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Why intellectual property audits are make or break for businesses, according to Houston expert

A thorough IP audit separates the wheat from the chaff. Image via Getty Images

Every company with a business based in whole or in part on important intellectual property should protect that property with regularly scheduled intellectual property “audits.” Failing to do so may not only endanger valuable, company-owned patents and trademarks, but also make the business less profitable than it could be.

An IP audit is especially critical when a business is being sold, when a company is planning to buy another business, when a patent is being challenged by a competitor, when a company is looking for new financing or going public, and when there is a change in top management or employees in critical positions have left. A regularly scheduled IP audit can prevent panic, confusion and unwelcome surprises when these major events occur, because management will already have a good working knowledge of the status of all intellectual property.

To begin with, a thorough audit separates the wheat from the chaff. Which patents are central to the company’s business and must be carefully maintained in force? Are there other patents that are no longer important or have been superseded by newer developments and can safely be ignored and allowed to lapse?

Patents should be filed wherever the company’s products are sold and fees on all important patents must be carefully kept up to date. Fees to maintain international patents are often especially expensive but should be updated when necessary, nonetheless. Sometimes, when a company’s trademarks are reviewed, management learns that they have never been federally registered.

Auditors also may find that existing patents are no longer adequate to protect the products that are actually being sold. The products may have “moved on” through further development or application to new uses, but the relevant patents have not. Those patents should be updated immediately with new filings. It’s also critical to determine whether the products made and sold by the company could possibly infringe patents held by competitors—or whether the reverse is true, that other companies’ products are infringing the patents held by the company being audited.

A careful examination of intellectual property can also result in positive developments: auditors may discover that some patents are more valuable than anyone knew and can be licensed to produce another revenue stream for the company—or licensing can be expanded beyond the present level.

Beyond the focus on patents and trademarks, an IP audit should entail a close examination of all contracts and agreements relating to intellectual property. Pinning down exactly who owns the property is just as important as keeping patents up to date. This entails delving into development agreements, nondisclosure agreements, employment agreements, work-for-hire and sales contracts, to make sure ownership of a company’s intellectual property has not been ceded to, or shared with, a third party.

Software is particularly problematic when it comes to inadvertent infringement of the rights of others. What software is being used internally? Where did it come from and what are the limitations on its use? IT professionals don’t always realize that even open-source code requires a license.

This entire process also needs to be applied to analyzing the intellectual property of a prospective acquisition. Investigators may discover that patents belonging to the acquisition are not all appropriate for the acquiring company’s products, fees are not up to date or there are issues with IP ownership or validity. All of these factors may result in substantial savings on the purchase—or a decision not to purchase at all.

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Puja Detjen is an intellectual property attorney and partner in the Houston office of Patterson + Sheridan.

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Building Houston

 
 

A Houston startup that created a remote monitoring and care platform has raised millions in financing. Image via michealthcare.com

A virtual health care and analytics provider startup has closed its latest round of funding for a total of $27 million in financing.

Medical Informatics Corp. closed a $17 million series B co-led by Maryland-based Catalio Capital Management and California-based Intel Capital. The financing also includes an additional $10 million in debt led by Catalio through Catalio’s structured equity strategy, according to a news release.

“We are excited to have had this round co-led by Catalio and Intel Capital," says Emma Fauss, CEO and co-founder of MIC, in the release. "Catalio brings significant financial and technical resources, while Intel Capital possesses strong operational and industry experience, and we look forward to continuing to leverage both firms’ expertise as we continue to scale.”

MIC created an FDA-cleared virtual care platform, called Sickbay, that gives health care providers and hospitals away to remotely monitor patients in any setting with vendor-neutral real-time medical device integration, workflow automation and standardization.

“We have seen an increased demand for our solution as our clients face significant staffing challenges and are looking for ways to amplify and empower their workforce," Fauss says in the release. "Some of the largest health care systems in the country are standardizing their infrastructure on our Sickbayplatform while consolidating IT spend."

Other participants in the round included new investors TGH Innoventures, Tampa General Hospital’s innovation center and venture fund, and Austin-based Notley — as well as existing investors San Francisco-based DCVC, the Texas Medical Center, and nCourage, a Houston-based investment group.

As a part of the round, two individuals from Catalio will join the board at MIC. Jonathan Blankfein, principal at Catalio will join the board of directors, Diamantis Xylas, head of research at Catalio, will join as board observer.

“Health care systems’ need for high-caliber, cost-saving, data-driven technology is only going to increase, and MIC’s proprietary platform is perfectly positioned to address some of the most critical clinical challenges that health care organizations face,” says Blankfein in the release. “We look forward to continuing to support MIC’s strong team as it continues to deliver better outcomes for health care organizations and patients alike.”

Amid the pandemic and the rising need for remote care technology, MIC scaled rapidly in the past two years. The company will use the funding to continue fueling its growth, including hiring specialized talent — deep product specialists and client engagement teams — to support long-term strategic partnerships.

“One of the main barriers to advanced analytics in health care is the siloing of data and today there is a significant need for a platform to enable flexible, centralized and remote monitoring at scale and on demand,” says Mark Rostick, vice president and senior managing director at Intel Capital, in the release. “Medical Informatics is setting a new standard of health care by removing these data silos for health care providers of all sizes and transforming the way patients are monitored from hospital to home with real-time AI.”

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