Companies have often invested a great deal of time, money and resources into the development of their patent portfolio. It is, therefore, important to manage the portfolio efficiently and diversely and to make full use of it. For this to be possible, companies must know their patent portfolio in detail and organize it based on the primary purpose of each patent. This article focuses on some of the main cornerstones of patent portfolio management.
Mika Lehtinen has been working with intellectual property rights for more than 25 years, focusing especially on their management and use. He has participated in many large projects dealing with the licensing and selling of patent portfolios, which have generated considerable profit to IP owners.
Over his career, he has prepared hundreds of claim charts, which have been used in numerous patent commercialization projects and court cases.
Classify and categorise
The starting point for portfolio management is the patent portfolio that the company has developed over the years based on its IP strategy. This article does not discuss companies’ IP strategies or patent applications as such. Instead, it deals with the best way to manage an existing portfolio. A portfolio incurs expenses continuously due to patent maintenance and patent application processes. Moreover, companies often do not have a clear strategy for using their patents. They may also lack detailed patent analyses, which means they are not fully aware of the content of their portfolio or its utility.
From the perspective of portfolio management, it is important to classify the patent portfolio by technology, product and business, as well as by the commercial significance and importance of each patent. This ensures that portfolio analyses can concentrate on larger entities, such as patents related to a specific technology and product, on the one hand, and on their valuation, on the other hand. It is essential that classification is based on the company’s needs. Classification facilitates portfolio management, as it offers a more comprehensive picture of the portfolio’s content, categorizes the entire portfolio into smaller entities (subportfolios) and enables decisions to be made on their use.
Analyses and conclusions
Nevertheless, detailed analyses of the patents’ scope of protection are the key element of portfolio management. If the company wishes to protect its own technology or product, its patent must cover the said technology or product. It is also important to track and analyze competitors’ products to ensure they do not make use of the company’s patented solutions. Patents can also be used for defensive purposes: if a competitor uses patents to harm the company, this can be used against them in negotiations. In this case, the patent must cover the competitor’s products. If the goal is to license technology, the patent must provide comprehensive protection for the company’s own technology and cover it as widely and specifically as possible. To improve the success of patent licensing, the counterparty’s products should ideally infringe the patent in question.
What is known as a patent claim chart is important in all these potential uses of patents. A claim chart is a document that compares the independent patent claims to the target product, technology or standard. For the patent to be relevant, each section of the independent claim must be found in the target analyzed. The claim chart is a very useful tool both when applying for and utilizing patents. It also ensures that patent protection matches the company’s strategy of use.
If analyses indicate that a specific patent is of no use to the company, it is worth considering whether the patent should be allowed to lapse and dropped from the portfolio in order to save costs. Substantial cost savings can be achieved by letting patents lapse, especially if this is done for large, relatively old patent families. Portfolio trimming is always a major decision, and it must be based on analytical conclusions finding that there is no way for the company to use the patent. As a last resort, companies often try to sell a patent or a part of their portfolio, and if this is unsuccessful, it is easier for companies to opt for trimming.
Cornerstones of patent portfolio management
Patent portfolio management involves active and systematic measures. The cornerstones of patent portfolio management include:
Classifying each patent family
Determining the significance of each patent family
Analyzing in detail the independent claims of each patent
Creating claim charts
Defining the purpose of use for each patent family
This provides the company with up-to-date, carefully analyzed information about the usefulness of the patents in their portfolio and whether they can be used for the planned purpose.
Berggren is a leading and internationally award-winning intellectual property expert organization. We handle all traditional IP matters related to patents, trademarks, design protection, and domain names. In addition, we have comprehensive expertise in consultative services like IP portfolio management, and IP strategies as well as in IP commercialization.
In this event, we have teamed up with Greip IP Solutions, which provides a modern platform for IP management and collaboration.