Why Did the IP Lawyer Cross the SOX Road?

Because she had to, would seem to be the riddle's answer, considering this article by Ira L. Kotel and Nancy Drehwing Edwards available for download from the PLI - The Compliance Counselor that states:

"Kotel and Edwards echo the notion that 'IP practitioners should enhance their familiarity with the key issues raised by Sarbanes-Oxley,' but also convey a comforting sense that because SOX was so complicated to begin with, "most public companies appear to have created working groups and committees to make corporate, securities, financial and audit expertise available to assist" IP personnel with SOX-related matters. What follows is essentially a SOX disclosure/securities law primer for IP attorneys.

The authors offer separate sections on company reports, attorney conduct rules, confidentiality requirements, Reg. FD, along with a special section on materiality. The section on company reports is particularly instructive as it includes a subsection on "required processes." This is to assist IP attorneys who are "called upon to assist their clients and corporate colleagues in evaluating the relevant intellectual property portfolio in order to determine whether anyone is using or disposing of the intellectual property in a reportable fashion." To that end the authors offer an eight-step inquiry into valuing the IP portfolio. It includes not just the basics of "what do we have" and "how much is it worth," but gets into the more crucial SOX-related questions such as:

-Are there any intellectual property infringers, and if so, how does that effect the financial position or prospects of the company?
-What is the likely validity of the intellectual property? How is that to be assessed, and on what basis should any positions be revisited?
-What is the potential for infringement damages and/or licensing income?
-What, if any, new issues might impair the value of the intellectual property? What if the market place has changed and the public interest in products or services covered by the intellectual property changes?

Of course, these are questions that IP lawyers have often traditionally considered; it's just that now they have to do it within the context of SOX. And, as the authors note, since each company "needs to determine what policies and procedures it needs to have in place to properly evaluate" these and other SOX-related issues, it's not as if you have to cross that SOX-road on your own. Your clients, or the companies you work for, will be crossing to your side of the street, as well. You'll just meet somewhere in the middle. Hopefully on a median strip."