Patents can be the cornerstone to protecting your core processes, machines, methods of manufacture, compositions of matter, articles, or any new or useful improvement. While one patent could protect one core piece of an innovation, a patent portfolio could expand that core protection. Imagine the different variations on that idea, or what other people might do, to take your idea to the next level.
This is why many entrepreneurs invest in developing a patent portfolio instead of just one patent.
What is a patent portfolio, and how can it help grow your business?
A patent portfolio is a collection of the patents you or your business hold.
A patent portfolio could include any patents where you have a property interest, such as patents that are assigned to you or your business, or patents where you have licensing agreements. Patents can be a very valuable tool in growing your business, since a patent may give you an exclusive right to an invention that may be very valuable. This may allow you to have an edge on your competition and grow a reputation in your market.
Patent portfolio management is the regulation and monitoring of your patent portfolio. This can range anywhere from checking the portfolio to see if there are new patent applications to file on, whether there are any maintenance fees due to make sure your patents don’t expire, or seeing whether someone else is infringing. There are several benefits to properly managing your patent portfolio: most importantly, a properly managed patent portfolio can provide a huge value to your business. On the other hand, a poorly managed patent portfolio can be costly. For example, we’ve had countless clients who think they have a portfolio only to find…most of their patents have gone expired or that they did not protect some aspect they thought they did.
Patent Procurement: How to Begin Building Your Patent Portfolio
1. Identify New Technology
The first step to growing your patent portfolio is obtaining patent protection for an invention. This can be a long process that takes close collaboration with a patent attorney or agent. However, as a business owner, entrepreneur, or innovator, you can start by identifying new technology that may be lucrative or beneficial to your business.
For example, you may want to research the expected development your industry will experience in the next 10-20 years. Because a patent generally lasts 20 years from the date of filing, you can focus your scope well into the future. You may be able to identify areas where there is a gap in innovation, and you may put your resources into developing a patentable invention to fill those gaps.
If you have a research and development department or have several members of your business who innovate, it is important to track their progress on their innovations. Tracking developments can help you determine when to pursue patent protection. For example, in the United States, you have a one-year grace period after a public disclosure to file a patent for the invention disclosed. Thus, it is important to identify potential disclosure dates of your team’s innovations so that you can properly apply for patent protection.
2. Draft Broad(ish) Applications
The next step in growing your patent portfolio is drafting “broad” patent applications. “Broad” is in quotations because this is all dependent on your specific goals for a particular invention or how crowded the field is with other applications or for innovation.
A broad patent application is a great tool when building your patent portfolio, as this may allow you to pursue multiple patent applications claiming priority to your broad application. Multiple patents may be beneficial for several reasons, such as distinguishing inventions for different licensing opportunities.
For example, let’s say your provisional patent application contains an invention for a sandwich with meat, lettuce, cheese, and tomato, but when you file your non-provisional patent application, you specifically claim a sandwich with just meat and lettuce. This leaves the cheese and tomato sandwich to be pursued in subsequent non-provisional applications, which may benefit from the earlier priority date of the original provisional patent application if pursued while the non-provisional application is pending at the United States Patent and Trademark Office (USPTO). If both patents are issued, you may want to license the patent claiming a sandwich with just meat and lettuce to one company and the patent claiming a sandwich with just cheese and tomato to another company.
3. Diversify Your Patents
Another step in growing your patent portfolio is applying for patents in different areas of industry. Diversification of your patent portfolio may allow your company to benefit from patent protection if there is a shift in the market. For example, let’s say you’re in the business of processing and selling avocados. You might pursue a patent for the innovative method of peeling your avocados. However, what if there is a global avocado shortage? If you put all your eggs (or avocados) in one basket, your business might experience turmoil during this shortage. You may want to consider other areas of industry where you can innovate and pursue patent protection, such as an innovative method for peeling mangoes. Diversification of your patent portfolio is a fail safe for the future of your business.
Another method for diversifying your patent portfolio is evaluating whether your invention can be protected by different patent application types. One strategy for developing your patent portfolio is applying for both a utility patent and a design patent for the same invention. The utility patent may cover the functionality of the invention, while the design patent covers the ornamental design of the invention. A patent attorney can help you identify the best types of patent applications to provide diverse coverage for protecting your invention.
Read more about the advantages and disadvantages of pursuing design patents on our Knowledge Base resource.
4. Apply In Multiple Jurisdictions
One step in growing your patent portfolio is considering the impact you plan to have globally for your business. A United States patent is only valid within the United States. If you’d like patent protection in other countries, you will have to apply for patent protection in those countries. This can be an expensive and lengthy process but may be extremely beneficial if you plan on expanding to markets outside of the U.S. Filing internationally can potentially open up additional profitable avenues that a patent attorney can help you navigate to maximize your intellectual property value and protection.
Patent Preservation: How to Maximize the Value of Your Existing Patents
1. Track Due Dates
One aspect of patent ownership that is often overlooked is the maintenance of your patent. You are required to pay maintenance fees three different times during the lifetime of your patent. The periods for paying your maintenance fees are:
– 3 to 3.5 years after the date of issue
– 7 to 7.5 years after the date of issue
– 11 to 11.5 years after the date of issue
The USPTO allows a six-month grace period for maintenance fees after these dates pass. Keeping up to date on your maintenance fees is extremely important because if you miss your payment, you may be subject to hefty fees, and you may lose your patent protection for a period of time. A patent attorney can help you identify and stay within these maintenance deadlines so that your inventions continue to be protected.
Another reason to track your maintenance fee dates is to determine whether paying your maintenance fees makes financial sense for your business. If your patent is not lucrative or your business does not benefit from the patent protection, it may make sense for your business to let your patent lapse.
2. Conduct Regular Audits and Keeping Record
It is important to keep up to date records of the patents in your patent portfolio and to audit these records often. There are software applications designed to help with this, and this may also be done in a simple spreadsheet. It is beneficial for your record of your patent to include:
– Filing/priority dates of your patent
– Expected expiration date
– Maintenance fee dates
– Any licensing agreements
– Any patent searches conducted for the patent
– Inventors
– Foreign application dates and due dates
– A description of subject matter protected
By tracking this information, you will always be aware of important dates related to your patents. You may also use this record to identify new areas of innovation that may be beneficial to your business. Additionally, it may be beneficial to record fiscal information related to each patent such as the cost of obtaining and maintaining the patent and the financial benefit provided to the business. This may help your business to reduce expenditure for patents not generating a profit.
Do You Have a Patent Portfolio in You?
Building and maintaining your patent portfolio may prove to generate value for you and your business. It is important to recognize intellectual property opportunities that may be beneficial or costly to your business. Maximizing the value of your patent starts from the beginning of an idea for an invention all the way to the expiration of your patent, potentially 20 years later.
The patent attorneys at Wilson Dutra understand the value of what you create and will help you protect it for years to come. When it comes to protecting your intellectual property, our team is committed to making the patent filing process as straight-forward as possible. If you are ready to apply for a patent, or are looking to maximize your patent portfolio, or have any questions regarding the laws of patent protection, we encourage you to contact our office today.
