Time to Spring Clean Your IP Portfolio

The arrival of spring in San Diego isn’t a big deal. The weather is nearly perfect year round. But in some parts of the country, folks are just beginning to open the windows and clean the house from winter.

What does this have to do with intellectual property?

Get Out the Mop and Buckets

Spring is a good time to clean your IP portfolio. I’m only kidding about the mop. However, you will need three buckets. One for the patents and applications you need, one for the ones you don’t, and a third for the ones you are not sure about.

Compare each patent and application to the current IP plan, as well as the R&D and business plans. Has Marketing changed direction and decided to pursue a different product line? Put the application in the “don’t need” bucket. Perhaps one of your candidates has failed in clinical trials. You may still need the application to cover the backup candidate in the series. Each patent or application must be assigned to one of the three categories. Ultimately you would like to have very few in the “not sure” bucket.

The Cost of Not Cleaning

Pending applications cost money. Responses to office actions must be filed to avoid abandonment. In Europe, for example, fees are incurred yearly while the patent application is pending.

Maintaining issued patens costs money. In the US, maintenance fees are assessed at 3.5, 7.5, and 12.5 years post issuance. The current fees total over $7,500 (half as much for a small entity). In Europe annual maintenance fees rise constantly until the final 20th year. Current EPO fees amount to 19,300 Euros (over $26,000) over the 20-year life of a patent.

Virtually every country assesses their own fees for filing, prosecuting, and maintaining a patent or pending application.

On top of the administrative fees from patent offices, you also incur charges for counsel to respond to office actions in pending applications.

If you take no action, these charges will continue to accrue.

What if you could review your portfolio for free?

When you total the costs of maintaining patents and applications across the whole portfolio, amount will likely be substantial. Even the most modest cleaning of your portfolio will more than cover the cost of the review. It’s almost like getting it for free.

When was the last time you did some spring cleaning? Contact me for assistance or to facilitate a portfolio review.

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