Intellectual Property Portfolio Management

A collection of intellectual property is commonly referred to as a portfolio, and more particularly, an intellectual property portfolio.  It may include patent matters, in the form of design and utility patent applications and patents, both domestic and foreign, as well as trademark applications and registrations, which may also be domestic and foreign.  See Patents and Trademarks pages

A parent application may be directed toward an invention.  Child applications may depend from the parent application.  A single patent application may include multiple inventions, which may need to be divided out into multiple child applications, referred to as divisional applications.  Child applications may also be in the form of continuation applications, if the content of the parent and child applications is the same.  If the content of a child application differs from the parent application, or contains new matter, generally in the form of an improvement, the child application is referred to as a continuation-in-part application, or a CIP.  See Patent Applications page.

Applications may also claim priority to earlier filed applications.  Applications originating abroad may claim priority to US applications and vice versa.  There are also international applications, which can be based on earlier filed applications, later filed applications, or both.  These are respectively referred to as convention applications or international and national stage applications.  See Foreign Patent Applications and International PCT Application pages.

These are all referred to as patent family members

Similarly, trademark applications may be divided, claim priority to earlier filed applications, and/or be based on international applications (i.e., through the Madrid system).  See Trademarks pages.

All of the aforementioned matters have filing dates, specific time frames for claiming priority, and priority dates.  These dates trigger activities or events, which if not met with specific performance, could result in a loss of patent rights

Moreover, each country has its own law.  For example, the filing of a national stage application in the United States must be within 30 months from the priority date of an international application.  However, the same national stage application can be filed in Europe 31 months from the priority date of the international application.  In Canada, the filing of a national stage application can be deferred for 12 months (a total of 42 months) with the payment of a government fee.  See Time Limits for Entering National/Regional Phase.

However, even if an applicant misses the 30-month deadline for entering into the national stage in the US, and the application goes abandoned, the applicant may be able to revive the application with the filing of a petition and an accompanying government fee, if the abandonment was unintentional or unavoidable, the latter has a much higher standard.  See 37 CFR 1.137

So, even if an applicant “manages” to jump over all of the proper hurdles and the various patent family members successfully grant as patents, the applicant now has to manage to maintain the patents, with the payment of maintenance fees and annuities.  Maintenance fees and annuities are due at different times, which may be extendable with the payment of surcharges, which may be costly, and the various countries typically do not send notices that such fees are due.  The USPTO will notify a patent owner when a maintenance fee is past due.  The surcharge for making a late payment of a maintenance fee in the United States is a modest $150 USD ($75 USD for a small entity).  Compare this to the late fee in that of the European Patent Office (EPO), which is 50 percent of the annuity.  The tenth year annuity is about $1900 USD.  The late fee is about $950 USD.  See USPTO Fee Schedule and EPO Fee Schedule.  

Then, there is the issue of managing the portfolio in terms of when to abandon patents, or allow them to lapse for non-payment of maintenance fees or annuities.  The term of a utility patent, generally speaking, is 20 years from its filing date or earliest priority date. Technology advances so quickly that the subject matter of a utility patent may become obsolete well before the 20 years has passed.  The patent owner may wish to abandon a utility patent sometime within the 20 year term, prior to its expiration, and preserve its funding for future or other intellectual property protection.

There are also various types of protection for inventions, including design patents and utility models, each of which provides a unique form of protection, for a shorter duration, often without the payment of a maintenance fee or annuity.  For example, a US design patent has a term of 14 years (measured from its date of grant).  A utility model is available only in certain countries, and typically has a term in the order from 7-15 years, depending on the country.  See Countries that provide Utility Model Protection

With these considerations, and more, an intellectual property portfolio can be very complicated to manage.  However, with proper counseling and management tools, a portfolio can be built to include various types of intellectual property to meet specific needs, in particular industries, while avoiding the risk of making unnecessary maintenance fee and annuity payments

An arrangement can be made with outside counsel to input and maintain docketing data, for patents as well as trademarks, and to generate various portfolio reports to assist clients in reviewing and managing their intellectual property.  Outside counsel can also assist in reviewing the portfolio, valuating applications, patents and trademarks with clients, and making maintenance and annuity decisions over the life cycle of products

A patent owner can also do this internally by maintaining reports that relate patents and trademarks to products and product features.  The patent owner's marketing (i.e., product sales department) may provide valuable information about product sales, which can be useful in determining whether to maintain patents and trademarks, or whether to abandon the same to avoid further expense and to preserve the IP budget.

If you have a question about portfolio management, askme at thedford@askmeip.com