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 Are there other patents that are no longer important or have been superseded by newer developments and can safely be ignored and allowed to lapse?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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German biotech co. to relocate to Houston thanks to $4.75M CPRIT grant

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Armed with a $4.75 million grant from the Cancer Prevention and Research Institute of Texas, a German biotech company will relocate to Houston to work on developing a cancer medicine that fights solid tumors.

Eisbach Bio is conducting a clinical trial of its EIS-12656 therapy at Houston’s MD Anderson Cancer Center. In September, the company announced its first patient had undergone EIS-12656 treatment. EIS-12656 works by suppressing cancer-related genome reorganization generated by DNA.

The funding from the cancer institute will support the second phase of the EIS-12656 trial, focusing on homologous recombination deficiency (HRD) tumors.

“HRD occurs when a cell loses its ability to repair double-strand DNA breaks, leading to genomic alterations and instability that can contribute to cancerous tumor growth,” says the institute.

HRD is a biomarker found in most advanced stages of ovarian cancer, according to Medical News Today. DNA constantly undergoes damage and repairs. One of the repair routes is the

homologous recombination repair (HRR) system.

Genetic mutations, specifically those in the BCRA1 and BCRA1 genes, cause an estimated 10 percent of cases of ovarian cancer, says Medical News Today.

The Cancer Prevention and Research Institute of Texas (CPRIT) says the Eisbach Bio funding will bolster the company’s “transformative approach to HRD tumor therapy, positioning Texas as a hub for innovative cancer treatments while expanding clinical options for HRD patients.”

The cancer institute also handed out grants to recruit several researchers to Houston:

  • $2 million to recruit Norihiro Goto from the Massachusetts Institute of Technology to MD Anderson.
  • $2 million to recruit Xufeng Chen from New York University to MD Anderson.
  • $2 million to recruit Xiangdong Lv from MD Anderson to the University of Texas Health Science Center at Houston.

In addition, the institute awarded:

  • $9,513,569 to Houston-based Marker Therapeutics for a first-phase study to develop T cell-based immunotherapy for treatment of metastatic pancreatic cancer.
  • $2,499,990 to Lewis Foxhall of MD Anderson for a colorectal cancer screening program.
  • $1,499,997 to Abigail Zamorano of the University of Texas Health Science Center at Houston for a cervical cancer screening program.
  • $1,497,342 to Jennifer Minnix of MD Anderson for a lung cancer screening program in Northeast Texas.
  • $449,929 to Roger Zoorob of the Baylor College of Medicine for early prevention of lung cancer.

On November 20, the Cancer Prevention and Research Institute granted funding of $89 million to an array of people and organizations involved in cancer prevention and research.

West Coast innovation organization unveils new location in Houston suburb to boost Texas tech ecosystem

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Leading innovation platform Plug and Play announced the opening of its new flagship Houston-area location in Sugar Land, which is its fourth location in Texas.

Plug and Play has accelerated over 2,700 startups globally last year with corporate partners that include Dell Technologies, Daikin, Microsoft, LG Chem, Shell, and Mercedes. The company’s portfolio includes PayPal, Dropbox, LendingClub, and Course Hero, with 8 percent of the portfolio valued at over $100 million.

The deal, which facilitated by the Sugar Land Office of Economic Development and Tourism, will bring a new office for the organization to Sugar Land Town Square with leasing and hiring between December and January. The official launch is slated for the first quarter of 2025, and will feature 15 startups announced on Selection Day.

"By expanding to Sugar Land, we’re creating a space where startups can access resources, build partnerships, and scale rapidly,” VP Growth Strategy at Plug and Play Sherif Saadawi says in a news release. “This location will help fuel Texas' innovation ecosystem, providing entrepreneurs with the tools and networks they need to drive real-world impact and contribute to the state’s technological and economic growth."

Plug and Play plans to hire four full-time equivalent employees and accelerate two startup batches per year. The focus will be on “smart cities,” which include energy, health, transportation, and mobility sectors. One Sugar Land City representative will serve as a board member.

“We are excited to welcome Plug and Play to Sugar Land,” Mayor of Sugar Land Joe Zimmerma adds. “This investment will help us connect with corporate contacts and experts in startups and businesses that would take us many years to reach on our own. It allows us to create a presence, attract investments and jobs to the city, and hopefully become a base of operations for some of these high-growth companies.”

The organization originally entered the Houston market in 2019 and now has locations in Bryan/College Station, Frisco, and Cedar Park in Texas.