IP Portfolio Overview:
Compile a list of all foreign and domestic patents, patent licenses, trademarks, trade names, service marks, and copyrights held by the Company.
Provide copies of all material agreements for licensing of Company technology to/from third parties.
Describe the importance of existing patents and assess the necessity for additional patents.
List proprietary processes controlled by the Company.
Legal Representation and Management:
Identify the law firm handling patent and trademark matters for the Company, including contact information.
Detailed IP Assets and Agreements:
Detail US and foreign patents and patent applications, including dates of invention, application, issue, and all related prosecution files.
List US and foreign copyright (and mask work) registrations and applications, with relevant dates and documents.
Catalog US and foreign trademarks, service marks, trade names, and domain names, including registration applications and relevant dates.
IP Assignments and Licenses:
Document all agreements where intellectual property is assigned or licensed to/from the Company, including with employees and contractors.
Note any correspondence regarding alleged or potential IP infringement by the Company.
Research, Development, and Confidentiality:
Review any research and development or joint venture agreements related to product, process, or technology.
Examine nondisclosure agreements and other agreements relating to the Company's intellectual property.
Litigation and Claims:
Describe any past, current, or pending IP threats, claims, or litigation involving the Company.
Registration and Application Documentation:
Schedule and provide copies of all intellectual property registrations and pending applications.
Document the chain of title records and review all current IP agreements, noting renewal dates.
Revenue and Protection:
Itemize all pending patent applications and determine annual patent renewal costs.
Assess the current patent-related revenue stream and document the patent application process.
List all trademark and service mark registrations and applications, verifying the status of affidavits of use and renewals.
Catalog all unregistered trademarks and service marks used by the organization.
Confidential Information and Competitive Advantage:
Check for proprietary information marked as "confidential" and verify that Invention Assignment and Confidentiality agreements are executed by all employees.
Obtain copies of all licenses of intellectual property where the company is the licensor or licensee.
Litigation and Disputes:
List all IP-related lawsuits involving the organization.
Order searches for all patents, trademarks, copyrights, and trade names to determine their status and any disputes or infringement claims.
Contracts and Future Rights:
Review contracts granting or receiving licenses for intellectual property rights and those granting rights to future products developed by the Company.