Patent Attorney of Ukraine Oleksandr Kolosov

Patent audit of IPO

Patent Attorney of Ukraine Oleksandr Kolosov provides services for conducting the patent audit of the intellectual property objects .

In order to organize protection and effective use of intellectual property objects (IPO) in a company, you should, first of all, audit the IPO. The purpose of the said audit is to obtain a real idea about the composition of the portfolio and the current state of the IPO, and the identification of intellectual activity results that need primary legal protection.

Typically, the portfolio of IPO for patent audit includes existing (or potential) inventions, utility models, industrial designs, trademarks for goods and services, copyright objects (design and technological documentation, database, text programs, technical and technological regulations, technical conditions, descriptions, instructions, etc.), as well as trade secrets or know-how (technical, financial, managerial).

In the process of patent audit determining the quality, volume, detail, value and potential value of the existing IPO, particularly patents is conducted. Equally important is the identification of protected results of intellectual activity of the company, the existence and validity of security documents, timeliness of payment of fees, the analysis of accounting documents for setting registered IPO on accounting as intangible assets. In case licensing agreements are existing the documents confirming the completeness and timeliness of the royalties are checked.

During the patent audit problems with the distribution rights to the IPO are revealed, and patenting activity of competitors is also studied.

It is well known that at the present stage of economic development the patents are essential tools and basic weapons of technological business. Therefore, they, like any other tool, and weapons even more - need constant care and regular health checks. This is especially true when they are purchased or are just planning to be purchased from someone else.

Despite the apparent resemblance to each other, the quality and value of different patents may differ drastically. One patent can cost tens of millions of $, and the other, almost identical, but with two feet and does completely indistinguishable - may not be worth a dime. In order to determine the value of a patent, it is necessary to examine it, in particular it is compulsory when selling patents.

Thus, verification of the status and quality of patent tools includes a sufficiently large number of actions, requires special knowledge and skill, and like any other audit calls for a serious treatment. It is logical and justified to entrust this check to specialized professionals (to outsource it), who have, besides technical education, special education in the field of intellectual property as well as being proficient at evaluation methods of IPO's.

The composition of services


Audit of the development right

  • Audit of accounting research and development (R&D), development and intangible assets of the company
  • Development of proposals for patent protection and comprehensive protection
  • An inventory of the results of R&D, identifying and auditing developments
  • Identification of property rights to the results of research and development

Audit of patent documents

  • Audit of the patent activity of the target company
  • A comprehensive audit of the patent work in the company
  • Audit of encumbrances /restrictions/ rights of third parties to developments
  • Audit of the license to use patents

Audit targets patents of

  • Inventors declared (the analysis of authors’ patent portfolios)
  • Patentee (patent portfolio analysis for patentee)
  • Level of patent documents (whether description and drawings are clear and unambiguous)
  • Analogue and prototypes (the effectiveness of selection, selection criteria, missed sources)
  • Property protection object (ratio of points, Sovereignty with the description and drawings, the hierarchy of the formula)
  • Crack/circumvention resistance (alternative ways of the protection object embodiment)

Preparation of the final report on the results of the patent audit

  • Preparation of proposals for the integrated effective protection of potential IPO (including in the form of "bypass" or "umbrellaʹs" patents)
  • Preparation and approval of the final report on the results of the audit of the patent
Why you may need this service?

  • Inventory of existing company’s IPOs portfolio
  • Identification of possible facts of violations of the rights on registered IPO by third parties because of late registration of title on an inventoried enterprise
  • Evaluation of the necessity of creating "circumvention" of patents for inventions
  • Registration of the inventoried IPO in the balance sheet as an intangible asset (IA)
  • IA inclusion in Statutory
  • Ability to optimize corporate tax
  • Using of IA as collaterall

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SERVICES
The necessary background information
  • Full name of company, legal form, address
  • Patent and other documentation containing both existing and potential IPOs of the company
  • Proof of ownership of property rights on the IPO of the company
  • Accounting documents of registered IPOs of the company (if available)
  • Descriptions of the competitors’ IPOs (if available)
  • Payment of Patent Attorney honorarium and official fees
Procedural terms of formalization and registration
  • 5-15 days
    Collecting background information about the portfolio of company’s IPOs
  • 10-30 days
    Analysis of the collected baseline information on the composition of the portfolio and the current state of the company's IPOs
  • 10-30 days
    Drafting of the final report, including proposals to obtain an effective state protection of potential company’s IPOs
Final result
  • The analytical report on the composition of the portfolio and current state of the company’s IPOs
  • Proposals for obtaining a complex and effective state protection of potential company’s IPOs
  • Proposals for an alternative state protection of existing IPOs as "bypass" or "umbrella" patents (if necessary)
Potential risks
  • Possible neglect of the full range of used IPO by the inventoried enterprise
  • The possibility of revealing the facts of infringement of registered IPO by third parties because of late registration of title on an inventoried enterprise
  • The possibility of over-or underestimation of the "key" patents of Enterprise
  • The ability of competitors to create "circumvention" of patents for inventions