1. An intellectual property audit is done when a company wants to determine the scope of its intangible asset base, including its patents, designs, trade marks and/or works in which copyright vest. It may include an assessment of a company’s other, non-registered know-how, key personnel, employment contracts and restraint provisions in employment contracts with key employees to police critical intellectual property assets, etc.

2. Intellectual property rights and assets are becoming increasingly relevant in a global economy where information is shared at the click of a button and many businesses now report their intellectual property assets on their balance sheets. Having a proper management system in place to record, protect, manage, police and generate profits from intellectual property rights is an essential tool in most businesses today.  Such a management system should, inter alia, –

• • Set intellectual property policies and standard operating procedures
  • Identify the areas in which intellectual property protection is most critical to achieving a company’s business objectives, and then ensure that intellectual property rights generated in those areas are effectively protected
  • Monitor the strategic relevance of a particular intellectual property asset, not only at its inception phase, but also on a continued basis in view of changing commercial and business interests
  • Determine the most effective methods of protecting, leveraging and monetizing intellectual property assets and then track performance of such intellectual property assets against costs
  • Determine continued relevance of an intellectual property asset in view of the creation of new, improved intellectual property rights or market requirements
  • Investigate the scope and value of competing intellectual property rights of competitors and identify strategies to avoid infringing third-party rights
  • Capture non-disclosure and non-competition agreements with third parties with whom confidential information is shared
  • Value intellectual property assets for tax and accounting purposes, as well as for commercial transactions, such as the sale of a business or for mergers and acquisitions

3. The first step to deriving value from your intellectual property (IP) rights is develop IP that has the potential to become commercially viable. Third-party agreements are often required during the R&D process and should commence with a comprehensive Confidential Disclosure Agreement (commonly referred to as an NDA), which specifically address IP ownership, restraints, and non-circumvention.

• • It is important to take note of the provisions of the Intellectual Property Rights from Publicly Financed Research and Development Act (Act 51 of 2008), which came into effect on 2 August 2010.
  • Its primary goal is to ensure that IP outcomes from publicly financed R&D are protected and commercialised for the benefit of the people of South Africa – be it social, economic, military or some other benefit.
  • The Act applies to South African government funded research and development conducted using funds from the South African State or State Funding Agency/Organ that funds research and development (this includes partially government funded projects and contract research that is not conducted at Full Cost).
  • Projects conducted at Full Cost do not fall within the scope of the Act. Full Cost is where all direct and indirect costs attributable to conducting a project are charged to the funder. 

4. The supervisors of the Act are NIPMO (National Intellectual Property Management Office – see nipmo.dst.gov.za), which is an office of the Department of Science and Technology and whose duty it is to ensure that inventions and innovations from publicly financed research are identified and protected.

We can assist you with setting up a management system tailored to your needs so as to leverage your intellectual property rights to establish a competitive edge, defend against third-party claims, and ultimately increase your shareholder value, while taking into consideration company structures, joint ventures, alliances, shareholder and supply agreements, IP policies, licensing and/or franchising agreements.