Your Gate to Latin American IP

An intellectual property audit: a key tool for every business

By Jean G. Vidal-Font, Senior Member Attorney at Ferraiuoli LLC - 16/09/2022

This article was originally published in Spanish in Microjuris.

The truth is that every business has intellectual property assets and in many times more than one type of asset: trademarks, copyrights, business secrets, patents and/or image rights. Therefore, it is important that all businesses always carry out not only accounting and financial audits, but also an intellectual property audit.

Take a retail business as an example. One might think that their main asset is the merchandise they sell, but there is much more. First of all, the business is advertised in the market with a name and possibly a distinctive slogan, both of which are intellectual property assets under the Trademark Law in Puerto Rico and/or in the United States.

Is therefore important to have an intellectual property audit to document since when such brands are used and demonstrate their use in market in possible trademark infringement cases against competitors. Advertisements must also be preserved, since, in the future, they may be a key player in those litigations.

Likewise, other business may be producing computer codes (in cases of business with programmers), art (advertising agencies), textiles, literature, and/or other creations susceptible of copyright protection. In these cases the intellectual property audit is key to document who was the person behind such creations and based on what contract or employment relationship they were created, since those details are crucial to establish who is the owner of the creation. It usually happens that the business wrongly thinks it owns the intellectual property rights.

The same happens with inventions (patents) and/or trade secrets. Every document that proves the creation of an invention or a business secret (a confidential list of clients, secret recipes or formulas) must be properly displayed and owned by the business to maximize its use. Lack of actions in this matter can result in the loss of important intellectual property rights in a competitive world of innovation.

So how do we proceed? The first thing is to know your business well, and know who is producing or creating material or information that may be subject to intellectual property protection. The second thing is to have a clear understanding of the contractual relationships with employees. After these two steps are completed, the intellectual property audit speeds up.

Sadly, many businesses grasp the relevance of these steps only after they have already started a lawsuit over intellectual property rights. Intellectual property auditing should be a key and dynamic tool for any business.

By Jean G. Vidal-Font, Senior Member Attorney at Ferraiuoli LLC - 16/09/2022
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Ferraiuoli LLC

Ferraiuoli LLC (FLLC) was founded in 2003 by the late Blas Ferraiuoli-Martínez, Eugenio Torres-Oyola and María Marchand-Sánchez. This group was then joined in 2004 by Fernando J. Rovira-Rullán, thus forming the founding core of FLLC. FLLC has grown exponentially since its founding from a law firm with three attorneys and a support staff of three to its current size of 54 attorneys with a support staff of 38. Also, FLLC has grown from initially being known as an intellectual property and corporate law boutique law firm to a multiservice law firm that handles most matters relevant to a business while continuing to earn praise for its leading intellectual property and corporate practices.

FLLC has been ranked as a leading law firm in Puerto Rico by the professional publication Chambers Latin America in intellectual property, corporate, bankruptcy, labor & employment, real estate, and tax law. Moreover, 17 FLLC partners have been ranked as leaders in their field by the same publication. 4 FLLC partners are ranked as leaders in Intellectual Property, no other firm has more than 2. This recognition in such a short period of time is a tribute to FLLC’s business model.

FLLC prides itself in doing its work faster and more cost-efficiently yet with the same quality as that of its main competitors. The founding name partners are available at all times to attend to client matters. Their work ethic sets the tone for the rest of the firm. FLLC’s founders’ goal has been steady from the outset: become one of the premier multiservice law firms in Puerto Rico.