Session Duration: 1.5 hours
Format: Audit exercise, walkthrough of IP audit template, group SWOT
Before any technology can be licensed, sold, or commercialized, a comprehensive evaluation must be undertaken to understand exactly what intellectual property (IP) exists, who owns it, and how it can be used. This evaluation is referred to as an IP audit. For research institutions and funding councils, conducting a rigorous IP audit is a critical first step in the commercialization process. It not only safeguards institutional interests but also ensures that the right assets are leveraged for maximum value. An IP audit is much more than simply checking whether patents have been registered. It involves taking stock of all tangible and intangible assets that may carry commercial or legal value, regardless of whether they are formally protected or not. The following are important steps in an IP audit:
1. Identify All Registered IP: The first task in an IP audit is to catalogue all registered intellectual property rights owned by the institution. These include:
a) Patents (for inventions and processes),
b) Trademarks (for names, logos, and symbols),
c) Industrial designs (for aesthetic aspects of products),
d) Copyrights (for written content, software, multimedia, training manuals, etc.), and
e) Plant variety protection rights, where applicable.
This information should include the title, registration number, date of filing, status (granted or pending), jurisdiction (local or international), and named inventors. For instance, a university may discover it has granted patents for a soil testing kit in Nigeria and a pending trademark for the kit’s brand name in Ghana. Understanding what is formally protected helps determine the institution’s legal authority to license or enforce those rights. It also highlights gaps, for example, IP developed by staff that has not been protected due to resource constraints or a lack of awareness.
2. Document Unregistered IP Assets: Equally important is the identification of unregistered or informal IP, which often goes unnoticed but can hold significant commercial value. These include:
a) Trade secrets, such as unique formulations, databases, or algorithms,
b) Know-how developed during research activities,
c) Institutional emblems, colours, or slogans, and
d) Distinctive names used by departments, labs, or special projects (e.g., the name of a research group or a student innovation hub).
Although not registered, these assets may still be protected through confidentiality agreements, internal policies, or later formalization. For instance, a lab’s proprietary method for extracting bio-oil from algae may not yet be patented but could be protected as a trade secret or a future patent application.
3. Review Third-Party IP In Use: Another crucial aspect of the audit is to examine IP used under license from other entities. Institutions often use tools, software, genetic material, or research instruments developed externally and licensed for academic use. The audit should clarify:
a) What third-party IP is being used?
b) Under what terms is it licensed (research use only, commercial use allowed, time-limited, etc.)?
c) Are there restrictions that would prevent commercialization of derivative products?
Failing to understand these terms can lead to IP infringement or limit the ability to license improvements built on external IP.
4. Verify Ownership and Authorship: Ownership of IP must be clearly established. This includes:
a) Confirming that the institution holds rights to the IP created by its staff or students,
b) Ensuring appropriate IP clauses are embedded in employment contracts, student agreements, and collaborative research agreements,
c) Investigating co-ownership situations, such as joint IP developed with international partners or industry collaborators.
Disputes over ownership often arise when such arrangements are unclear, especially in multi-partner research. For example, a seed technology developed by researchers in Côte d’Ivoire under a regional partnership must clarify whether the ownership lies with the local institution, the funding agency, or the consortium.
5. Catalogue Institutional Creative Outputs: The IP audit should also include creative and operational assets of the institution that may have commercialization potential or strategic value. These could include:
a) Software programs developed by faculty or students,
b) Training manuals, e-learning content, and multimedia, which could be packaged for sale,
c) Institutional anthems, slogans, or promotional jingles,
d) Client databases, internal quality procedures, compliance systems, and more.
Many of these are often overlooked yet qualify as copyrightable material or trade secrets. For instance, a university’s comprehensive online agribusiness training program could be licensed to NGOs or agricultural extension agencies.
6. Assess the Condition and Relevance of Each IP Asset: Beyond listing assets, the audit must evaluate:
a) The commercial relevance of each IP (Is it in demand? Is it scalable?),
b) The enforceability of rights (Are patents expired or still valid? Are trademarks being used correctly?),
c) Any pending legal issues or disputes, and
d) The readiness level of the technology (Has it been tested? Is it production-ready?).
This assessment helps prioritize which technologies to commercialize, which need further development or protection, and which are not viable for market use.
Why IP Audits Matter for Commercialization
Conducting a comprehensive IP audit helps institutions and councils make informed decisions about which assets to promote, protect, license, or spin out. It provides the foundation for:
a) IP valuation, which determines what the technology is worth,
b) Technology licensing, by confirming ownership and scope of rights,
c) Fundraising and investment, where IP can serve as collateral or attract interest,
d) Strategic planning, by identifying research strengths and innovation gaps.
Moreover, in regions where IP management is still emerging, like many parts of West Africa, institutionalizing regular IP audits ensures transparency, accountability, and preparedness for technology transfer opportunities, whether with local industry or international partners. Even internal documents, client databases, and internal procedures should be protected as trade secrets.
Example: A university’s anthem, slogan, and training software are included in its IP audit.
Valuing Intellectual Property (IP)
IP valuation is critical for:
a) Contract negotiations (licensing, assignment).
b) Dispute resolution.
c) Asset valuation during liquidation.
d) Using IP as collateral.
e) Attracting investors.
f) Tax reporting and institutional restructuring.
Facilitation Notes
a) Use WIPO IP audit template in class.
b) Highlight undervalued assets (e.g., software, training manuals).
c) Encourage councils to institutionalize regular audits.
Suggestions for Further Reading
a) WIPO (2018). IP Audit Tool: A Practical Guide for Institutions.
b) Markman, G., et al. (2005). “Entrepreneurship and University-Based Technology Transfer.” Journal of Business Venturing, 20(2).