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“Your trusted IP Professionals” 1 BY P. KANDIAH IP AUDIT.

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Presentation on theme: "“Your trusted IP Professionals” 1 BY P. KANDIAH IP AUDIT."— Presentation transcript:

1 “Your trusted IP Professionals” 1 BY P. KANDIAH IP AUDIT

2 “Your trusted IP Professionals” 2 Intellectual Property Rights and Intellectual Capital are assets to be fully exploited as weapons used against infringers

3 “Your trusted IP Professionals” 3 Globalized world – business operations are segmented and carried out in different countries E.g. Nike ®

4 “Your trusted IP Professionals” 4 Possession of IP Assets Almost NIL in developing countries but LARGE amount in developed countries

5 “Your trusted IP Professionals” 5 Source: WIPO Statistics Database

6 “Your trusted IP Professionals” 6 Source: WIPO Statistics Database

7 “Your trusted IP Professionals” 7  Growth strategy both for a company as well as a country.  Effective creation and utilization of IP Assets.  Need to know what is out there – what is in public domain? – what is owned by others?

8 “Your trusted IP Professionals” 8 IP Audit Know what you have External – what IPRs are there in relation to your business

9 “Your trusted IP Professionals” 9 Intellectual Property Rights – Registrable Rights – Non-registrable rights Know what you have Intellectual Property Rights Intellectual Capital/Resources

10 “Your trusted IP Professionals” 10  Registrable Rights – Subsistence, Renewals – Change in ownership details – Recordal of licence rights  Non-registrable rights – Trade Secrets / Confidential Information Are they still trade secrets? Are they effectively managed? – Knowledge / Procedure in minds of staff – need to put it in writing –clients list, supplier list –work methods (operation manual)

11 “Your trusted IP Professionals” 11 Intellectual Capital If all employees do not come to work, can you still run the business with a set of new employees with the existing records in office?

12 “Your trusted IP Professionals” 12  Contractual arrangements IP Content – employer / employee contract – contract with supplier – commissioned work – joint-venture agreements – tender documents – business proposals – etc

13 “Your trusted IP Professionals” 13 IP Licences – conformance with undertakings – royalty payment? – factory audit – quality control audit Moving forward – growth – introducing new product lines – expansion into new territories – taking in new employees

14 “Your trusted IP Professionals” 14  Introducing new product lines Strategies on new product development Build on in-house research Leverage on external technologies / skills Aim not to “reinvent – the – wheel”

15 “Your trusted IP Professionals” 15  Conduct a technology mining exercise first to know “what is out there”  Determine whether technology is in public domain in Mongolia or whether licence is required.  Is product for local market? International market?

16 “Your trusted IP Professionals” 16  Before introducing product into new market conduct “Free to Market” analysis  IP and other regulatory requirements  Other IP issue – trademark, industrial design??

17 “Your trusted IP Professionals” 17  Taking in new employees Contract of employment – IP issues addressed ownership of new creations / inventions, remuneration for patented product / processes Confidentiality undertaking Reporting of new creations Exit interview

18 “Your trusted IP Professionals” 18  Acquiring of rights to new products, process or business by way of licence, assignment, franchising Due diligence or audit is carried out Ownership of IP Rights Duration Market / product / use limitation Royalty payment Channels of distribution

19 “Your trusted IP Professionals” 19 THANK YOU P. Kandiah Tel: 03 2284 7872 Fax: 03 2284 1125 E-mail:

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