Patent Portfolio Management Basics

"It does not make sense to invest thousands of dollars per year in patents, simply because any one of your patents could be worth millions," writes Dave Fisch, TAEUS Engineering Programs Director, in the Augsut 2005 issue of Taues Times. "If you owned real estate worth several hundred million dollars that cost you $5 million yearly taxes, you would actively manage the property to maximize your return and minimize your expenses. The same motivation needs to be applied to your patent assets, whether you own ten or ten thousand patents."He suggests conducting periodic human checks of each patent versus the potential market for the patented technology. "

It is critical that the information and opportunities you identify get captured in a way that allows you to easily retrieve this information," says Fisch. And we at Law Wire agree. With the right tools, processes, and leadership in place, a business can eaily identify those patents that can bring in licensing revenue and/or protect your business operation. It can also identify patents that should be sold or otherwise disposed of.Where to start, you ask? First, develop a "Proactive I/P Culture" with seminars and watch services for your engineers and marketers. If your current counsel can't, or won't, provide these services (at no charge), then maybe you need new counsel. Second, sit down with the individuals who are most knowledgable about a particular market segment and review the claims in your corresponding patents and goods identifications in your corresponding trademarks.

If your current counsel can't work with non-legal personnel to identify the point of novelty in each of the independent claims in an average of two minutes or less per patent, then maybe that counsel shouldn't be drafting the claims in your new applications. Third, when it comes to infringement, demand that your attorney explain the legal risks and expected costs to non-legal managers in a memo that is less than two pages long and/or a presentation that lasts less than fifteen minutes.

Rodney D. Ryder