Client:
Manufacturer of Special-Purpose Motor Vehicles

Overview: A comprehensive audit of the client’s intellectual property portfolio across 16 jurisdictions, including an analysis of chain of title and contractual arrangements governing the use of IP rights.

Team:
Anna Kravchuk, Viktoriia Tomyk

Result: A consolidated and structured database of the client’s intellectual property assets, accompanied by recommendations for ongoing rights management.

Project Overview

The project comprised two stages, covering both a review of the current status of the client’s IP portfolio and an analysis of ownership documentation and contractual relationships with business partners.

Stage One involved auditing the client’s trade marks, industrial designs and patents across 16 priority jurisdictions. We verified information against official registers, reviewed the scope of protection, expiry dates and ownership structure of the IP assets. We also examined the available ownership documents and assessed options for expanding the portfolio through new registrations in strategically important jurisdictions.

Stage Two focused on documents and agreements governing the acquisition, transfer and use of intellectual property rights:

  • Chain of title for inventions and industrial designs. We reviewed assignment agreements for compliance with the requirements of Ukrainian law and the laws of other relevant jurisdictions. The audit identified gaps in ownership documentation and contractual provisions that could jeopardise the validity of the agreements or the rights holder’s ability to dispose of the relevant IP rights.
  • Dealer agreements across multiple jurisdictions. We analysed provisions governing dealers’ use of IP assets, including the scope of licences granted, restrictions on use and confidentiality arrangements.
  • Licence agreements for industrial designs and trade marks in Ukraine and the EU. We reviewed the identification of the parties and licensed IP assets, the type of licence, territory and term of use, remuneration and quality control provisions.
Results

The audit resulted in a consolidated, structured database of the client’s IP assets, including information on the relevant jurisdictions, legal status, scope of protection and validity periods.

We prepared a portfolio maintenance plan setting out renewal deadlines and official fees, as well as the documents and actions required in each jurisdiction. We also provided recommendations on strengthening existing IP protection and expanding the portfolio.

In addition, we identified gaps in the documentation of rights transfers, potentially problematic provisions in existing agreements and measures to address these issues. Our recommendations covered documenting ownership of future IP assets, improving dealer and licence agreements, and protecting confidential information.

As a result, the client received a clear overview of its international IP portfolio, a plan for maintaining its rights and practical recommendations to reduce legal and commercial risks associated with the use and transfer of intellectual property rights.