IP Information & News

How to manage your patent portfolio

Dr Nick Burton

By Dr Nick Burton

Partner

Before you accrue intellectual property rights, you’ll need to put in place a portfolio management strategy to help you stay on top of costs and ensure that your rights stay relevant. Here, we explore the portfolio management basics for patent rights holders.

What is patent portfolio management?

Patent portfolio management is a process which ensures that any patent applications you file, as well as any patents you hold, remain relevant to your business. Your approach to portfolio management should be guided by your IP strategy and budget.

Identifying inventions to patent

The front end of portfolio management involves the identification and selection of inventions for patent protection.

Factors to consider at this stage include:

  • How important is the invention to your future products and services?
  • To your knowledge, and the knowledge of the inventors, how ‘new’ is the invention?
  • What proportion of inventions does your budget allow the filing of patent applications for?
  • If competitors were to copy the invention, would it be easy to detect this and prove it in court?

Selecting inventions for patent filing can be a difficult task, as some of the factors require a degree of guesswork.

Initial patent filing

For the most part, you’ll make an initial patent filing for each invention at the UK Intellectual Property Office or European Patent Office before deciding whether to go ahead with further patent filings in other countries.

This decision can be based on a search report, which is usually produced by the patent office within six to nine months. In the search report, the patent office identifies prior art which may be relevant to the patentability of the invention.

Geography

Patents are national rights. This means that, to seek patent protection in more than one country, it’s generally necessary to file separate patent applications in each country of interest.

The deadline for deciding which countries to file in is one year from the filing of the initial patent. This decision can be deferred by a further 18 months by filing an international patent application before the one-year deadline expires.

When choosing countries to file in, some factors to consider are:

  • The importance of the invention to your product line.
  • Where your products (or services) relating to the invention will be sold.
  • Where your competitors are likely to manufacture and sell any infringing products.
  • The quality of the legal system in each country of interest.
  • Cost.

Coordinating prosecution

Patent prosecution is the process by which patent applications are converted into granted patents.

Generally, this involves a negotiation exercise (conducted with the patent office), during which amendments to the application and/or arguments in support of the invention are presented in an effort to persuade the patent office to grant a patent.

If patent applications have been filed in different countries, the prosecution process in those countries may be coordinated. The aim of this is to seek consistent patent protection (in terms of the scope of protection that the patents provide) in the countries concerned.

Pruning

The value of a patent application or patent may change over time. For instance, a product may have a lifetime that is shorter than the usual 20-year patent term, or a product may turn out to be less successful than was hoped when the patent applications for it were initially filed.

On the other hand, the cost of seeking patent protection as well as that of maintaining granted patents through the payment of regular renewal fees tends to increase with the age of the patent.

These two factors should be balanced against each other, so that less valuable patents may be pruned from your portfolio.

Summary

Ultimately, portfolio management is largely a matter of balancing the perceived value of the patents in your portfolio against the cost of maintaining them.

Our attorneys can help guide you through this process — get in touch with me at nmb@udl.co.uk or your usual UDL advisor to find out more.

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