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Auditing Your Patent Portfolio

on Friday, 14 February 2014 in Technology & Intellectual Property Update: Arianna C. Goldstein, Editor

Obtaining a solid patent portfolio can be vital in helping your company protect its valuable intellectual property (IP) assets. However, building the portfolio is not enough. It is also important to periodically monitor your patent portfolio to ensure that maximum effectiveness and value is being provided. This periodic monitoring or auditing of the patent portfolio can help your company recognize shortcomings with the patent portfolio and can help the company to develop new and/or improved protocols for maximizing the effectiveness and value of the patent portfolio. A patent audit may include extensive review of the company’s products, patents and patent applications, as well as those of its competitors. When undergoing a patent audit, you should focus on the following:


  1. How well does the patent portfolio align with company goals? Generally, a key goal for any company is to enhance its market position. In order to achieve this goal, a company would likely want to make sure that the patents in its portfolio protect the products that are the core of its business (e.g., the products that the company makes/sells or will make/sell), in order to prevent other companies from copying those products.
  2. How effective is the patent portfolio in hindering (or blocking) its competitors from entering the market? An effective patent portfolio should protect not only the products that your company makes/sells, but should also cover variations of those products, to prevent competitors from easily designing around the company’s patents. A patent audit can help reveal gaps in a company’s patent portfolio with respect to how well its patents protect its products and/or how effective they are at blocking the company’s competitors. Discovery and awareness of such gaps can promote improved future patenting strategy for allowing a company to protect its products and/or block its competitors.
  3. By promoting a careful evaluation of both the company’s IP and its competitors’ IP, a patent audit can allow for cost-cutting. For example, during the lifetime of a patent, the owner of the patent has to pay maintenance fees on that patent to keep it active. However, during the audit, a company may find patents in its portfolio which neither protect that company’s products (e.g., the company is not using, nor will it use, the technology in the patent), nor block the company’s competitors. In the event such patents are found, you may decide to stop paying maintenance fees on these patents, a measure which will provide savings for the company.
  4. A thorough evaluation of both the company’s IP and your competitors’ IP may uncover potential licensing opportunities that are not currently being taken advantage of by the company. Additionally, a patent audit can reveal the company it may be infringing, or that it may potentially infringe a competitor’s patent with one of its products. Uncovering the potential infringement will allow the company to take a proactive approach – whether it involves designing around the patent or approaching the competitor about obtaining a license.


In conclusion, a patent audit is useful for companies in that it can provide valuable information about a company’s patent portfolio which will allow the company to improve its overall patenting strategy going forward by obtaining maximum effectiveness and value from the portfolio.

Grayson J. Derrick

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