IP and Information Technology Asset Management

All companies need to update and protect their intellectual property assets at regular intervals, especially those companies that have recently undergone mergers or made acquisitions. Mergers and acquisitions raise IP challenges that begin during negotiation, with valuation of the target company’s assets. This requires careful planning regarding the post-merger fate of brands, trademarks, patents and proprietary information. Brand protection is especially important when a merger is on the horizon.

The author provides a checklist for managing IP and IT assets. They include a system to protect patents through defensive and offensive patent prosecution; policies and procedures for protecting trade secrets, including information security management and controls; a written code of business conduct that all employees are required to sign; a copyright registration program for key works; and a brand strategy and trademark clearing, searching and maintenance program.

Included in IT protection are legal risk analyses to review the CTO’s or CIO’s licenses for IP ownership; an open source compliance program to avoid copyright infringement claims and breach of contract; and rigorous procurement controls, including a software license management protocol to track license usage and reallocation mechanisms to avoid both over and under-licensing and to ensure cost recovery. The author also provides a checklist that addresses brand protection in cyberspace, covering such things as social media and privacy policies, and metadata management.

The author notes that many technology providers insist that their standard form agreements are “non-negotiable.” Don’t buy that, she says.