Running a patent portfolio as an asset

The four questions, applied to every case

Does it cover something we sell now, or plan to sell? Would a competitor have to practise it to compete? Could we detect infringement of it? Would we actually spend money enforcing it?

Cases that pass are candidates for further investment: divisionals where the specification discloses more than it claims, additional jurisdictions where the market has grown, continuations of the family. Cases that fail all four are candidates for abandonment or sale.

The review needs a commercial owner per case, not just a legal one. Legal can tell you what a patent covers; only the business can say whether that matters.

The metric problem

Filings per year rewards accumulation. Pruning reduces the count and looks like failure, which is why it does not happen.

A better metric is coverage: for each product line, can we state in one sentence what a competitor would have to avoid? If the answer is nothing, the portfolio is not doing its job regardless of size.

What to actually do

• Review on a fixed cycle with a named commercial owner per case.
• Replace filings-per-year with a coverage metric.
• Reinvest in the cases that pass; release the ones that fail.
• Check for unclaimed disclosed subject matter before any case is granted or dropped.