Detailed Intellectual Property Checklist

PATENTS

• U.S. Patent Rights
  • List of U.S. Patents including:
    • patent number
    • issue date
    • inventors
    • title
    • dates on which maintenance fees were paid and identity of parties paying maintenance fees
  • Copy of each listed U.S. Patent, Reissue Patent and Reexamination Certificate.
  • Prosecution history of each U.S. patent (all correspondence between applicant and the Patent and Trademark Office during pendency of the application for each patent).
  • List of U.S. Patent Applications including:
    • application number
    • filing date
    • inventors
    • title.
  • Copy of the prosecution history of each patent application to date.
  • Correspondence between the Company and its patent lawyers regarding patents.
  • Copy of each Disclosure Document filed by the Company in U.S. Patent and Trademark Office.

• Foreign Patent Rights
  • List of foreign patents, including, for each patent:
    • country
    • grant number
    • grant date
    • expiration date
    • publication number
    • publication date
    • inventors
    • title
    • number and date of U.S. patent to which the foreign patent is a counterpart
    • dates on which annuities were paid
    • identity of parties paying annuities
    • name and address of foreign agent responsible for maintenance of the patent
  • List of foreign patent applications, including for each application:
    • national patent office in which pending
    • filing date in that office
    • priority date
    • application number
    • number of European Patent Office application or Patent Cooperation Treaty application giving rise to the application inventors
    • title
    • number and date of U.S. patent or application to which the foreign patent application is a counterpart
    • dates on which annuities were paid
    • identity of parties paying annuities
    • name and address of foreign agent responsible for maintenance of the patent
    • status of the application.
  • Correspondence from and to the Company and its attorneys regarding each foreign patent and application.
• Licenses
  • List of licenses conveying patent rights to a third party, including:
    • name and address of licensee
    • date
    • list of each patent licenses
    • description of product to which license applies.
  • List of licenses that convey patent rights to the Company, including:
    • name and address of licensor
    • date
    • list of each patent licensed
    • description of the Company’s product or process to which the license applies
    • royalty obligations
  • Agreements covering purchase, use and distribution of components which are critical to success of the Company’s products but which are subject to patent rights (or other proprietary rights).
• Patent Rights As Between the Company and Its Employees
  • List of agreements between the Company and any of its employees conveying patent rights to the Company
  • Invention development memoranda (which recites details about patentable inventory for review by the Company’s patent lawyer and which could tell about areas the Company has chosen not to patent).
  • The Company’s written policy on patenting inventions, if any.
  • List of key employees/inventors and employment and other agreements with same.

TRADEMARK/SERVICE MARKS/DOMAIN NAMES

• Company's Files
  • Review of trademark/servicemark/domain name files:
    • U.S. and foreign registration, application and assignment files, including prosecution histories
    • Licenses and Registered User Agreements and license files, including quality control files
    • Rejected applications
    • Protest letters (sent and received)
    • Litigation files (e.g., past infringements, disputes, demands or language in court orders may impact future litigation)
    • Settlement agreements, administrative or judicial decisions affecting ownership or validity of the marks (e.g., may restrict expansion of mark geographically or to other goods)
    • Trademark search report files on current marks
    • Concurrent use agreements.
  • Computer printout of trademark record maintenance of the Company, including maintenance and status report on all registrations, pending applications, licenses Registered User Agreements, assignments, etc.
  • Advertising, brochures, packaging and other materials which may disclose, inter alia:
    • Style and secondary marks that are protectable or which may infringe third party uses
    • Slogans that are protectable or which may infringe third party uses
    • Misuse of marks (e.g., use as generic terms; misuse of ® or failure to use ®)
    • Protectable or infringing trade dress.
  • Sample products
    • For proper trademark markings
    • To consider possible protection of configuration
    • List of trade/domain name registrations

COPYRIGHTS

• Registrations and Ownership
  • List of all U.S. Copyright Registrations owned by the Company for relevant subject matter, including:
  • Registration Number
  • Registration Date
  • Title as listed in Registration
  • Publication Date
  • Creation Date
  • Author (if anonymous work, list each employee who prepared any portion of the work)
  • Subject matter covered
  • Description of deposit filed in support of the registration
  • Name and current address of each person who participated in creation of the subject matter from whom a written assignment has been obtained
  • Name and current address of each person who participated in creation of the subject matter from whom a written assignment has not been obtained
  • Identification of circumstances which would support the subject matter, or any particle thereof, being considered a work made for hire.
• Copyright registrations and files listed above for each registration.
  • List of all relevant non-Registered works (which are nevertheless protected via copyright) which have ever been offered for license, use or sale by the Company,
    including:
  • Name and version of work
    • Release date
    • List of previous versions and their release dates
    • Creation Date
    • Name and current address of each person who participated in creation of the work from whom a written assignment has been obtained.
    • Name and current address of each person who participated in creation of the work from whom a written assignment has not been obtained.

LICENSES

• For each work owned or used by the Company, a list of all underlying licenses which convey rights in copyright to the Company, including:
  • name and address of licensor
  • date
  • work licensed
• For each work owned by the Company, a list of licenses conveying rights in copyright to a third party, including:
  • name and address of licensee
  • date
  • work licensed
• Each license listed in items numbered 1 and 2 above.

INFRINGEMENT CLAIMS

• Demand letters that the Company has sent regarding third party infringement of the Company’s trademarks, patent rights or copyrights.
• Demand letters that the Company has received regarding infringement of third party rights or copyrights.
• Files for any litigation that has occurred involving the trademarks, patent rights and copyrights.
• Consent orders regarding infringement litigation.
• List of all patent clearance searches that have been conducted relating to the technology.