Portfolio management

Portfolio management basically means maximising the added value of a patent portfolio within a set budget. Nederlandsch Octrooibureau can help you carefully manage your patent portfolio on your behalf and:

 

  • Determine the added value of your patents
  • Select inventions that qualify for patent protection
  • Determine the follow-up strategy subsequent to the priority year

  • Decide on the countries in which patent protection is desired

Added value

The costs of unmanaged patent portfolios will continue to rise in the course of time. Nevertheless, as time passes, one will be able to clearly make out which patents have a considerable added value. One major aspect of portfolio management therefore consists of regularly ‘pruning’ the portfolio by removing patents and patent applications with limited added value.

 

Selecting inventions

Another aspect of portfolio management consists of selecting inventions that qualify for patent protection. The significance of an early filing date continues to rise and in general the costs of a priority application are limited. Therefore a priority application is often submitted on ‘first file, then think’ basis. In the case of serious screening, this usually involves determining the extent to which an innovation concerns strategic relevant technologies and/or product areas.

 

End of priority year

One year after submitting the priority application, one has to decide on whether submitting a further application (see ‘patent granting procedures’) would be useful. This is an important decision, since publication of the invention may still be prevented by withdrawing the application. In addition, at this stage the applicant will usually have the novelty report at his disposal, and the results of the first feasibility studies may already be known.

 

Patent protection in which countries?

In case of an international PCT application, the countries in which patent protection is desired will have to be selected within 30 months from the priority date. On granting a European patent one should also state the countries in which the patent should be ‘validated’. Depending on the number of selected countries, costs can mount significantly; therefore it is important to by then determine whether patent protection is still useful and if so, in which countries. The first question is usually relatively simple because at this stage both the commercial value and the patentability of the invention can be evaluated quite properly.

 

Careful patent policy

 

The following factors will always matter at the above critical moments:

  • (expected) commercial value of the invention
  • (expected) effective patent protection
  • geographical potential use of the invention
  • costs

Obviously these factors can only be properly considered by bringing together the people who have the relevant technical, commercial and patent expertise at their disposal. By convening a meeting with these people at least once a year to systematically discuss the above issues, a careful patent policy is realised.

 

The advisors of Nederlandsch Octrooibureau will be pleased to assist you with your portfolio management.