About the Author

  • Silvia de Sousa

    Silvia’s practice is concentrated in the area of business law with an emphasis on intellectual property law, life sciences law and technology law.

    svd@tdslaw.com
    (204) 934-2592

If your technology start-up business is looking for venture capital financing, the performance of an intellectual property audit (“IP Audit”) is essential to avoid delays in obtaining such financing. IP Audits are an important mitigation strategy to consider prior to any licensing, financing, merger or transfer. After an IP Audit, you will have a better understanding of your intellectual property liabilities, risks and legal status. Intellectual property assets include such things as domain names, copyrights, trade secrets, trademarks, patents, branding and technology and software licences.
 
An IP audit can involve:
  • onsite interviews to identify the products, services, technologies and intellectual property assets and rights;
  • onsite interviews with individuals associated with the intellectual property assets;
  • contract reviews (for example, employment agreements, service agreements and licence agreements) to determine if you own all intellectual property assets and rights;
  • security reviews to determine if disclosures have occurred with respect to intellectual property assets and confidential information, together with a review of the internal procedures to protect confidential information and intellectual property assets;
  • searches at the various Intellectual Property Offices to determine ownership, granting of security interests and assignments.
 
Performing an IP Audit in advance of a licensing, financing, merger or transfer transaction can ensure that you have adequately protected your intellectual property assets and rights prior to entering into negotiations with third parties. It also provides you with sufficient time to consider possible remedial actions to correct any defects that might otherwise impede or prevent the transaction. Venture capitalists and other third parties who are interested in your technology will be doing their own due diligence prior to completing a transaction with you. Be prepared, as inadequate protection of your intellectual property will delay these transactions and the flow of monies.
In addition, by determining in advance what intellectual property assets and rights you own, use or acquire, you can develop strategies to maintain and improve the market position of your business. You can maximize the future potential of your business by managing and exploiting the intellectual property assets and rights in the most effective way possible.

DISCLAIMER:
This article is presented for informational purposes only. The content does not constitute legal advice or solicitation and does not create a solicitor client relationship. The views expressed are solely the authors’ and should not be attributed to any other party, including Thompson Dorfman Sweatman LLP (TDS), its affiliate companies or its clients. The authors make no guarantees regarding the accuracy or adequacy of the information contained herein or linked to via this article. The authors are not able to provide free legal advice. If you are seeking advice on specific matters, please contact Keith LaBossiere, CEO & Managing Partner at kdl@tdslaw.com, or 204.934.2587. Please be aware that any unsolicited information sent to the author(s) cannot be considered to be solicitor-client privileged.

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