“Know yourself to improve yourself” – August Comte
Every business will have some form of intellectual property (IP) – not just those that deal with technology. This article will describe the various forms of IP that could be assessed during an IP Audit and why it is important to know about them. The article also explains how an IP Audit can be obtained and provides details of grants that can be obtained to subsidise the associated costs.
A review of your IP assets and processes, and optionally a comparison with your competitors, should help you to decide whether you are making the best possible use of your existing IP assets and budget and the creativity and innovation within your organisation. An IP Audit can identify strengths and weaknesses to maximize business opportunities and mitigate risks, and help you to decide whether your IP strategy is well aligned with your overall business strategy.
A.A.Thornton & Co. offer a wide range of IP audit services to maximize the value of your IP.
An IP Audit should uncover not only the IP rights that a business currently has but also identify any IP rights that they ought to have. It can also provide recommendations to ensure that the potential of any IP rights is maximised in the context of a company’s business plan.
Who needs an IP Audit?
Potentially every business could benefit from an IP Audit. For example, a high-tech company will need to know what patent rights it has, what possible new patents it can obtain, and also will need to understand the value of their patent rights.
A company working in the creative industry may want to know what trade marks, registered or unregistered design rights and copyright they have to protect their brands and images.
Even professional services firms such as accountants could benefit from an IP Audit. They might want to know about the rights in their name and their website, such as who owns the domain name and any photographs.
The IP Audit Procedure
In the first instance, the Auditor will aim to find out as much as they can about the company in question including the commercial sectors in which they operate, the company’s business plan and the features of the company that are important and unique with respect to the competition. This information is gathered in many different ways and differs for different clients, but can involve site visits, reviews of products, manuals and marketing material, reviews of license agreements, searches of electronic databases such as patent and trade mark registries, or competitor analysis.
What type of rights will the IP Audit identify?
The Audit should identify any registered IP rights, such as patents, trade marks and registered designs. This process will include detailing the status of each IP right, including how old it is, when it will need renewing, and the associated cost of maintaining the right.
The Audit could also identify any potentially patentable inventions or registrable trade marks or designs, dependent upon available information. Unregistered rights should also be investigated. These can include unregistered trade mark rights, including trading names and branding, domain names, and unregistered design rights. The Audit could identify trade secrets and copyright material such as databases, photographs and written material in the company websites and product/promotional materials.
Other aspects of IP, including IP-relevant contracts such as any licences, franchises, joint venture agreements, and know-how agreements might also be considered as part of the Audit process.
Potential IP-related threats
The Audit process could include searches to identify any third party IP rights which might present an impediment to the company’s ongoing and/or proposed commercial activities. Searches could reveal the ownership of any identified IP rights and, if there are ownership issues, the Audit could provide recommendations to address them.
Ongoing and/or potential infringements of the company’s IP rights could also be considered, and an assessment of strategy to enforce the IP rights.
The ongoing validity of the company’s IP rights should also be considered, such as ensuring the ongoing use of the company’s registered trade marks to defend them against revocation on non-use grounds. The audit would usually check if all renewal fees for registered rights have been paid and whether there are effective measures in place to ensure that deadlines are monitored and met.
What recommendations might result from an IP Audit?
After completion of an IP Audit, specific recommendations to improve the company’s position could be provided.
For example, the Audit may advise on the company’s use of non-disclosure agreements to make sure that confidential material is kept confidential. It may also advise on IP-related aspects of employment contracts, including internal contracts and those when engaging external contractors, to ensure that the company will not miss out on new IP that is created or commissioned.
Significantly, new company procedures could be proposed which will ensure that maximum benefit can be obtained from the company’s IP. These procedures could include:
- Improving the way in which know-how and other confidential information is captured and recorded.
- Identifying unregistered IP such as design rights and copyright; or trade marks where registration might need to be deferred until distinctiveness has been acquired through use.
- Ensuring evidence of use of trade marks is captured and recorded, for proof of use in the event of non-use challenge or the need to rely upon mature registrations in proceedings brought against others.
- Identifying potentially registrable IP.
- Prioritisation and valuation of registrable and registered IP rights. The value of an IP right will depend on the company’s business plan.
- Infringement clearance procedures. Will the launch of a new product or brand infringe any third party rights? Can anything be done to “clear the path” in view of existing rights?
- Publication clearance procedures. Ensuring that potential IP rights are not lost by inadvertent disclosure.
- Maintaining up to date proprietor, licensee and contact details for registered IPRs, including domain names.
- Marking of products, services and literature with application and registration numbers and using ™ or ® or © symbols as appropriate to the country of registration; or using the © appropriately for copyright works.
- Ensuring that IP rights and strategies are reviewed on a regular basis.
- Making staff more aware of IP in general and the company’s IP assets and strategy in particular.
How do you get an IP Audit, and what do they cost?
Due to the wide-ranging nature of IP rights, most businesses can benefit from an IP Audit. If you are in doubt as to the benefits of conducting an Audit for your own business, please contact us for further information. We can also discuss the type of Audit you require and tailor it to your specific requirements.
The cost of an IP Audit will depend on the size and type of the company in question and upon the required depth and purpose of the Audit. For UK SMEs (less than 250 employees) who need to control costs, we can offer a fixed fee Audit for £3000 including VAT. For that price we could produce a report that assesses existing rights as identified above, including our recommendations for maximising the value of your IP. This could also include a face-to-face meeting afterwards to discuss the report and explore recommendations.
If your company is an innovative UK SME, it may be possible to obtain funding to help pay for an IP Audit, via the innovate2succeed programme and other programmes run by Enterprise Europe Network (EEN). If your company qualifies through one of these programmes, the UK Intellectual Property Office (UK IPO) will heavily subsidise the Audit cost by paying £2600 towards the £3000 cost. More information about the innovate2succeed programme through the UK IPO can be found here or directly through EEN here.
We can advise and put you in contact with these providers in order to support your company.
Benefits of an IP Audit
Those who have had an IP Audit are positive about the results. In fact, according to UKIPO figures, amongst those who have had an IP Audit funded through the UKIPO, 78% of businesses said they are acting on some, most or all of the IP audit report’s recommendations, and another 19% expect to do so in the following year. Furthermore, 72% reported that they had introduced an IP management strategy as a result of their Audit. In terms of new IP rights, 40% of companies filed a new trade mark application, 22% filed a patent application and 17% filed a design application.