5 ways to build and maintain your patent portfolio

How can you revamp your patent portfolio?

It is important that any patents you file and those which you may already own remain relevant to your business and any new commercial aims.  Obtaining and enforcing patents may be expensive and time consuming, so it is sensible to keep on top of your patent portfolio to ensure it aligns with your intellectual property (IP) strategy, business strategy and your budget.  The following steps can help you with this.

1. Identify what to protect

Few companies have budgets so great that they can afford to protect every aspect of their technology.    As such, a first consideration for effective patent portfolio management is to identify commercially useful inventions for patent protection.  The relevant considerations at this stage may vary from one business to another.  However, the following factors are useful to bear in mind, no matter what your strategy or budget:

  • Is the invention important to your business now, or will it become important over the next 5/10/20 years?
  • Is there a belief among your inventors that the invention is new? Is there anything already in the public domain that suggests the invention already exists?
  • Does your IP strategy and budget allow the filing and prosecution of one or more patent applications directed to this technology?
  • Would it be possible to identify and establish copycat inventions made by a third party?

2. File a patent application

A first patent filing will likely be made at the UKIPO (a UK patent application) before deciding whether to pursue patent protection outside of the UK.

In deciding whether to continue with the UK application and/or to file any overseas applications,  it is important to fully review the search report drawn up by the UK patent Examiner on the UK patent application.  The search report is usually put together around 6-9 months after filing the UK patent application.  In the report, the Examiner will list the documents (mainly previously published patent applications and patents but may include some non-patent literature) which they believe to be relevant to the patentability of the invention claimed in your patent application.

The documents identified in the search report may provide an indication as to whether the patent application will proceed to grant and, if so, with what scope.  The search report may therefore act as a guide for whether it is worth pursuing patent protection overseas and/or continuing with the UK patent application, given the relevance of the documents identified in the search report.

3. Patents as territorial rights

Patents are territorial rights, meaning that a UK patent can only be enforced in the UK, a US patent can only be enforced in the US, etc.  Generally, if patent protection is sought in multiple countries, then separate patent applications will need to be filed in each country of interest.

Once an initial patent application (for example a UK patent application) has been filed, you have 12 months from the date of filing this application to decide in which countries to file further patent applications.  It is possible to push this decision back by 18 months (i.e., to 30 months from the date of filing the initial patent application) by filing an international (PCT) patent application within the initial 12-month period, then 18 months later, splitting the international application into desired national applications.

Applicants often see costs dramatically increasing when filing and prosecuting patent applications outside of the UK, due to a number of factors (including the requirement for translations, more expensive government or foreign attorney fees, difficulty in obtaining protection in other countries, etc.).  Effective patent portfolio management will carefully consider which countries to file in.  The following considerations may be useful in deciding in which countries to apply for patent protection:

  • Where is the invention going to be manufactured and sold by you?
  • Where are your competitors located? Where do your competitors manufacture and sell products similar to the invention, and where could they manufacture and sell any infringing products?
  • Given the difference in costs in obtaining patent protection in different countries, is it worth seeking patent protection in the countries where costs are higher?
  • Is it worth pursuing patent protection in some countries given their approach to patent enforcement? What is the quality of patent enforcement in the countries of interest?

4. Speed things up

It typically takes several years from filing a patent application to it being granted and, because of this, patent prosecution is often seen as a long, drawn-out process which takes a long time to deliver results.  This may act as a deterrent to applicants who are sat on the fence over whether to try and obtain patent protection for a new invention.

Thankfully, there are numerous ways to speed up the patent prosecution process to obtain a granted patent in a far shorter time than several years.  This can help a company quickly revamp its patent portfolio.

It should also be noted that action cannot be taken against potential infringers of your patent until your patent is granted.  As such, if you become aware of a potential infringer, it is sensible to accelerate prosecution of your application as far as possible so that action can be taken against the potential infringer at the earliest opportunity.

There are several ways to accelerate prosecution of a UK patent application, for example:

  • Request combined search and examination of the application,
  • Request accelerated search and/or examination with a suitable reason (e.g., the threat of imminent (or current) infringement),
  • Request early publication of the patent application,
  • Patent Prosecution Highway (PPH) and (PCT)(UK) Fast Track – If you have patent applications for the same invention in other territories and/or the UK patent application originated from an international (PCT) application, you may be able to accelerate prosecution on the basis of an examination report indicating that the application is allowable for grant, or a notice of allowance issued on a corresponding application by a foreign patent office participating in a Patent Prosecution Highway.
  • Green Channel – If the invention of the patent application has an environmental benefit, a request may be made to enter the application into the ‘Green Channel’. Green Channel applications can undergo accelerated search, examination, combined search and examination, and/or early publication, as requested by the applicant.

5. Patent pruning

Patents which were once of key importance to your business may be less so now.  For example, a patent covering a product which has since been discontinued by your business may be of relatively little importance now compared to when that product was a top selling item.  Also, it may transpire that some products are not as successful as first thought when patent applications were initially filed to cover that particular technology.  You may also have filed patent applications relating to technology which hasn’t been commercialised in the short-medium term and isn’t likely to be in the long term.

To maintain a granted patent through to its 20-year patent term, annual renewal fees must be paid and these tend to increase in cost each year.  As such, if you have granted patents in several countries which cover a product your business is no longer selling, then the annual renewal fees may amount to a significant cost for which there is little benefit.  You are not required to keep a patent in force for its full 20 year term.  A patent can quite easily be abandoned by withholding payment of the next due renewal fee.

Pruning less valuable patents from your portfolio is a good way to save money and to keep your portfolio up-to-date with your business.

If you would like advice or need help with your patent portfolio, please get in touch to speak to one of our attorneys.

Wilson Gunn