IP ASSET MANAGEMENT IP AUDIT AND IP DUE DILIGENCE

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18 Νοε 2013 (πριν από 3 χρόνια και 9 μήνες)

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“The IP Experts”


1

BY P. KANDIAH


KASS INTERNATIONAL SDN BHD





IP ASSET MANAGEMENT


IP AUDIT AND IP DUE DILIGENCE

“The IP Experts”


2

IP Assets

1.
Name of Business / Name of Operator

2.
Purchase price / sales price

3.
Type of clients / purchasing practice

4.
Seasonal demands

“The IP Experts”


3

IP Assets

1.
Name of Business

2.
Delivery route/time

3.
Individual client requirements

4.
Purchase price / sales price

5.
Seasonal demands

6.
Sales analysis results

7.
Confidential Information

Faccenda

Chicken

“The IP Experts”


4

IP Assets

1.
Name of Business / Trade Mark(s)

2.
Copyright in software

3.
Hardware layout design / Industrial design

4.
Patents (where applicable)

5.
Confidential Information

MDEC

SMEs

“The IP Experts”


5

What are IP Assets?

Any Intangible Assets of Value / physical

assets

i)

What if the premises






are burnt down / stolen?





Physical assets (computers, servers, furniture, etc) can be
replaced



What about information contained in them?

“The IP Experts”


6

ii)
What if the key workers go
missing?


Dead, resigns, walks away?


What’s

in

their

brain?



Does

it

belong

to

them?

“The IP Experts”


7

Firms do take inventory of physical assets


Required by accountants / tax authorities


To see whether they need replacement / upgrading


But do firms take inventory of IP Assets?

Often


Not usually seen


Ignorance of value of IP Assets


Does not appear in Balance Sheets

“The IP Experts”


8

IP Asset Management


Know what your IP Assets are?


IP Assets not restricted to registrable rights
(e.g. patents, trademarks, industrial
designs) only


Any intangible creative output that is of
value to business is an IP Asset

“The IP Experts”


9

Checklist of IP Assets

1.
Patents

2.
Trademarks

3.
Industrial Designs

4.
Copyright

5.
Confidential Information e.g. customer
database

6.
Work flow systems

7.
Relationship with suppliers, customers, etc

8.
Customer relationships

“The IP Experts”


10

Checklist of IP Assets
(Cont’d)

9
.


Company

policies

which

gives

the

company

the

competitive

advantage
.

eg
.

pricing

policy

10
.

Work

culture
.

11
.

Contractual

relationships

with

third

parties
.

12
.

Skills

of

key

employees
.

13
.

Company

strategies
.

14
.

Details

of

research

undertaken

/

failed

research

projects
.

“The IP Experts”


11

IP Due Diligence

Questions

1.
Are you deriving optimum value from your IP
Assets?

2.
Are royalty fees due to you, properly
accounted/audited?

3.
What risks are you exposed to?

4.
i) Are you paying royalties on expired IP rights?


ii) Are you maintaining your registered IP rights?

5.

Is there infringement / passing off in the market?

“The IP Experts”


12

IP Due Diligence
(Cont’d)

6.

Relationship with suppliers, contractors, service
providers.

7.
IP rights assessment in acquiring “new”
technology.

8.
Are terms of licensing agreements in respect of
IP Rights duly observed by licencee?

9.
Clear “Freedom to Operate” opinion in launching
new products and/or in new markets obtained?

“The IP Experts”


13

1.
Optimizing value from IP Assets


Licensing out to third parties


identification of
such parties?


Cross
-
licensing of IP rights


Disposing of IP Assets no longer of benefit to
you


Using IP rights as a tool to gain new rights /
privileges


Franchising of IP Assets

“The IP Experts”


14


In

US,

nearly

40
%

of

market

value

of

an

average

company

is

absent

from

its

balance

sheet



In

2005
,

Qualcomm

generated

about

58
%

of

its

$
5
.
7
B

in

revenue

from

sale

of

Qualcomm



designed

wireless

chips



manufactured

by

third

parties

under

contract



Since

1993
,

IBM

has

been

making

more

than

US
$
1
B

per

year

from

licensing

non
-
core

technologies



which

is

otherwise

unused

“The IP Experts”


15


In

2002
,

Korea

exported

technology

worth

US
$
0
.
6
B,

imported

technology

worth

US
$
2
.
7
B

through

licensing,

R&D

sharing

and

Joint

Venture



In

US,

Texas

Instruments

earns

more

from

licensing

its

unused

patent

rights

than

from

its

products



50
%

of

EU

companies

have

no

strategy

for

managing

their

IP

rights

beyond

mere

filing

or

renewal

payment

“The IP Experts”


16

2.
Are royalty fees due to you properly
accounted / audited and paid?


If IP rights licensed, then need system to
ascertain royalties due?

e.g.

Audited accounts,




Right to check premises / sales record

“The IP Experts”


17

3
.

What

risks

are

you

exposed

to?


Are

competitors

“enclosing”

you

on

your

technology?


Are

you

doing

a

competitor

patent

filing

watch?


Are

you

doing

a

competitor

trademark

filing

watch?


Would

you

be

sued

for

IP

rights

infringement

when

introducing

new

products

/

product

enhancements?


“Freedom

to

Operate”

opinion

obtained

before

launching

new

products


Are

you

in

breach

of

any

IP

rights

licence

agreement?

-
by

management?

-
by

employees?

“The IP Experts”


18

4
(i)

Are

you

paying

royalties

on

expired

IP

rights?


All

registrable

IP

rights

have

fixed

duration
:

Patents,

Utility

Innovation,

Industrial

Design

Rights

require

annuity

payments


Once

registrable

IP

rights

expire

or

are

not

maintained,

value

of

licence

falls



no

“monopoly”

rights

in

market




(ii)

Are

you

maintaining

your

registered

IP

rights?


Regular

pruning

of

your

patents,

industrial

design

portfolio



so

“obsolete”

or

rights

of

low

value

are

abandoned

or

sold

to

third

parties

“The IP Experts”


19

5.
Is

there

infringement

/

misappropriation

/

passing

off

in

the

market?


Surveillance

in

the

market?


Analysis

of

sales

data

to

indicate

abnormal

pattern


Timely

action

taken?


“The IP Experts”


20

6
.

Relationship

with

suppliers,

contractors,

service

providers


IP

rights

of

each

party

clearly

addressed


Ensuring

contracts

terms

are

complied


Who

owns

jointly

developed

products


Ensuring

they

do

not

evolve

into

competitor

“The IP Experts”


21

7.
IP

Rights

assessment

in

acquiring

“new”

technology


Is

technology

protected

by

IP

rights

in

Malaysia,

or

in

country

of

interest?


What

is

the

scope

of

patent

claims?


Is

the

technology

area

“crowded”?


Who

owns

the

IP

rights?

Right

to

sell,

grant

licence

on

IP

rights?

“The IP Experts”


22

THANK YOU

P. Kandiah

Tel: 03 2284 7872

Fax: 03 2284 1125

E
-
mail: ipr@kass.com.my