In a company’s intellectual property portfolio, there can be a wide range of patents, copyrights and trademarks. However, most of these IP assets do not match the business plan and market demands, costing the owner thousands of dollars in the form of maintenance fee, attorney fees, etc. In addition, the most promising assets in the portfolio go unnoticed. Patent pruning is a special technique to identify and monetize assets that are a perfect match with current and projected business objectives and future market trends, and abandon nonperforming assets.
Why prune patents?
Patent pruning can help companies manage their IP portfolio efficiently and stay competitive in their respective markets. Some of its main benefits are listed below:
- Costs reduction: Why pay for patents, which are not even going to cover the investment costs? Instead, the money can be used to protect and monetize IP assets, which have high tradability. Patent pruning helps identify and abandon nonperforming portfolio assets, thereby minimizing IP maintenance costs.
- Prosecution strategy: During the prosecution phase, claims must be edited taking into account not only IP office guidelines, but also future market prospects and the company’s product line. Patent pruning (adjustment) helps make strategic modifications to claims so they align properly with business objectives and market trends.
- Monetization strategies for the most promising assets: In an IP portfolio, the percentage of assets that align perfectly with the business plan and future market trends is very low. But, they can help earn a significant amount of money if they are monetized effectively. Patent monetization strategies are exclusive, non-exclusive, and claim-based licences, etc.
Today, most companies are spending millions of dollars as a maintenance fee for their IP portfolios. They don’t even try to know if the assets they are paying for are worth their business or not. With the help of patent pruning, entrepreneurs, intellectual property lawyers and decision makers can identify the most promising assets in portfolios and turn them into profitable initiatives.
Patent pruning is not as easy as it seems, and companies need to be very careful when adding IP assets to the dropout list. It is recommended that you consult with all departments, including legal, commercial, marketing, and R&D, and identify technologies to be phased out. Also, consulting IP professionals can help you choose the patents to focus on the most, which makes a big difference.
