Intellectual Property Law

Chapter 24 Lecture Notes

Major points addressed in the chapter materials include the following:

1. Because clients are often unaware that they own valuable assets that can be protected
as intellectual property, law firms often offer an intellectual property audit to identify
protectable property so clients can protect and maintain their valuable assets. IP assets
can also be used to generate revenue, either through sale or licensing. IP assets can
also be donated to universities and nonprofit organizations (with the donor taking a
tax deduction for the donation).

2. When a company acquires another company, it generally reviews the IP of the
acquired company. This review is usually called a due diligence review. Due
diligence reviews are also conducted when companies offer their securities for public
sale or when companies are sold (so they can identify their IP and make
representations that they own it and there are no defects in title or pending claims
involving the IP).

3. IP audits can be scaled to fit the needs of a client. The first audit is generally the most
expensive. Later audits can be conducted periodically, merely to review IP acquired
since the prior audit.

4. If the client is well informed prior to the audit and assists in the audit, costs can be
reduced.

5. Using outside counsel in the audit will protect communications under the attorney–
client privilege.

6. A questionnaire is usually sent to the client so it can gather the pertinent materials.
The documents will be reviewed and the IP audit team will report results to the client,
giving advice as to how to protect the information. The client may be advised to file
for trademark and copyright registrations and to apply for patents. General
recommendations may be made so that trade secrets can be protected, and advice is
given on locating infringers of the company’s IP. A docketing system may be
established to tickle critical dates for renewals of licenses and trademark registrations
or for additional audits.