Abstract
Keywords:intellectual property, patent, portfolio, management
Intelligent management of an intellectual property portfolio requires regular review and decision making. Decisions will need to be made based upon not only legal issues but also technical and commercial issues. The issues to be considered may be country or region specific. The object is to obtain optimum value from your intellectual property budget, to ensure that your portfolio provides an effective deterrent to your competitors, and to ensure that the appropriate legal rights have been obtained and are in force and in good order ready for use should the need arise.
My paper will give brief background on forms of registered and unregistered intellectual property. I will base my discussion on patents. I will discuss some basic features of patents and how they are obtained, leading into a comparison of different approaches to portfolio management.
The first decision is whether to file a patent application at all. In order to have the opportunity to make this decision, a policy should be in place to ensure that patentable inventions are identified and brought to the attention of the decision maker at an early stage. Regarding the decision itself, one approach, for example, is to file early. In most countries, the first person to file a patent application for an invention is entitled to the patent. Thus if two patent applications are filed by different companies for the same invention, the one that filed first gets the rights. There is therefore a strong incentive to identify patentable inventions early, and file patent applications for them as soon as possible. Counter to that is the need to conserve budget, and hence not to spend money until you have to. A patent application can only result in a valid patent if it is filed before first disclosure of the invention. A different approach would therefore be to plan to file a patent application just before your first disclosure of the invention, and indeed to put off a decision on whether to file a patent application until that time. Many other issues will need to be considered and are discussed
Once a patent application has been filed, the next key stage is at the end of the first year, when patent applications must be filed in all of the desired countries under the priority system laid down by the International (Paris) Convention. Patents last for twenty years. Countries can change a lot in that time. They can develop to become significant markets for your products. They can become a manufacturing base for you, or your competitors. There may be regional issues. In Europe for example, do you need protection in all the countries of the European Union, or would protection in certain key countries be adequate? Is there a key gateway country to a particular market? A variety of issues are discussed.
The portfolio must then be reviewed at intervals to see whether to proceed. There should be rules, but also some flexibility.