If your technology start-up business is looking for venture capital financing, the performance of an intellectual property audit (“IP Audit”) is essential to avoid delays in obtaining such financing. IP Audits are an important mitigation strategy to consider prior to any licensing, financing, merger or transfer. After an IP Audit, you will have a better understanding of your intellectual property liabilities, risks and legal status. Intellectual property assets include such things as domain names, copyrights, trade secrets, trademarks, patents, branding and technology and software licences.
An IP audit can involve:
- onsite interviews to identify the products, services, technologies and intellectual property assets and rights;
- onsite interviews with individuals associated with the intellectual property assets;
- contract reviews (for example, employment agreements, service agreements and licence agreements) to determine if you own all intellectual property assets and rights;
- security reviews to determine if disclosures have occurred with respect to intellectual property assets and confidential information, together with a review of the internal procedures to protect confidential information and intellectual property assets;
- searches at the various Intellectual Property Offices to determine ownership, granting of security interests and assignments.
Performing an IP Audit in advance of a licensing, financing, merger or transfer transaction can ensure that you have adequately protected your intellectual property assets and rights prior to entering into negotiations with third parties. It also provides you with sufficient time to consider possible remedial actions to correct any defects that might otherwise impede or prevent the transaction. Venture capitalists and other third parties who are interested in your technology will be doing their own due diligence prior to completing a transaction with you. Be prepared, as inadequate protection of your intellectual property will delay these transactions and the flow of monies.
In addition, by determining in advance what intellectual property assets and rights you own, use or acquire, you can develop strategies to maintain and improve the market position of your business. You can maximize the future potential of your business by managing and exploiting the intellectual property assets and rights in the most effective way possible.
*This article was written with assistance from Tatiyana Bubnowicz (Articling Student-at-law).
Silvia de Sousa will be speaking on “Protecting Your Intellectual Property” at the Expanding Your Business Globally: Strategies for Global Markets seminar to be held in Winkler on March 10, 2011 from 7:45 a.m. to 9:45 a.m. Cost for the entire event is $15 per person. Click here for more information or to register.
About Silvia de Sousa and Thompson Dorfman Sweatman LLP
Silvia de Sousa is an Intellectual Property Lawyer with Thompson Dorfman Sweatman LLP. Silvia’s practice is concentrated in the area of business law with an emphasis on intellectual property law, life sciences law and technology law. Her practice also includes intellectual property transactions, commercial law, financings and licensing matters. Silvia’s practice focuses on strategic planning and management of intellectual property assets and she is regularly involved in advising companies on strategies for protecting and exploiting intellectual property assets and assessing those assets and potential acquisitions. She also works closely with the members of her firm’s business group on intellectual property aspects of corporate transactions. Silvia’s experience also includes enforcing intellectual property rights.
For assistance with this or any other intellectual property matter, please contact any member of the TDS Intellectual Property Practice Group.
Thompson Dorfman Sweatman LLP (TDS) is one of the leading full-service business law firms in Manitoba, with over 120 years of history providing legal services to its clients locally, nationally and internationally. From our offices in Winnipeg, Manitoba, TDS has the expertise necessary to help clients take advantage of every opportunity and to develop creative solutions to legal challenges experienced in their business in a timely and cost-effective way. The full-service firm’s seventy-eight lawyer team covers over 20 areas of practice and offers services in seven languages including English, French and Spanish. TDS has long been recognized as a centre of excellence in the areas of business law, labour relations law, employment law, civil litigation and dispute resolution. LEXPERT® The Business Magazine for Lawyers recognized TDS as the leading corporate law firm in Manitoba, being the only Manitoba corporate law firm at the centre of its “Bulls-Eye” ranking of Manitoba corporate law firms. A number of our lawyers have been recognized by LEXPERT® and THE BEST LAWYERS IN CANADA® and other legal publications as being among the leading Canadian lawyers in their areas of practice.
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