Intellectual Property Checklists

Intellectual property assets and associated rights (together "IPR") are vital to businesses - and in some cases can constitute the single most valuable asset of a business.

The importance of the proper management of IPR assets is that it fosters innovation, deters competitors, enhances market position, and safeguards the value of intangible assets.

Much of the process of managing IPR is however procedure based - eg - filing of registration-based protections, and the well trodden pathways for IP enforcement.

The extent to which IPR can be infringed in the digital environment in which we operate grows each year. So careful and consistent IPR management is often a critical business function.

Creating a checklist is a super efficient way of supporting your contracting function. Almost every stage of the contracting process can benefit from the application of checklist based support.

In this Blog we unpack some of the most common IP function support related checklists that we recommend in-house legal teams should consider preparing to improve the performance of their IP management function.

How you "slice and dice" your IP function checklists is up to you, but in this Blog we have tended to be quite granular so as to highlight the maximum number of areas where checklists can help.

Key Agreement IP Type Checklists

You should have a specific and clear contracting checklist for each of the “IP heavy” agreements that your legal team is regularly required to support.

Whilst your own list will obviously be specific to your organization, common IP intensive agreements include:

• IP Transfer Agreement
• Intellectual Property Licence
• Trade Mark Licence
• Software Licence Agreement
• IPR Assignment Agreement
• IPR Development Agreement
• IPR Intra Group Licensing Agreements
• Research & Development Agreements
• Copyright Licence Agreements
• Trade Secret Agreements
• Non Disclosure Agreements
• Franchise Agreements
• Technology Transfer Agreements
• Sponsorship Agreements
• Royalty Agreements
• Patent Exploitations Agreements

Producing checklists for agreement types that are relevant to your Business, is an excellent first step to ensuring comprehensive management of associated IPR assets.

Key Intellectual Property Issue Checklists

As with any area of law, more often than not, a common list of issues emerges that is the subject of frequent negotiation between parties. As such, it makes sense to be ready to tackle those issues.

IP issue specific checklists can help elevate your legal team's IP advisory fire power. Here is a list of IP related issues that most teams should be ready to handle by means of an available checklist.

The first checklists that we would recommend you develop for this category include checklists for the following clauses:

• IPR Indemnity Scope (Needed & Can Be Given)
• IPR Warranty Requirements
• IPR Infringement Indemnification
• Handling IPR Claims
• Permissible Licencing Scope
• IPR Definitional Scope
• Creative Commons Checklist
• IPR Usage Restrictions
• New IPR Ownership
• IPR Audit Rights
• IP Licensing Scope

The key tip here is to identify the common IPR issues that your team grapples with, focus in on them, and then define a checklist of your requirements.

IPR Function Support Checklists

For your IPR management function to run in an optimized fashion, there are many other activities over and beyond the actual "review" of IPR laden contracts that must be performed.

Below is a list of high impact, IP management checklists: 

• Intellectual Property Protection checklist
• Trademark Licensing Checklist
• Patent Filing & Registration Checklist
• IP Transfer Checklist
• Trademark Registration Checklist
• Copyright Protection Checklists
• IP Infringement Investigation Checklist
• Domain Name Management Checklist
• IP Due Diligence Checklist
• IP Licensing Compliance Checklist
• IP Portfolio Management Checklist
• IP Enforcement Checklist
• Trade Secrets Protection Checklist
• Brand Usage Guidelines Checklist

Depending on the extent of your IP asset portfolio, and the sophistication of your IP management systems, there will obviously be many other areas where a checklist could support overall IP management.

IP Checklist Driven Performance

The use of checklists by you in-house legal team members correlates positively with in-house performance capabilities. The best performing teams use them extensively, the worst performing teams are too busy to prepare them.   

Checklists are easy to prepare and devastatingly efficient in their contribution to in-house legal team performance. So checklists are a “must have” for any team trying to improve performance.  

They quite literally are the nutrition, sleep and exercise of in-house legal team health. There is no aspect of in-house legal team operations that they do not substantially improve. 

For you to achieve optimal performance from your IP management function it is vital that you deploy checklist based support assets.

In the next section, we provide a quick reminder of the benefits that sound IP management practices can deliver to your Business.

Intellectual Property Management Benefits

For good order, the material contributions of an IPR management practice that is based on checklists, includes:

• Protection of innovations and creative works
• Safeguarding exclusive rights and legal ownership
• Prevention of unauthorized use and replication by competitors
• Preservation of market share and profitability
• Incentivizing investment in research and development
• Encouragement of innovation and technological advancement
• Support for branding and brand recognition
• Establishment of a strong market position
• Facilitation of collaborations and partnerships 
• Enhancing value and monetization of intangible assets
• Mitigation of risks and legal disputes
• Defense against infringement claims
• Strengthening of competitive advantage
• Boosting investor confidence and attracting funding
• Increased licensing and revenue opportunities
• Support for international expansion and market access
• Protection of trade secrets and confidential information
• Compliance with legal and regulatory requirements
• Defense against counterfeit and piracy threats
• Long-term sustainability and longevity of business operations.

Given the extensive list of benefits, investing in the creation of some IP function specific support checklist just makes a lot of sense.

Your next steps

Using IPR related checklists can be a powerful means to optimise the way your in-house legal team effectively manages your business's IPR portfolio.

Creating a checklist template that your in-house team can use to whip up checklist assets is a great first move. A custom checklist for your specific contract review scenarios makes great sense.

If you are a General Counsel, Chief Legal Officer or a Head of Legal - or even if you are a member of a legal operations team - checklists are a vital efficiency tool that you must embrace.

You can check out our Blog - GLS Legal Ops Tools: The Simple Checklist - for a guide on how to create a great checklist - including our checklist design tips.

Of course, most in-house teams are extremely busy - their time is valuable and in scarce supply. Asking a law firm to produce one for you is likely to be an expensive legal service to buy.

As such, the GLS Legal Operations Centre offers a wide range of contract function support solutions, including checklists, that will allow you to put this incredible department resource to work for your team.

Do check out the solutions on the right - all are available from the GLS Legal Operations Centre right now. We offer a veritable shopping list of available checklists and IP function support resources.

READY TO TRANSFORM YOUR LEGAL TEAM?

Please check out the GLS solutions and know-how resources listed on the right side of this page – they might assist your legal team with the issues explored in this Blog. 

Of course, if you would like discuss your transformation needs – please book a 30 minute FREE CONSULT WITH GLS 

In the interim, here are 7 resources and tools that may assist you as you transform the performance capabilities of your legal team:

1. GLS's Ultimate Guide to Legal Operations: download this HERE, and read it thoroughly and regularly. It is a wonderful transformation companion

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