Time to organise an intellectual property audit? 

Starting your intellectual property audit now will provide the insights and foundation necessary to prepare your budget and activities for the coming year. Get started today with our helpful checklist of trademark auditing activities.  

Regular intellectual property audit exercises not only offer vital insights into your portfolio, but can also help you to address key concerns, such as: Do you own what you think you own? Are you paying to maintain rights you no longer need? Are your core rights appropriately protected, maintained and enforced? Are there gaps in coverage that may leave you vulnerable? Or are there deficiencies in the records that may undermine the validity of your rights? 

By identifying unwanted or duplicate registrations, errors in records or gaps in protection, you can control costs, build legal certainty, and tidy up records. As importantly, it provides you with the opportunity to assess if your IP portfolio reflects your business's current state and future strategy – and to make the necessary adjustments in good time for the year ahead.  

Intellectual property audit checklist 

Get started today with our checklist of trademark auditing activities: 

Step 1: Inventory your assets 

• What IP rights do you hold and where are they held? 

If a list of IP rights is challenging to obtain, consider centralising your assets via a single provider or IP management system to ensure ease of access in case you need to react promptly to an infringement action or business change. 

Look out for... Core rights that may be exposed 

• Unused/isolated trademarks  
• No watching/monitoring activity  
• Competitor/infringement activity that has been left unchallenged  
• Rights that are inaccurate – e.g. not updated following transfer  
• Rights that are vulnerable to infringement action, such as unused trademarks or trademarks registered without prior trademark clearance searching 

Step 2: Prioritise (or reprioritise) your assets 

• Which rights are ‘core’ and which are duplicate, unused or isolated? 

Distinguish between the ‘core’ rights deserving the highest levels of protection/investment, such as your company name and key brands assets, and those that are nice to have (non-core), duplicate (e.g. between national and EUTM), unused or isolated rights, such as those registered previously for products that have since been discontinued, renamed or redesigned. Core rights should always be protected, maintained and enforced, whereas unused rights could be sold, licensed or allowed to lapse. 

Look out for... Opportunities to save budget 

• Duplicate registrations that could be merged  
• Unexploited rights  
• Large sums spent on non-core assets  
• Potential to benefit from economies of scale (e.g. by consolidating your portfolio with one provider) 

Step 3: Check your records 

• Are they up-to-date and appropriately maintained? 

To ensure you can enforce (or license or sell) your trademarks, the IP data must be maintained correctly with a clear chain of title (via a process known as recordals). However, updating IP ownership is rarely a simple procedure, with each jurisdiction requiring its own formalities and fees, whether in terms of the documents (and translations) that need to be supplied or the deadlines by which IP owners need to act.  

That’s why we recommend beginning with core rights and moving through the portfolio in order of the priority established in step 2. Alternatively, if the recordals project is too demanding for internal resources, consider working with a specialist such as Novagraaf who can manage the entire project on your behalf.  

Don't forget... Rights that need to be transferred from another party 

• Who registered your domain name?  
• Who designed your branding/logos/website/brochures/packaging etc – has the IP been assigned to you? 

Step 4: Plot rights against your business 

• Are there gaps in coverage that may leave you vulnerable? 

Once you have assessed, prioritised and validated the rights you own, the next step is to identify those that you don’t. Look out for any misalignment between your IP portfolio and business activities, such as any missing registrations protecting your activities in the markets where you manufacture, trade and transport your goods, as well as any gaps in protection for past or future product and service launches, extensions or rebrands. 

Consider too any areas of specific risk outside these activities, such as counterfeiting/grey market trade or competitor activity.  

Look out for... Areas where you may be vulnerable 

• Key markets where you are not protected/your rights are due to expire  
• Assets that have not been, but should be, protected (e.g. important design features on product packaging) 
• Problem zones - e.g. countries where counterfeit goods are being manufactured/transported 

Step 5: Fix gaps in protection and vulnerabilities 

• What action do you need to take to fill gaps/ring-fence core rights? 

Once you have identified your core assets and potential vulnerabilities, the next step is to strengthen your portfolio and remedy any oversights. When filing new rights to cover gaps or shore up protection, don’t forget the need to update your associated watching/monitoring and infringement strategies, too.  

By including your licensing and royalty agreements in your intellectual property audit, you can also ensure rights have been correctly maintained and revenues received, so you are not missing IP licensing royalties or in breach of in-licensing terms. 

Don't forget... Licensing/joint ownership/manufacturing contracts 

• Make sure rights have been appropriately maintained  
• Contracts are being enforced/royalties claimed 
• Trade secrets are safeguarded/compliance with licensing terms 

Step 6: Update your IP strategy 

• How can you turn your IP audit findings into a strategic plan? 

Reviewing the findings of your intellectual property audit will help you to prioritise subsequent activities, including updating (or creating) your IP strategy and budget. Don’t overlook the opportunity to focus on the problem areas you have identified; for example, by creating an action plan should your IP rights be infringed (if you have had a problem with copying in the past, start with that).  

We also recommend scheduling regular IP ‘health checks’, so that your portfolio and planning evolve as your company does. 

How Novagraaf can help 

We work with our clients to help them to audit and rationalise their portfolios, employing a structured intellectual property audit methodology that covers all forms of IP rights and can be tailored to specific needs; e.g. cost cutting, due diligence ready for purchase/sale, change in ownership or initial public offering (IPO). 

Our intellectual property audit service is straightforward and transparent and includes automated checks against official records to ensure the accuracy of rights. Find out more about our service and methodology by downloading our white paper ‘Best practices in trademark auditing: a practical guide’, speaking to your Novagraaf attorney or contacting us below.