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Real-life scenario · fictionalised
The portfolio nobody pruned
An engineering company has been filing steadily for twelve years. It holds 61 Indian patents and applications and about 90 foreign family members. The annual renewal and prosecution spend has become the second largest line in the legal budget. Nobody has assessed the portfolio as a whole since 2019, and the internal metric reported to the board is the number of filings per year.
What is likely to be true about those 61 cases?
The usual distribution
In portfolios of this kind, a small minority cover products currently sold; a smaller group blocks a competitor or supports a licensing conversation; and a substantial remainder are legacy filings kept alive because nobody has been asked to decide otherwise.
Renewal fees escalate with age, so the oldest and least relevant cases are often the most expensive to keep.
What a pruning review looks like
For each case, four questions. 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 ever spend money enforcing it?
Cases that fail all four are candidates for abandonment, or for offer to a third party. Cases that pass are candidates for further investment - divisionals where the specification discloses more than it claims, and additional jurisdictions where the market has grown.
The metric reported to the board is part of the problem. Counting filings rewards accumulation; pruning reduces the count and looks like failure.
What should have happened
- Run a portfolio review on a fixed cycle, with named commercial owners for each case.
- Replaced the filings-per-year metric with one about competitive coverage.
- Checked, before abandoning anything, whether the specification disclosed unclaimed subject matter worth a divisional.
- Made renewal decisions case by case rather than by default.
A portfolio is not a collection. It is a set of decisions that need revisiting.
This scenario is a composite teaching example written by Ragulika IP. It does not describe any real client, application or matter, and any resemblance to a specific case is coincidental.
Sources & further reading
- The Patents Act, 1970 (consolidated to 1 August 2024) — Official IP India text
Related
Pruning a portfolio without losing anything you need
Case by case, against stated criteria, with three checks before anything is dropped - and with the decision and its reason written down.
Patent portfolio
The set of patents and applications an organisation holds, managed as an asset with a strategy about what to file, where to file, what to keep and what to let go.
A higher patent count means a stronger IP position.
Count is the least informative number about a portfolio. What matters is what a competitor cannot do without a licence.
Filing before anyone asked whether it was worth it
Patentability and value are different questions, and organisations that only ask the first one accumulate portfolios that cost money every year and defend nothing.
Not sure whether this applies to your invention?
The honest answer usually needs someone to look at your actual disclosure, your timeline and the prior art. That is a conversation, not an article.
Educational guidance, not legal advice. This material is published by Ragulika IP for general education and information. It is not legal advice, it does not create a professional-client relationship, and it is not a substitute for advice on your own facts. Patentability, infringement, prosecution strategy and every other IP outcome turn on the specific facts and on the law and Patent Office practice as they stand at the time you act. Please take professional advice before making a decision, and read the underlying provision or judgment before relying on any point stated here.
Last reviewed by Ragulika IP on 2026-08-23. Indian patent law and Patent Office practice change; check the position before you rely on it.