How To Prepare For And Carry Out An IP Audit

How To Prepare For And Carry Out An Intellectual Property Audit

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Intellectual Property (IP) rights are increasingly the most valuable and effective tool for businesses in today’s demanding and competitive commercial environment in the UK. Intellectual property refers to intellectual assets, ideas, patents, trademarks, copyright etc. The proper administration of IP rights provides a launchpad for a firm to get ahead. Conducting IP Audits is thus necessary to create a successful and efficient Intellectual Property Asset Management System and to evaluate the company’s current and future intellectual assets. These audits would provide information and recommendations for a methodical approach to the management, protection, and use of intellectual property.

Intellectual property refers to intellectual assets, ideas, patents, trademarks, copyright etc.

What Is An IP Audit?

An Intellectual Property Audit program in the UK identifies IP assets, evaluates their legal status and valuation, and identifies methods for protecting and monetising the said assets. It is a systematic, exhaustive, and solution-focused evaluation of the IP that a UK business owns, utilises, or acquires. An IP Audit can be made to measure to business’ unique requirements, and it often has two main goals:

  1. To foresee and manage risks associated with a business’s IP portfolio and
  2. To allow informed business decisions to be made in relation to IP strategies that help maintain and improve its competitive position in the relevant markets. – You can read more about it in our previous blog.

Is an IP Audit necessary?

It can be an uphill battle for businesses in the UK that are not experienced in the complex IP laws to effectively identify and employ their intangible IP assets as a tool: to achieve their goals, establish a space in the market, and maximise the business’s value, growth, and success.

An IP Audit can assist in achieving business objectives such as:

  • Recognising and keeping track of the company’s IP assets
  • Enhancing the company’s IP asset security
  • Increasing both current and future value
  • Erecting a functional IP administrative framework
  • Estimating the current and future value of IP assets
  • Identifying and managing possible dangers in the future.
  • Identifying and fixing any issues with the IP chain of titles
  • Encourage innovation and creativity
  • Designing a plan to provide protection in important markets
  • Identifying the IP-related advantages, disadvantages, strengths, and dangers.
  • Creating a plan to increase the value of IP assets leading up to a future sale, merger, acquisition, growth, financing, capitalisation, or liquidity event.
  • Cutting expenses

 

What are the types of IP Audits?

There is no “one size fits all” approach when it comes to IP Audits. This is because they are customised to the unique requirements and goals of a firm, but they may typically be divided into three groups: (1) General-Purpose IP Audit, (2) Event-Driven IP Audit, (3) Limited-Purpose IP Audit.

General-Purpose

New businesses or those thinking about establishing new IP rules, standards, or processes employ this widest sort of IP Audit.

It is also appropriate for businesses making significant organisational changes, such as new marketing strategies.

Event-Driven

The term “IP due diligence” is another name for this kind of examination. It’s used to evaluate the risks and value propositions of a company’s intellectual property assets. Event-driven auditing is frequently used before engaging in a financial deal involving IP (such as an initial public offering), when introducing a new service or product, when thinking about IP licensing, and in situations including bankruptcy and layoffs.

Limited-Purpose

The scope of this IP Audit is the smallest one. It is contextual in type and frequently utilised to support a legal stance or the estimation of a specific intellectual property asset. It can be used in situations like overseas IP filings, engaging in e-commerce, avoiding infringing on third-party copyright content, litigation planning, and IP Law changes.

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How to prepare for an IP Audit

It is crucial to establish clarity about the audit's goals, available resources, and strategy before starting the audit process.

It is crucial to establish clarity about the audit’s goals, available resources, and strategy before starting the audit process.

how to prepare for an ip audit

Purpose

Making sure you understand the goal of the IP Audit is the very first step in planning one. This entails deciding the audit’s type and relevance as well as its time and financial budget. The execution of the audit and its result will be significantly impacted by these decisions.

Research

Compile as much necessary data as you can about your IP assets’ relationships to internal and external relationships, your business plan, other assets, your present IP management position, any ongoing IP issues, and connections to your company’s finance.

Plan

An audit plan outlines the business areas that will be examined, the audit’s scope, the time frame, the budget, the duties and assignments of the team, and the format of the final report.

Checklist

The likelihood of omitting one or more important phases in the auditing is reduced by a thorough checklist. Every checklist is customised to the kind, size, location, and audit scope of each particular organisation. Every individual on the audit team will utilise the checklist.

Contracts

Any agreements that might significantly affect intellectual property should contain adequate, relevant clauses that can be identified and evaluated. These cover contracts for R&D funding, employees and contract workers, joint ventures and partnerships, licensing, and projects.

How to Carry Out an IP Audit

The required preparatory stages are followed by four primary processes that make up the IP asset audit:

how to carry out an ip audit

Inventory

The first phase entails a straightforward inventory activity where all intangible assets are listed, and each is given a brief description. This highlights any discrepancies in the utilisation of these assets and specifies how they are being used.

Ownership

This phase involves determining if all the assets included in the inventory are, in fact, held by your business and, if not, by whom. Where you have ownership of assets, the next step is to determine the kind of ownership (sole, shared, licenced, etc.).

Infringement Check

In this stage, you collect information on any assets that your company owns that may be vulnerable to infringement by third parties, as well as any assets that your company does not own but that may be violating the rights of other parties.

Plan of Protection

This stage highlights possible changes to policies, procedures, and IP management practices and discloses any flaws in the legal, regulatory, and administrative processes associated with the management of IP assets.

What to Do After the IP Audit?

cost benefit analysis

The next step is to weigh the advantages and disadvantages of obtaining IP rights for the assets you have identified.
Protect your IP to protect your business and take action in areas of the market you want to dominate. Once you’ve secured IP rights in the UK, you’ll need to keep an eye on and strategically employ these assets to further your business’s larger commercial goals. This should be supplemented by routinely reviewing trademark and patent databases to keep yourself updated on the actions of rivals and other relevant parties.

At Start.Biz, we help make IP audits a complete breeze and position businesses for success. So, get in touch with us today for all your IP needs and let’s take your business to the next level!

Summary

An Intellectual Property audit program identifies IP assets, evaluates their legal status and valuation, and identifies methods for protecting and monetising the said assets.

Conducting IP Audits is necessary to create a successful and efficient Intellectual Property Asset Management System and to evaluate the company’s current and future intellectual assets.

An IP Audit helps identify and assess IP assets and foresee and manage risks associated with a business’s IP portfolio.

IP Audits are of three types: (1) General-Purpose IP Audit, (2) Event-Driven IP Audit, (3) Limited-Purpose IP Audit.

In preparing for the IP Audit, the first step is to understand the goal of the IP Audit. This is followed by researching relevant data about the IP assets, a plan about the audit’s scope, timeframe, and budget, and lastly, contracts that cover things like funding, licensing, R&D etc.

There are four primary processes to carry out an IP Audit. These include listing the assets as part of the inventory, determining the ownership of each asset, checking for infringement, and finally, planning for protection by addressing the management of IP assets.

After completion of the IP Audit, the next step is to weigh the advantages and disadvantages of obtaining IP rights for the assets you have identified.

UK Trade Mark Registration Guide To Get Started

UK Trade Mark Registration Guide To Get Started

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Trade Mark registration in the UK does not have to be a hassle, and there are many advantages once completed. It ensures that when you go on with your day, you have peace of mind knowing that your brand and business name are protected, whether you’re forming a limited company or registering as a sole trader.

Registering a Trade Mark offers you a level of protection. This blog will examine what registering a Trade Mark is and what the benefits are of doing so.

What Does Trade Mark Registration Mean?

You could find it easier to protect your company and brand if you Trade Mark its features such as your business’ logo, company name or even the names of your products or brands within your business.
Your level of brand control will increase, allowing you to sell or licence it as you see fit. If someone uses your branded items without your permission, you are able to ask them to stop doing so and have the option to initiate court proceedings against either the person or business that is doing so. In effect, suing them for doing so. In order to stop others from utilising the Trade Marked name, you may also place the ® sign next to it. This sends a warning to others that you own the Trade Mark and that others are not able to use this.
Find more about Trade Mark Registration in our other blog.

What Can You Register?

When looking at how to register a Trade Mark, you first need to know what you can actually register. UK Trade Mark law is fairly clear on this question. Your Trade Mark can include text, logos, images, and more, but it must be simple to recognise. However, you are not permitted to register derogatory phrases or pictures, and your Trade Mark cannot represent a summary of the products or services you offer. You are also prohibited from Trade Marking any deceptive statements about your company or unoriginal terms and phrases.

It goes without saying that your Trade Mark cannot be identical to something that already exists, but to make sure, check the Intellectual Property Office to see if anyone has previously registered something with the same identity or brand.

Start.Biz is able to undertake Trade Mark searches and offer you advice based on your business’s specific assets and identity. Furthermore, if you do not wish to undertake the process of registering a Trade Mark yourself. Start.biz can register Trade Marks on your business’ behalf and act as your agent, ensuring no one attempts to register a Trade Mark, which is similar to your business.

What are the Benefits of registering a Trade Marking for your Business?

The name, logo, graphics or branding of your company are in the public domain; this means that they are out in the open and thus open to use by anybody. This can’t happen if you have registered the item as a Trade Mark because when you register it, other businesses hoping to trade under identical names or with the same logo or branding won’t be able to use them.

A Trade Mark is not mandatory, but it can hold the key to success for your business. 

Following are some of the benefits a Trade Mark offers:

BENEFIT 1: Although unregistered Trade Marks used in the sale of goods or services could be legally protected, the burden of proof is on you and is substantially greater in the event that someone copies or infringes upon your work. The burden of evidence is lessened, and the business owner is given additional protections when they have a registered Trade Mark on file. Your Trade Mark will be date registered and held at the Intellectual Property Office as evidence of your ownership.

BENEFIT 2: By filing for Trade Mark registration, you may ensure that your brand is distinct from any existing businesses that have registered a Trade Mark. If you unintentionally use someone else’s name or Trade Mark, you risk being sued by the owner of the registered Trade Mark, having to pay fees and fines, and being forced to forfeit any profits you made using the unregistered mark. Court proceedings can be lengthy and costly in this arena.

BENEFIT 3: By registering your Trade Mark, you may prevent other businesses from using a mark that is identical to yours or one that is very similar and may cause confusion over which business they are contracting with.  A Trade Mark grants your business the only right to use the mark in commerce. You own your brand once you’ve registered your Trade Mark.

BENEFIT 4: If someone uses your Trade Mark without permission, you may be able to sue them. It is possible that the income raised by the use of your Trade Mark could be assigned over to you. 

BENEFIT 5: You can use the sign “®” after your Trade Mark to denote that it has been registered with the Intellectual Property Office ( IPO), raising the status of your business.

BENEFIT 6: If your business plans to grow internationally, you register your Trade Mark globally, but you need to be mindful that you would need to file your application at the national office in each country that you wish to register your Trade Mark, save for within the EU, where you can file your application with the European Union Intellectual Property Office. 

For more on the benefits of Trade Marking, read our previous blog about the 7 reasons why you need to Trade Mark your business in the UK.

How to file a Trade Mark Application?

How to file a Trade Mark Application

You must decide who is registering the Trade Mark, whether you’re doing it on behalf of yourself, this is the case if you’re registered as a sole trader.  If your business has been formed as a Limited Company, the company could own the Trade Mark.  You are also able to use an agent such as Start.Biz or a firm of Solicitors to register your Trade Mark.

Additionally, you’ll need to provide a picture and offer the Trade Mark in an advanced format (one that includes more information than simply the name). A single Trade Mark is for a single phrase, sentence, or design, for example, and a series is the variant of a certain term, expression, logo, etc. It would be helpful to decide whether you require a single or series of Trade Marks before registering.

The Trade Mark class, or the category of your Trade Mark, is important for you to know. Make sure you choose wisely since only the goods and services you list in this section will be covered by the registered Trade Mark.

Follow the steps below on how to get a Trade Mark:

file a trade mark application

Step 1: Search

A Trade Mark search should be your first course of action before filing.

Step 2: Filing a Trade Mark Application

To apply for a UK Trade Mark:

  • Trade Mark name
  • A photograph of your company’s Trade Mark logo (.jpg is preferred);
  • Name and address of the applicant (which may be an individual, a pair of individuals, or a business such as a Limited Liability Partnership (LLP) or a corporation);
  • A list of the products and/or services that your Trade Mark is currently being used on or will be used in connection with.

If your application seeks priority from a matching international Trade Mark application, present the application number, filing date, and country of the initial filing.

The UK Intellectual Property Office issues a formal filing receipt 2-4 days after filing. The filing receipt certifies the application’s filing date and provides a number for it.

Step 3: Examination

Your Trade Mark application in the UK will generally be assessed within five to fifteen days.

Your application will be looked at based on the following criteria:

Relative Grounds: If the Examiner determines that your Trade Mark is confusingly similar to a Trade Mark that has already been filed or registered in the UK, he or she will notify the UK applicant. Be aware that the Trade Mark Office won’t reject your Trade Mark if there is a comparable mark.

Absolute Grounds: The Trade Mark’s distinctiveness or descriptiveness is decided by the Examiner. Your mark will be scrutinised by the Examiner to ensure that it is neither offensive nor unethical.

The Examiner may also have other inquiries, such as requesting a clarification of the products or services if they weren’t clear.

In the event an examination objection is lodged, the Examiner will give the applicant time to reply.

Step 4: Publication

The application will be placed in the online Trade Mark Journal when the examination phase is finished. Third parties have two months to submit an objection based on previously unregistered or registered rights.

Confusion with a previously filed or registered Trade Mark is the most frequent basis for an objection.

Bad faith and descriptiveness are two other justifications.

When a third party is involved, they often ask to prolong the objection time by a month in an effort to reach a mutually agreeable solution. Oppositions are frequently settled via the straightforward change of goods or services. Without a formal objection, many cases are settled.

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Step 5: Registration

The UK IPO will provide an electronic registration certificate two weeks following publication. There is no longer a paper certificate programme. The electronic copy will be emailed to you.

The registration certificate attests to the registration’s specifics and dates.

As mentioned earlier, you may use the ® sign to denote that your Trade Mark has been registered after the UK Trade Mark application is approved.

You may use the ® sign to denote that your Trade Mark has been registered

What is the timeframe for UK Trade Mark Registration?

If things go smoothly, the registration typically takes four months from the date of application, assuming the examiner will not raise any issues and no one objects to your application.

What is the cost of Trade Marking in the UK?

If you register a Trade Mark yourself in the UK: a single class of products and services, it costs as little as £170 to do so online and £200 by post.

The cost of filing slightly increases with the number of classes covered because each class costs an additional £50. In addition to application and payment, you must provide a fee sheet as well.

You must be aware that if your application is unsuccessful, and it may be for a minor issue, you will forgo your application fee. Further applications will warrant the full application fee again. It is for this reason some business owners prefer to work with an agent such as Start.Biz as this would offer them the security of advice around their application ahead of filing, and any amendments necessary and likely objections are known ahead of paying the application fee.

How long does a Trade Mark last in the UK?

Trade Marks don’t last permanently and must be renewed every ten years if you intend to keep using them. You should note that if you wait until after the six-month period before or after the expiration date, you will not be able to renew it online.

Make your brand your own – Trade Mark it today!

Trade Marks don't last permanently and must be renewed every ten years.

At Start.Biz, we have extensive experience in helping a wide range of businesses with Trade Mark Registration. We make the process hassle-free for our clients and get the job done quickly. Our ultimate goal is the success of your business. So, get in touch with us today for all your Trade Marking needs, and let’s take your business to the next level!

Summary

You could find it easier to protect your company and its brand if you Trade Mark its features

Your Trade Mark can comprise of text, logos, images, and more.

Trade Mark lessens the burden of proof in the case of infringement, mitigates the risk of getting sued, prevents other businesses from using a mark identical to yours, allows you to initiate legal proceedings against anyone using your Trade Mark, elevates the status of your business, and assists business growth internationally.

Steps for filing a Trade Mark application in the UK include: (1) Trade Mark search before filing, (2) ensuring the availability of required documents, (3) getting the application examined, (4) getting the application published in the Trade Mark journal, (5) receiving the electronic registration certificate.

UK Trade Mark registration takes about four months.

The application fee if filing directly at the IPO is between £170 and £200 per class and per Trade Mark.

Trade Marks have to be renewed every ten years.