • A general liability policy • A media liability policy • Riders and endorsements Look specifically for information within the policy about the fol- lowing: • Copyright infringement • False advertising claims • Patent infringement If the company does not currently carry insurance coverage, or if the coverage is inadequate, then counsel with an insurance professional and decide whether it makes sense to buy or increase coverage when a cost and potential risks comparison is made. Conclusion If a business is to succeed and grow, protecting and maximizing IP assets will play a central role in making those goals a reality. Con- ducting an IP audit helps determine what steps to take tomake sure the maximum benefits are obtained from an IP portfolio. It will also help make sure that any of these potentially irreplaceable assets are not lost. Since making IP is harder than protecting it, deciding to conduct an IP audit ought to be one of the easier business deci- sions to make. INTELLECTUAL PROPERTY | continued from page 13