"The Patent Lawyer" on Culling your Patent Portfolio

In an article for the Association of Patent Law Firms' magazine, "The Patent Lawyer" (Issue No. 2, October 2004), Steven Haas and Stacy Brown write that you should start by classifying each asset in the portfolio into one of three broad categories:

? Assets in use (those that are embodied in current products
or processes and those that are held for strategic purposes).
? Assets that will be used (those that the company anticipates
may be embodied in future products or processes and those
needed for future strategic purposes).
? Assets that will not be used (those that the company
currently is not using and has no plans to use).

Next, starting with the top category, develop a business use summary describing each patent and its related commercial applications or anticipated applications. Add any relationships the patent has to other assets of the company or where the patent could be used offensively or defensively against a competitor, while keeping in mind that a patent not being exploited by your company might still present a significant roadblock to a competitor.

Then determine whether aeach of these assets is "productive" by considering whether it pushes corporate strategy, it establishes a marketing advantage, or it generates royalty revenue, with questions such as

? What is the size of the annual marketaffected by the patented invention?
? Is the market strategically important to the company?
? What is the technical field covered by the asset
? How central is the invention to current and anticipated commercial products?
? What is the scope of the broadest claims ? does the patent provide broad protection on a basic technology or narrow protection on a minor improvement?
? Are there gaps or redundancies in the patent portfolio for this technology?
? What are competitors doing, and is the patented technology competitive with alternatives available in the marketplace?
? What would it take for the owner, or a licensee, to
commercialize the invention?
? How easily can unauthorized use of the invention be detected?
? What percentage of companies in the technical field might find the invention useful?
? Will a patent on this invention enhance the company?s prestige?
? Are there potential additional alternative uses of the patented technology?
? How would your company design-around the patent?