Creating, Managing, And Growing
Intellectual Property Portfolios
INTRODUCTION
In this article we look at growing and managing intellectual property portfolios.
An intellectual property portfolio can contain many elements.
A portfolio can include patents, trademarks, industrial designs, and trade secrets.
That same portfolio can have domestic and foreign applications.
That same portfolio can also contain domestic and foreign grants.
WHAT IS AN INTELLECTUAL PROPERTY PORTFOLIO?
Simply stated, an intellectual property portfolio is a collection.
That collection might include patent applications and patent grants.
That collection might include trademark applications and registrations.
That collection might include industrial design applications and registrations.
That collection might include integrated circuit topographies.
That collection might include trade secrets.
That collection might include know-how.
That collection might even include plant breeder’s rights.
HOW DO YOU KNOW WHAT IS IN YOUR PORTFOLIO?
Intellectual property portfolios are like any investment asset.
Owners must canvas and control their intellectual property.
Canvassing, tracking, and auditing intellectual property results in a portfolio.
There are different ways to track what is in an intellectual property portfolio.
One way includes tracking application and grant / registration numbers.
This type of data is inevitably available through your intellectual property counsel.
Another way includes tracking internal development.
Not all ideas canvassed are ultimately developed commercially.
However, those ideas canvassed contribute to intellectual property portfolios.
Those “failed” ideas teach lessons and growing points.
In a sense, these types of ideas fall within know-how.
Fostering an internal intellectual property culture is important.
A fostered culture encourages all members to track and document intellectual property.
It is difficult work to capture a comprehensive intellectual property portfolio.
However, identification is important and significant.
Intellectual property portfolios are essentially financial investments.
People should know what is in their wallet, so to speak.
DOES THE PORTFOLIO OWN TRADEMARKS?
Trademarks are brands.
Trademarks are words, logos, slogans, and designs, used in association with goods and services.
Trademarks provide commercial and retail value.
Some trademarks might be registered trademarks.
A registered trademark must be applied for.
Any person or entity can pursue registering as many trademarks as they wish.
A trademark can also be non-registered.
Non-registered trademarks are also known as common-law trademarks.
It is not necessary to apply to protect a common-law trademark.
The scope of protection differs between registered and non-registered trademarks.
An intellectual property portfolio that has trademarks therefore has sub-components.
That intellectual property portfolio might own common-law trademarks.
That same portfolio might own trademark applications.
Over the course of time many but not all applications might mature to registration.
At differing times, the portfolio will have differing numbers of applications and registrations.
At differing times, that portfolio might have domestic applications and registrations.
At differing times, that portfolio might have foreign applications and registrations.
Certainly, at differing times an owner will be dealing with different issues.
During application phases, owners will be concerned mostly with office actions.
This means owners will be dealing with formality and substantive issues.
During registration phases, owners will be more concerned with maintenance.
During any trademark lifetime, owners will always be concerned about infringement.
Infringement and enforcement also forms part of an intellectual property portfolio.
DOES THE PORTFOLIO OWN PATENTS?
Patents protect functional solutions to problems.
Patents have a lifespan of up to twenty years, and much can happen over twenty years.
An intellectual property portfolio must account for many different stages.
Where patents apply, the application process is very high maintenance.
Initially a patent application must be drafted.
This aspect alone can deal with controlling disclosures, timelines, and information flow.
Application drafting may last weeks or months, depending on internal development.
This also ignores the pre-application creation phase.
Prior to starting an application there must be internal research and development.
After that there may be patentability searches or screens.
There may also have been freedom-to-operate searches.
There are other issues for applications after they are filed.
Maintenance fees are required by certain jurisdictions to keep patent applications alive.
Maintenance fees are required by certain jurisdictions to keep patent grants alive.
During patent prosecution, changes may be required.
Claims may change, and claims are vital to a patent’s scope of protection.
Multiple applications pending in multiple jurisdictions can cause issues.
Wording-consistency can really be a problem in multiple jurisdictions.
Not all jurisdictions have the same patent laws.
An intellectual property portfolio must track the language in each application.
An intellectual property portfolio must track the language in each application.
An intellectual property portfolio must also track applicable laws for each application.
That intellectual property portfolio usually also track laws in differing jurisdictions.
A patent application in one jurisdiction will not appear the same in another jurisdiction.
A patent grant in one jurisdiction will not appear the same in another jurisdiction.
This happens even if laws between countries are similar.
Laws between differing countries never map on a 1:1 basis.
This means enforcement is different in each jurisdiction.
Even the consideration of what infringement is, may be different in each jurisdiction.
Intellectual property portfolios can balance numerous applications and grants.
IS EVERY INTELLECTUAL PROPERTY PORTFOLIO “LARGE”?
The simple answer is no.
An intellectual property portfolio can be quite small.
That intellectual property portfolio might entail only one trademark and one patent.
Another intellectual property portfolio might entail only two trademarks.
There is no minimum or restriction in building an intellectual property portfolio.
An intellectual property portfolio can start out small and easily grow.
As the portfolio grows, so too do the resources involved.
Where a portfolio has only a few assets, those assets will be managed by an agent.
The agent will be a patent or trademark agent, or lawyer.
That agent will maintain internal records to complement and supplement the owner.
The owner will also maintain some nominal records on their own.
As the portfolio grows, both owner and agent invest more.
Agents manage and track larger numbers of applications and grants.
The agents also facilitate more filings.
Owners manage administration and internal development.
Owners grow the intellectual property captured within the portfolio.
HOW IS AN INTELLECTUAL PROPERTY PORTFOLIO BUILT?
What is required depends on size, assets, and resources.
Smaller intellectual property portfolios require less assets and resources.
Larger intellectual property portfolios require larger assets and resources.
Just as above, again the resources involved grow over time.
Where a portfolio has only a few assets, those assets are managed by an agent.
This means a patent or trademark agent, or lawyer / law firm.
As above, the owners grow the intellectual property captured within the portfolio.
Like running on a basketball, once the process starts it keeps going.
Once started, the process self-feeds to an extent.
WHEN DO YOU START?
Technically the process starts as soon as you identify intellectual property you own.
Identification of intellectual property is ground zero.
Identification is the first piece of an intellectual property portfolio.
From there, a qualified agent can implement the growth process.
Once the portfolio has a starting point, extensions form naturally.
Within time, applications are filed and registrations issue.
The time to start rests purely with an intellectual property owner.
Readers of this article should be aware of the following regarding article links.
Over time any links above above will naturally expire and become non-functional.
Printouts and PDF records are recommended.
Readers can otherwise historically preserve information presented in the above links.
None of the information in any of our articles constitutes legal advice.
Nor do our articles constitute advice as registered patent and trademark agents.
Pnc IP Group bears no responsibility for the accuracy of third party links.
References are as they existed at the time of writing.
This includes legislation, regulations, practice notices and practice manuals quoted.
Pnc IP Group bears no responsibility for updates and changes.
This includes changes to legislation, regulations, practice notices, and practice manuals.
All readers accept these articles as being written accurately at publication time .
All readers accept these articles in the form they were published.
All readers accept the accuracy and correctness of any article vary.
Variables include time, statutory / regulatory amendment, case law, and practice.
All readers are forewarned to obtain independent legal advice.
All readers are forewarned to obtain independent registered patent agent advice.
All readers are forewarned to obtain independent registered trademark agent advice.
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Visit our Services page to learn more about Pnc IP Group’s Patent services.
If you have questions regarding the above, feel free to contact us.
Any patents or trademarks referenced are owned by their respective owners.
Questions regarding this article can be directed to Tapas Pain.
Readers can access Tapas Pain on LinkedIn as well.
Pnc IP Group are licensed lawyers and registered patent and trademark agents.
Pnc IP Group has served the greater York Region, greater Toronto area since 2003.
Pnc IP Group is located in Vaughan, Ontario, and offers in-person visits by appointment.
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