IP Portfolio Management – Maximizing Returns With Patent Pruning

In a company's IP portfolio, there can be a wide range of patents, copyrights and trademarks. But, majority of these IP assets don't match with business plan and market demands, and cost the owner thousands of dollars in the form of maintenance fee, attorney fee, etc. Moreover, the most promising assets in the portfolio remain unnoticed. Patent pruning is a special technique to identify and monetize the assets matching perfectly with the current and projected business objectives and future market trends, and abandon the non-performing assets.

Why patent pruning?

Patent pruning can help businesses manage their intellectual property portfolio efficiently, and stay competitive in their respective markets. Listed below are some of its core benefits:

  1. Cost cutting: Why to pay for the patents, which are not going to cover even the investment costs? Instead, the money can be used for protecting and monetizing the IP assets, which have great marketability. Patent pruning helps identify and abandon the non-performing assets of the portfolio, thus minimizing the intellectual property maintenance costs.
  1. Prosecution strategy: During the prosecution phase, claims should be edited not only considering the IP office guidelines, but also future market perspectives and company's product line. Patent pruning (tuning) helps make strategic amendments in the claims so that they properly align with the business objectives and trending markets.
  1. Monetization strategies for the most promising assets: In an intellectual property portfolio, the percentage of the assets that perfectly align with business plan and future market trends is very low. But, they can help make significant amount of money if monetized effectively. The patent monetization strategies are exclusive, non-exclusive, and assertion based licensing, etc.
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Today, most of the companies are spending millions of dollars as maintenance fee of their IP portfolios. They don't even try to know if the assets they are paying for worth their business or not. With the help of patent pruning, business persons, IP attorneys, and decision makers can identify the most promising assets of the portfolios, and convert them into profitable endeavors.

Patent pruning is not as easy as it seems, and companies should be very careful when adding the IP assets in the abandon list. It is recommended to consult with all the departments including legal, business, marketing, and R&D, and identify the technologies that are going to be phased out. Also, consultation from IP professionals can help choose the patents to focus more on, making great difference.

by Gurdeep Singh

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