Managing Intellectual Property

How should I decide which patents not to renew?

01 March 2009

Managing Intellectual Property

Given the economic situation, my company is looking to cut costs from our IP department and one option is not to renew some of our patent portfolio. Which factors should I consider in deciding which patents not to renew?

The in-house counsel

The following considerations are mostly applicable to patent owners with a relatively large patent portfolio – that is, from at least hundreds of patent families to a thousand or more. For those with a small portfolio, the patent owner is more likely to be very familiar with the value of each individual patent. Therefore the process of selectively discontinuing the maintenance of patents may be relatively easy. With this, there is less of a risk of making wrong decisions compared to dealing with a large portfolio. Below is a list of factors to consider when looking for savings in your IP operations:

What is the current usage or expected future usage of a patent under consideration? You need to consider if your company is using this patent, or if any other company is using it. Addressing these questions will give you a good baseline when estimating a...



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