Intellectual Property Audits
Intellectual Property Audits for Companies
You might think an audit is only for worried companies. In fact, well-run, successful companies use audits to improve performance and assure compliance with the many local, state, federal, and international laws and regulations.
Non-compliance with laws can cause sudden, significant losses. By uncovering problems earlier, you can save legal and other expenses – and you, your board, and your shareholders will rest easier.
The goal of an audit is to eliminate legal violations and improve a company’s practices in chosen areas, such as procurement or intellectual property. The audit must be cost-efficient, thorough, and solution-focused.
We start by properly defining the problem and creating an audit plan. We will work with you and your management, inside counsel, outside counsel, and other advisers to begin the process.
We then conduct our investigation in a method best suited for your company. This can include questionnaires, document review, and interviews. Our analysis will review your compliance and practices from top to bottom. We will uncover your problems and report them to you in an actionable way.
A successful audit will generate solutions that improve your business, in addition to searching for non-compliance. The audit will generate best practices recommendations which will allow you to seize opportunity and to prevent liability.
It is critical that experienced executives and managers be on the audit team. With this background, they can more easily work with your company. An experienced business manager knows how companies work and realizes each company has its own unique, useful methods.
We perform audits in many different areas. Most clients choose a single area key to their company’s operation to ensure this key area is in compliance with the law. Then, you can be assured you will be (1) avoiding unpredicted losses, and (2) taking advantage of all laws.
We will help your company focus on its bottom line and important business goals. Not only can future legal problems and costs be eliminated, but audits can also reveal unknown business opportunities such as capital allocation, areas for expansion, and even tax-friendly business structures.
The goal of an audit is to change things for the better and we can help you.
Intellectual Property Legal Audit
Review your intellectual property (“IP”) assets- patents, copyrights, trademarks, trade secrets (e.g., customer lists), and proprietary information to determine if your IP is optimally supporting your goals. Ensure that you have adequate legal title to your IP. Review the company’s processes to create, capture, use, and protect IP. Address offensive and defensive considerations. Create guidelines and systems to create, capture, use, and protect IP. Review infringement monitoring and reporting practices. Determine if key employees sign enforceable non-competition agreements. Assess if your contractors pass title to their inventions and work product to the company.
Internet Issues Legal Audit
Review the ownership of your web assets including copyright, graphics, and domain names. Check whether the company infringes other company’s rights. Check Web Development and Service Level Agreements to ensure you are getting the best support and protection. Do you properly document the receipt of employment applications and customer information collected on your web site? This information is subject to state and federal privacy protections. Do you have consents for website links?
IP Audit Accomplishments
Telecommunications Industry IP Review. Conducted an Intellectual Property (“IP”) Review for a publicly traded Denver, Colorado telecommunications industry service provider. This IP Review focused on patents (computer software and business methods) and trade secrets. The project had four key deliverables. The first goal was to ensure that the company had identified and catalogued its entire IP portfolio. We developed extensive guidelines and a process to comb through the company’s existing assets. Then, we developed methods to properly protect its IP portfolio. Next, we developed and implemented the best available systems to identify offensive patenting opportunities resulting from its thousands of person-hours of software development efforts. We also created methods to identify and respond to defensive IP problems. The last goal was to educate all IP users about proper IP use and the new guidelines. These goals were accomplished, resulting in more efficient deployment of the company’s IP portfolio.
Maturing Internet Firm IP Audit. We analyzed the entire legal systems of a maturing private Internet and software firm in Houston, Texas. The analysis included Intellectual Property systems, technology development systems, outside developer relationships, international e-commerce and Internet legal analysis, their web site, the customer confidentiality policy, capital formation, the Employee Handbook and Key Executive Employment Agreements. We created a Trade Secrets Policy to protect the company’s valuable software programming. These solutions were implemented in a cost-effective manner and according to schedule.
Managed a worldwide environmental audit of manufacturing facilities. Responsible for developing audit review criteria and process. Participated in facilities inspection and follow-up remedial processes. Process identified long-term benefits and risk minimization opportunities.
Review Insurance Industry U.S. Claims and Litigation Management Practices. The US based CEO of one of the world’s largest insurance and reinsurance companies hired us to review the overall methods by which its California based claims function selected, managed and used outside legal services, including the management and conduct of litigation. Following an extensive review of corporate and Claims Department policies and procedures, CorpLaw interviewed members of the Claims Department and defense counsel. Prior to those meetings, we became familiar with the risks insured and the types of claims those risks generated, as well as new lines of business into which the Company was considering expanding.
The importance of the use and management of outside counsel is magnified in the case of this client because it insures some of the largest commercial property risks in the world. The expertise of coverage and defense counsel can be vital to the profitability of the company. The expeditious determination that no coverage exists for a particular risk could, and has, saved the company hundreds of millions of dollars. Similarly, when litigation has been instituted, the importance of trial counsel is self-evident.
CorpLaw met the schedule and budget targets established by the company. Within 90 days of our retention, we presented a detailed report to the CEO with specific, focused recommendations. The recommendations we provided were designed to lower costs, improve litigation results and enhance and increase the information upon which management decisions were based. Those recommendations are currently being implemented.
IP Audit Testimonials
“Charlie is the highest value-to-cost attorney we have on the outside [of our Law Department].”
– Joe R., General Counsel, VP and Sec’y, Global Telecommunications Co.
“After over 20 years of working for bigger firms and other people, I elected to establish my own consulting firm and needed help all the relevant and necessary organizing documents. Importantly, Charlie helped me separate cleanly from my prior organization and, as is usually the case these days, this separation contained several challenges with important and large financial consequences. Charlie helped advise and negotiate a successful split and helped me focus on moving forward. Further, Charlie helped advise me on the ongoing tasks in the successful operation of my firm.
Charlie is a very good listener and has a wonderful personal style which put me at ease and gave me great comfort. He is highly credible, has been around the block and is fully engaged. He is my go to guy for all legal issues.”
– Roy H., CEO, Executive Recruiting Firm
“I am general counsel to a $1.3B corporation comprised of ten North American operating companies. Like many legal department managers, I have been asked to keep costs and headcount down while continuing to provide competent legal advice and services. This is easier said than done. At one of our largest operating companies located in Chicago, CorpLaw Associates, and Charlie Brown in particular, has been the solution since 2000.
CorpLaw’s operating model is to provide on-site, experiences counsel to you business on the schedule you desire. Importantly, CorpLaw’s legal experience was primarily garnered with corporate law departments, not firms. This business experience translates into a rewarding client benefit. CorpLaw is unruffled by requests to reprioritize legal work due to response is always professional and understanding.
CorpLaw has become and integral part of the [company name] legal team by appearing on-site three days per week. This gave the business clients access to face-to-face legal advice thereby increasing the value because the advice is based on a discussion of all relevant facts. On-site service allows the business team to become comfortable with counsel and to bring concerns to the legal department’s attention early enough to all preventative measures to be taken. On-site service has allowed CorpLaw to become intimately involved in [company name]’s business operation resulting in the added value of anticipating the legal implications of changes in [Company Name]’s business practices. This value is very difficult to achieve with an outside law firm.”
– Michael S., Vice President and General Counsel, Netherlands-Based Manufacturing Company