Trademark Portfolio Audits and Due Diligence

by Traverse Legal, reviewed by Enrico Schaefer - May 20, 2009 - Uncategorized

This panel discussion addressed the necessary steps, due diligence and drawbacks associated with the acquisition of a trademark portfolio or a company with a trademark portfolio — whether by purchase, merger, joint venture or otherwise. Speakers discussed the respective roles of corporate counsel and outside counsel from the point of view of the buyer and the seller, as the parties navigate from pre-closing activities through completion of post-closing activities.

Moderator:

  • Susan Weller, Mintz Levin Cohn Ferris Glovsky and Popeo PC (United States)

Speakers:

  • James H. Buchan, Gowling Lafleur Henderson LLP (Canada)
  • Karen Fong, Rouse & Co. International (United Kingdom) 
  • Sarah Anne Keefe, Womble Carlyle Sandridge & Rice, PLLC (United States) 
  • Bret I. Parker, Wyeth (United States)

Similar to the session entitled Managing a Global Brand and IP Portfolio, this session provided insight regarding IP Audits.  Above all else, the trademark attorney must understand the business and do a thorough review of the intellectual property portfolio.

An IP Portfolio Review should include:

  • IP Audit
  • Renewals/Maintenance of existing IP
  • Identify additional filing needs
  • Patents should be considered

The IP Audit must not only identify existing IP, but it must identify what has been licensed in and licensed out (and even naked licenses).  Existing IP should be renewed, monitored, and maintained with proper software systems if possible.  New filings should be done, and this may include patents.

Ultimately, due diligence on the behalf of the trademark attorney is critical. 

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Author


Enrico Schaefer

As a founding partner of Traverse Legal, PLC, he has more than thirty years of experience as an attorney for both established companies and emerging start-ups. His extensive experience includes navigating technology law matters and complex litigation throughout the United States.

Years of experience: 35+ years
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This page has been written, edited, and reviewed by a team of legal writers following our comprehensive editorial guidelines. This page was approved by attorney Enrico Schaefer, who has more than 20 years of legal experience as a practicing Business, IP, and Technology Law litigation attorney.