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Portfolio management: auditing and maintaining patent rights

Patents are not static rights; they need regular review and maintenance if you are to maximise the value of your IP and retain a patent portfolio that is in line with your commercial aims. Broadly, patent portfolio management takes two forms:

  • the regular payment of patent renewal fees (or annuities) which are necessary in most jurisdictions to maintain granted rights; and,
  • the proactive management of patent portfolios (and the innovation and technology that the patents have been filed to protect), via regular auditing, title updates/recordals and other related services.

This is a basic introduction to patent portfolio management. For further information on the process of obtaining or enforcing patents or to read more about Novagraaf’s services, including patent drafting, prior art searching, and litigation support, click here. To contact one of our attorneys or to review their expertise in your sector, click here.

Portfolio management: why do I need to pay renewal fees?

In most jurisdictions, renewal fees (or annuities) must be paid in order to keep granted patent rights in force, although the exact formalities and timeframes can vary country by country. For example, in some territories, such as the UK, patentees are required to pay an official fee on grant of a patent, followed by a renewal fee every year. For other rights, such as the European Patent (EP) right granted by the EPO, renewal fees are payable annually on pending applications, and then to the various patent offices post-grant. In the US, renewal fees are payable at 3.5, 7.5 and 11.5 years from grant. Missing a renewal deadline can have severe consequences; potentially resulting in the loss of a right.

For this reason, it’s generally advisable for companies with a portfolio of patent rights to employ the services of a specialist third-party to ensure that rights are renewed and maintained. Click here to request additional information on the technology and services that can help companies to manage patent renewals.

Portfolio management: why audit your portfolio?

Without regular audits of an active patent portfolio it can be easy to lose sight of the rights and innovation and technology that it contains. For example, are core patent rights and technology fully protected? Have the rights been correctly maintained (e.g. by registering any changes in address or other title updates?) Are you renewing patent rights for technology that you no longer need or use? Could any of those rights be licensed or sold for profit? A patent portfolio audit analyses the rights in your current portfolio, examining the strength of those rights and their usefulness to your business.

Portfolio management: further information

You can find out more about patent portfolio management and the processes for renewing, auditing and maintaining patent rights by contacting our customer support team, using the contact form at the top right of this page.