Canada’s Intellectual Property Firm

Patent portfolio management: know what you have

Authored byBrigide Mattar

The first and most important step in managing a patent portfolio is knowing what patent assets your company already has. By understanding the existing assets, a manager can better plan and strategize in support of the company’s business objectives. This helps in deciding what should or should not be patented, and what assets should be purged or maintained.

For the experienced manager, the importance of this may seem obvious. After all, how can any asset be managed without knowing what that asset is? Yet surprisingly, few companies have an accurate picture of their patent holdings and how they fit into their businesses.

For many companies, managing a patent portfolio is limited to obtaining patents for their new products and services without regard to existing holdings and their ongoing value. These companies tend to seek new patents that are isolated in their scope of protection, rather than patents that complement their portfolio.

Knowing your patent portfolio goes beyond maintaining a simple list. It involves understanding how your existing patent assets relate to your company’s commercial activities, knowing the business purpose behind holding each patent asset, and being aware of where your portfolio stands relative to those of your competitors. It also means keeping your patent strategy current as you introduce or drop products or services and as competitors enter and exit the marketplace.

Performing an IP audit is a good way to kick off the process of managing your patent portfolio. However, an IP audit is not enough on its own. While an IP audit can provide a snapshot of your patent assets at a specific point in time, it is often a process that is performed and soon forgotten. On the other hand, effective patent portfolio management is a dynamic task that must receive ongoing attention.

A practical step towards proactively managing your portfolio is to hold periodic patent review meetings. At such meetings, managers from different departments review your company’s current patent assets, define, refine, or redefine strategic objectives for the portfolio, and evaluate patent protection needs for developing technologies. Relevant individuals within your company are kept updated, making them able to identify possible gaps in patent protection. These meetings also allow a patent asset that has upcoming expenses, such as maintenance fees and foreign filings, to be considered in light of its contribution to the overall patent portfolio instead of in isolation. This in itself can result in thousands of dollars of savings by avoiding maintenance fees on patent assets that have become commercially irrelevant.

Another practical step toward proactively managing a patent portfolio is to assign its management responsibility to a specific person. It is, however, worth mentioning that since the tasks involved will include significant decision making based on in-depth product knowledge, the responsibility should be assigned to a manager rather than to a clerk or administrator. This step will help to ensure that someone is actively aware of the patent assets you have, and will avoid patent portfolio management becoming an afterthought.

Knowing what you have is only the first step in proactively managing your patent portfolio. The next step is deciding what to do with that knowledge and how to leverage it to improve your bottom line.