- The Value of a Sworn Appraisal
- A Technical Expert for Each Asset
- The Traditional Model: The Technical Expert for “Technical” IP
- “Orphan” Assets: When the Appraisal Is Legal
- The IP Lawyer as a Summary Expert
- Conclusions
1. The Value of a Sworn Appraisal
In the context of intellectual property (IP), asset valuation is crucial in many areas.
Whether it involves an extraordinary transaction in the life of a company, such as an M&A transaction, participation in an award procedure, such as a tender or public funding, or the resolution (out-of-court or in-court) of a dispute, an accurate and verified assessment of the value of one or more intangible assets is often the difference between success and failure.
In these scenarios, a sworn appraisal is the fundamental tool for carrying out this valuation and, above all, for providing it with the necessary degree of authority.
A sworn appraisal, therefore, becomes the necessary tool for achieving the company’s objective and realizing the related profit, or for resolving a problem and avoiding the related damage.
2. A Technical Expert for Each Asset
However, the heterogeneous nature of intellectual property rights raises a fundamental question: who is the most qualified professional to prepare an appraisal of a given asset? While for some categories of IP assets the answer is straightforward, for others a “grey area” emerges where identifying a reference professional is not always straightforward.
3. The Traditional Model: The Technical Expert for “Technical” IP
For a broad category of industrial property rights, identifying an expert is relatively simple. These are assets whose valuation requires purely technical or scientific expertise.
The most obvious example is a patent for an industrial invention, where the expert is an engineer, possibly also a patent attorney, whose training covers the technical field encompassing the patented invention.
The same reasoning can be applied to other industrial property rights, such as trademarks, where the expert is a trademark attorney.
This approach mirrors the broader one whereby the expert assigned to a specific subject matter is the professional who works in that field, such as an architect for an architectural appraisal, within a consolidated framework of technical expertise.
4. “Orphan” Assets: When the Appraisal Is Legal
Not all intellectual property assets, however, lend themselves to a purely technical evaluation, nor can they rely on the existence of clear experts in the field.
There are numerous intellectual creations and distinctive signs whose protectability and value depend on legal rather than technical assessments and/or for which it is not possible to identify a technical expert.
Consider, for example, even highly technical assets whose value derives from predominantly legal considerations, such as know-how, a database, or a de facto trademark.
Consider, also, assets that have no immediate technical expert reference, such as a television script, a format, or a layout.
The expert called upon to evaluate these assets approaches a primarily legal approach, investigating the degree of legal protection the asset is eligible for based on its characteristics, and only secondarily a technical-economic one.
It is therefore important that the expert be a technician who, before any other possible specialization, knows how to navigate the regulations and their jurisprudential interpretation.
With reference to these assets, therefore, the closest “expert in the field” is the jurist.
5. The IP Lawyer as a Summary Expert
In these “gray areas,” therefore, an intellectual property lawyer emerges as the most qualified professional to prepare an expert report. Their expertise lies not in a specific technical discipline, but in the ability to analyze an asset in light of the legal requirements for its protection and its market positioning.
In fact, when the classification of an asset as an “intellectual work” or the fulfillment of the requirements for protectability constitutes the logical-legal antecedent of a claim, the required analysis is intrinsically legal, and the IP lawyer possesses the “qualified diligence” necessary to navigate the intersection between facts (the characteristics of the asset) and law (the conditions for its protection).
The lawyer can therefore, for example, evaluate the strength of an unregistered trademark by analyzing evidence of use, public perception, and the likelihood of confusion; he can determine the originality of a screenplay by comparing it with prior works and applying the criteria developed by case law; can define the scope of a trade secret and its violation.
6. Conclusions
In conclusion, while it is true that a technical expert is irreplaceable for assets with a strong technological connotation, it is equally true that the intellectual property landscape is populated by assets lacking a dedicated technical expert.
For these assets, whose existence and value are defined primarily by legal parameters, an IP lawyer is not only a possible choice, but the most logical and appropriate.
Acting as an expert, they provide the synthesis of factual analysis and legal interpretation essential for a correct valuation, ensuring that these intangible assets can also be adequately appraised. This ensures their adequate value in the event of corporate transformation processes or access to economic opportunities, and the best defense in the event of litigation.
The lawyers at RUP Legal & Consulting can assist as experts in any area, for any purpose, and with respect to all intangible assets that lack a dedicated technical expert.
