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 Are there other patents that are no longer important or have been superseded by newer developments and can safely be ignored and allowed to lapse?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.

------

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

Ad Placement 300x100
Ad Placement 300x600

CultureMap Emails are Awesome

XSpace plans $250M industrial condo expansion with RAFA Racing Club

growth mode

Houston-based XSpace Group has teamed up with two other Houston companies, RAFA Racing Club and Maximo Capital, to develop five industrial condo projects that pair flex space and high-end car storage space with a members-only clubhouse for motorsports enthusiasts.

The five projects will be built in the Dallas-Fort Worth; Miami-Boca Raton; Charlotte-Mooresville, North Carolina; Phoenix-Scottsdale; and Los Angeles markets. Other markets, including Las Vegas, are under consideration for future phases.

XSpace says the initial five-project venture will generate estimated sales of $250 million. Condos will be available to rent or own.

The ground floor of each project will feature a RAFA Racing Club Social & Performance Centre, a members-only clubhouse, event space and lifestyle hub. The remaining floors will offer space for car storage, collectibles, offices and studios. RAFA will operate the ground floor of each building.

“Our goal from day one with RAFA Racing has been to connect people through a shared love of performance and community,” Rafael Martinez, founder of RAFA Racing Club and principal of Maximo Capital, said in a news release. “By pairing XSpace’s forward-thinking condominium design with the exclusive hospitality, networking and high-performance environment of a RAFA Racing Club clubhouse, we’re establishing a community blueprint where passion meets community.”

Each clubhouse will offer:

  • Lounges
  • Dining, working and networking spaces
  • Concierge service
  • Driving simulators
  • Fitness and conditioning capabilities

“We’re building the most valuable community-driven real estate product in America — and RAFA Racing Club is the anchor that makes it unlike anything else on the market," Byron Smith, founder of XSpace, added in a release. “By integrating our flexible, high-end industrial condominiums with RAFA’s world-class hospitality and automotive community spaces, we are completely redefining what commercial real estate can be for the motorsports enthusiast.”

RAFA operates facilities for motorsports fans in Houston and Austin. The clubs, geared toward wealthy people, entrepreneurs, executives, and brand partners, combine a clubhouse, garage, paddock (racing’s version of a locker room), a “human performance” center and driver training programs.

RAFA plans to open seven clubs in the U.S. and three outside the U.S. over the next four years.

XSpace operates a high-end office, warehouse, and lifestyle condo project in Austin and is building a project in Houston that’s set to open in 2027.

Walmart expands drone delivery service to 8 new Houston-area stores

Now Landing

More Walmart delivery drones are now buzzing around Houston-area skies.

In January, Walmart launched its drone delivery service in partnership with Wing at five locations in the Houston area. The retail giant just added eight more stores to its Houston-area drone delivery network.

Wing says the expansion makes drone delivery available to more than 1 million residents of the Houston area. “Many can now bypass notorious Houston traffic to get everyday Walmart essentials delivered by drone in minutes,” Wing said in a release.

The eight Walmart stores that joined the drone delivery network are:

  • 13003 Tomball Pkwy. Houston
  • 12353 FM 1960 Rd. West, Houston
  • 2901 Riley Fuzzel Rd., Spring
  • 20310 U.S. Highway 59, New Caney
  • 1025 Sawdust Rd., Spring, TX 77380
  • 13484 Northwest Fwy., Houston, TX
  • 13750 East Fwy., Houston
  • 3506 Highway 6 South, Houston

Stores where drone delivery was already available are:

  • 14215 FM 2100 Rd., Crosby
  • 1313 N. Fry Rd., Katy
  • 15955 FM 529 Rd., Houston
  • 255 FM 518, Kemah
  • 6060 N. Fry Rd., Katy

Houstonians can learn whether their address is eligible for drone delivery from a Walmart store by visiting wing.com/walmart. Drone-delivered orders can be placed on the Walmart app, the Wing app, or at Walmart.com.

Once an order is ready, it’s loaded onto a delivery drone. The drone then flies up to 60 mph and at a cruising altitude of about 150 feet to reach the customer’s home. The average flight takes less than 5 minutes.

Once it arrives at the customer’s home, the drone stops, hovers at roughly 23 feet, and lowers the order via a tether. Wing says its drones gently lower orders to the ground to protect fragile items like eggs and coffee.

---

This article originally appeared on CultureMap.com.

TMC expands Korea BioBridge, welcomes 12 biotech companies to Houston

welcome to hou

The powerful partnership between Texas Medical Center (TMC) innovation and the world of Korean biotech advancement is already growing in scope. Just six months after the new TMC Republic of Korea BioBridge was first announced, 12 new companies from the Republic of Korea will establish on-site presences in Houston to further collaboration between the two nations and medical industries.

The expansion comes from a new agreement between TMC and the Korea Health Industry Development Institute (KHIDI). William McKeon, president and CEO of Texas Medical Center, applauded the move and predicted it would benefit both Houston and Korea immensely.

“Korea has established itself as a global leader in biohealth innovation, with a growing pipeline of breakthrough technologies across digital health, biotechnology, and medical devices,” McKeon said in the news release. “Through the TMC Korea BioBridge, we are creating a direct connection between Korea’s innovators and the world’s largest medical city. This collaboration between TMC and KHIDI provides companies with a place to establish a presence, build strategic relationships, engage with leading clinicians and researchers, and accelerate the path toward commercialization and patient impact in the United States.”

The companies that will be in residence at the TMC Innovation Factory include Ardens Lifescience, whose new CAROL device is currently in human trials tackling lung cancer by using the airway network as electrodes to perform bronchoscopic ablation; stem cell-based gene therapy firm CELLeBRAIN, currently working on neurological disorders and solid cancers; and Wellysis, the developer of the S-Patch wearable cardiac monitoring device.

Additional companies include:

  • Antigravity
  • ARPI
  • CTCELLS
  • elecell
  • HUVER Inc.
  • Hutom
  • ORGANOIDSCIENCES
  • YOUTH BIO GLOBAL
  • Seoul Medical Informatics Intelligence Lab Inc.

“This collaboration establishes a strong foundation for connecting Korea’s biohealth innovation ecosystem with world-class clinical and innovation resources in the United States,” Younghun Jeong, executive director of the KHIDI, added in the news release. “Through partnerships with Texas Medical Center and the Korean-American Medical Association Texas, we look forward to fostering meaningful collaboration among innovators, clinicians, and industry leaders while creating new opportunities for clinical validation, commercialization, and global growth. KHIDI remains committed to expanding global partnerships that support biohealth innovation, clinical collaboration, commercialization, and international growth.”

This is the seventh international strategic partnership for the TMC. It launched its first BioBridge with the Health Informatics Society of Australia in 2016. It launched its TMC Japan BioBridge, focused on advancing cancer treatments, last year. It also has BioBridge partnerships with the Netherlands, Ireland, Denmark and the United Kingdom.