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 Are there other patents that are no longer important or have been superseded by newer developments and can safely be ignored and allowed to lapse?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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Houston innovator calls for collaboration from energy tech community

HOUSTON INNOVATORS PODCAST EPISODE 226

Scott Gale will be the first to admit that hosting a week of curated events targeted to a group of individuals within the tech and energy space isn't a novel idea — Climate Week NYC has been taking over Manhattan for over a decade. But Gale believes Houston deserves to have its own time to shine.

Earlier this month, Halliburton Labs, Rice Alliance, and Greentown Houston announced the inaugural Houston Energy and Climate Startup Week 2024 to take place in September, but Gale, executive director of Halliburton Labs, says he hopes this is just the beginning of Houston organizations coming together to collaborate on the initiative.

"I think we have a really awesome initial coalition. Whether your the fifth company or organization to raise its hand to do something that week or the 50th — it really doesn't matter," Gale says on the Houston Innovators Podcast. "It really is an open invitation — and I want to make that super clear."



Gale says that he's looked at some of the successful week-long events — like SXSW and others — and the key factors are calendar coordination and cross promotion. Now that Houston has the week set — September 9 to 13, 2024 — it's time for everyone to fill that week with a density of events anywhere around Houston to showcase the city's innovative energy community.

Those interested can learn more or submit their event information online.

The initiative falls in line with how Gale has led Halliburton Labs from its early days in 2020 to now with a focus on community. While the corporate world always needs eyes on its return on investment, supporting the innovation ecosystem has been a bit of a leap of faith – and it always will be.

"There's always this idea of having a line of sight to the outcomes (of your investment). And when you're interfacing with or investing in the startup community, you don't have the benefit of line of sight. A lot of the things that are being solved for are just too early stage. And that can be really hard for corporates to wrap their heads around," Gale says.

"One of the things that we got to was this idea that you can invest in the startup community, and you don't know where the returns will come from, but you know they will come," he continues.

$100M Houston VC fund launches to back technical founders

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A new venture capital fund has launched with an initial $100 million mission of supporting founders with innovative critical infrastructure solutions.

Fathom Fund, which is looking to build out a portfolio of advanced computing, material science, climate resilience, and aerospace startups, announced they've launched with an initial close of over $100 million. The fund is founded by longtime investors Managing Partners Paul Sheng and Eric Bielke.

"We believe recent technological advances have accelerated the pace of scientific discovery, increasing the pool of technology companies that can produce venture-scale returns," Sheng says in a news release.

According to the fund, it hopes to bridge the gap for early stage capital for physical innovations and "moonshot" projects.

“What’s lacking in venture is rigorous technical diligence at the early stages and a playbook to scale these innovations at the pace necessary to lead industries," Bielke adds. "With this launch, we are looking forward to supporting founders with some of the most disruptive and novel ideas.”

The founder duo will bring each of the career expertise to their future portfolio companies. Sheng spent decades at McKinsey & Co and was the firm's head of the Global Energy & Materials practice. Bielke is a former director at Temasek’s Emerging Technologies Fund.

Houston is the 4th best U.S. city for Black professionals, report finds

Black History Month

In acknowledgement of Black History Month 2024, a new report compiled by Black employees at online rental marketplace Apartment List has ranked Houston the No. 4 best U.S. city for Black professionals.

Apartment List reviewed 76 cities across four major categories to determine the rankings: community and representation; economic opportunity; housing opportunity; and business environment.

Houston earned a score of 63.01 out of a total 100 points, making it the second-highest-ranked city in Texas for Black professionals, behind San Antonio (No. 3).

The city earned top-10 rankings in three out of the four main categories:

  • No. 3 – Business environment
  • No. 4 – Community and representation
  • No. 10 – Economic opportunity
  • No. 21 – Housing opportunity

Houston is commended for its strong Black business environment and economy, but there is some room for improvement when it comes to housing. Similarly to Apartment List's 2022 report – which also placed Houston at No. 4 – a little less than half (44 percent) of all Black Houston households are spending over 30 percent of their income on housing, which has increased two percent since 2019.

Houston has a larger Black population than San Antonio, at 19 percent, but its Black population share is overall lower than other cities in the top 10.

"Furthermore, the community is well-represented in some critical occupations: 20 percent of teachers are Black, as are 21 percent of doctors," the report said. "Houston is also home to the HBCU Texas Southern University, helping a job market when the median Black income is several thousand dollars above average."

Houston also has the highest rate of Black-owned businesses in the entire state, at 18 percent.

"From the Mitochondria Gallery to Ten Skyncare and Wisdom’s Vegan Bakery, Houston has it all!" the report said.

Here's how Houston stacked up in other metrics:

  • Black homeownership: 42 percent
  • Black lawyers: 14 percent
  • Black managers: 14 percent

Elsewhere in Texas
Texas cities dominated the overall top 10. San Antonio ranked just above Houston, with Dallas (No. 6) and Austin (No. 7) not too far behind.

San Antonio came in less than 2.5 points ahead of Houston with a total score of 65.44 points. The report praised San Antonio's scores across its economic opportunity (No. 2), housing opportunity (No. 7), and community and representation (No. 10). The city ranked No. 20 for its Black business environment.

But like Houston, San Antonio also fell behind in its Black homeownership rates, according to the study.

"While the Black homeownership rate is higher than average at 44 percent, the homeownership gap (Black homeownership rate - non-Black homeownership rate) quite low at -19 percent," the report's author wrote. "Perhaps this could be explained by San Antonio’s overall homeownership rate, which is also lower than the state’s average. Additionally, the lower homeownership gap could explain the cost burden rate also being lower than average at 41 percent."

The top 10 cities for Black professionals are:

  • No. 1 – Washington, D.C.
  • No. 2 – Atlanta, Georgia
  • No. 3 – San Antonio, Texas
  • No. 4 – Houston, Texas
  • No. 5 – Palm Bay, Florida
  • No. 6 – Dallas, Texas
  • No. 7 – Austin, Texas
  • No. 8 – Colorado Springs, Colorado
  • No. 9 – Lakeland, Florida
  • No. 10 – Charlotte, North Carolina
The full report and its methodology can be found on apartmentlist.com.

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This article originally ran on CultureMap.