This blog post first ran in 2013, and is becoming something of a holiday tradition for the author.
As the year winds down, tradition dictates that we reflect back on the year and, in some cases, resolve to do certain things differently. You can effectively leverage this frame of mind for patent portfolio management as well. Of course, “patent” in a portfolio context is shorthand for patents, licensed rights, and patent applications, organized into a manageably-sized group of properties (“portfolio”) relating to a market segment or technology area to maximize patent advantage.
We believe a year-end patent portfolio assessment has many things in common with holiday experiences, and we hope this stimulates your thinking:
(1) Take time to appreciate what matters. Your portfolio, whatever its limits, is unique, valuable, and a direct reflection of your (or your company’s) previous level of engagement. By virtue of having a portfolio, you agree that patents are valuable for protecting products, increasing licensing opportunities, preserving competitive advantage, and stopping others from practicing your patents. The efforts you invest now in reviewing the portfolio can pay off big in 2017.
(2) Get out the decorations. Take some time to create a bullet-list of the 2016 highlights for your portfolio to share with others. Besides the fact that everyone appreciates good news, this will validate your efforts, and in some cases, drive alignment, based on the feedback you get from others.
(3) Compare the ingredients on hand against the menu. Measure your success against your IP Strategy (See IP Strategy). In which areas did you meet or exceed the strategy? Where does more work need to be done? This is also a good time to assure yourself that the strategy is up to date. Factor in current business objectives and market conditions, as well as forecasted trends and innovation trajectories (take a long view).
(4) Any last minute shopping? If your portfolio has gaps to fill, you don’t necessarily have to acquire another company to bolt on valuable IP. Many companies have patents or whole portfolios that they would be happy to sell or license (see #11 below). In fact, patent brokers make their business connecting buyers and sellers.
(5) Bring families together. Which patents cover which products or proprietary methods? Do you own other patents outside the portfolio that could strengthen the portfolio? For example, if your company owns many patents, a quick keyword search could reveal whole new families that could, with continuation or divisional practice, add properties to your portfolio.
(6) Catch up on events. Are you aligned with your marketing/business group as to which patents are really important? Assuming you’ve tiered your patents for criticality, has anything changed with the patents that you need to surface, or more likely, has the business landscape changed enough to require some reprioritization of efforts? The next three events are recognizable decision points:
(7) Anybody expecting? Are there any significant grants, launches, or government regulations on the horizon? Make sure the portfolio (and the business team) is poised to capitalize on these developments, or at least mitigate their risks.
(8) Who’s growing? Are any patterns evident from tracking progress of prosecution? For example, if your applications are being rejected repeatedly, consider an appeal or examiner interview. Is there a hot new market segment you should be reaching toward for claim coverage? A quick review of specifications may find support for new claim sets that can be introduced.
(9) Anybody visibly aging? Sadly, all patents have their term. In addition to the heads-up you’re giving by tracking expiration, identify where market conditions have changed to the point where some patents are now moot, or less relevant. Does the benefit of maintaining these properties outweigh the costs?
(10) Keep your eye on the neighbors’ parties. You’re likely routinely tracking new patent filings (and new patent litigations) of certain parties of interest. However, are you also looking for patterns and active technology areas so that you can file to protect space you may be interested in entering in the future?
(11) Clean up after the celebration. Based on your efforts above, you may have identified patents that are no longer useful in your portfolio. Since grants incur maintenance fees and annuities, and applications require responses, it may be desirable to get these patents out of your portfolio. Ideally, it would be nice to monetize them, as opposed to simply cutting your losses by abandoning them.
(12) Send Thank-you’s. Undoubtedly, you have received input from inventors, business people, technical folks, and others during the year in managing the portfolio. Simply forwarding the highlight list (see #2 above) and adding a simple “couldn’t have done it without you,” can build a stronger team and motivate the recipient for next time.
This article is to help raise the bar in portfolio management, not to dispense legal advice. Here at Condo Roccia Koptiw, we can evaluate a client’s portfolio and help implement changes to maximize effectiveness. Our advice covers everything from country selection for cost-effective global coverage to providing negotiation services for tech transfer.