With the IP services and solutions at Chao Legal, I help you with practical advice about how to identify your intellectual property (IP) rights, which are often a company’s most precious asset (“crown jewels”), and how you can protect your IP in an optimal way.
1. Start with making an IP inventory
Do you know what intellectual property (IP) have been created by (and within) your company? Who exactly owns the IP, and have the IP been transferred in the right way? With the IP services of Chao Legal, I can help mapping the current state of your IP by:
- Interviewing relevant stakeholders (such as directors, developers and contract managers),
- Reviewing all IP-related contracts and documentation in the entire ‘IP chain’ (starting from the first creation to exploitation), and
- checking the public IP registers for any identical or similar trademarks, trade names, domain names, patents and registered designs.
Such IP assessment is not only useful for your own company, but also in M&A transactions in which you want to acquire shares or assets of another company, which is called an ‘IP due diligence’. I have conducted numerous IP due diligence projects, in which I investigated whether the IP is owned by the target company and what IP-related contracts are in place. Because you want to be sure that you are buying what you THINK you are buying.
2. Prepare an IP strategy
After you identified where the IP is, the second step is to determine how you can (and want to) protect the IP against any loss, unauthorized distribution or imitation.
- How can you ensure that your employees and independent workers transfer the IP of their work to your company?
- Should you register your IP, or treat it as a trade secret?
- How can you ensure that your IP is actually kept secret, and will not be accessed or used by someone else?
- Do you want to sell or license your IP to third parties, or exploit it yourself?
These (and many other) questions will be answered in an IP strategy document, in which the ‘gaps’ are described between the current and desired state of IP protection, as well as the recommended actions to close the gaps.
3. Enter into the rights contracts
Now that you know what the ‘IP gaps’ are and what you can do about it, it is now time to draft and enter into the right contracts, in order to close the gaps. I can help you with drafting:
- IP transfer agreements,
- License agreements,
- Franchise and distribution agreements,
- and reviewed many IP-related agreements and clauses as well, such as IP warranties in share purchase agreements (SPA) and other agreements.
4. Enforce your IP rights
Now that you have insight in your IP, have a clear IP strategy and have the right contracts in place, you have to monitor for any (potential) infringements on your IP and IP-related contracts. What will you do when a former employee or business partner starts selling identical products, or uses a similar name? Do you know how to respond if you received a cease and desist letter, in which you are accused of an IP infringement yourself? Like I have helped numerous businesses I also can help you with advising and litigating in IP disputes, drafting cease and desist letters, responding to them, and negotiating settlement agreements.
Send me an email if you need help with protecting you IP, the “crown jewels” of your business.