Patent Pruning: IP Portfolio Management

Patent Pruning: IP Portfolio Management


IP valuation best practicesThe value of a business includes both its ability to perform and the combined value of the assets it holds. Distinguishing profit-driving assets from cost-drivers and working to balance the scale increases the overall value of the business. Thorough IP valuation and IP management practices continuously align intellectual property portfolios with business objectives.

Intellectual property (“IP”) is a significant set of assets including patents, trademarks, copyrights, and trade secrets, among others. For many businesses, applying for and maintaining patents are some of the largest IP-related costs. In evaluating a patent portfolio, each of the individual patents must be independently evaluated for relevance to the current core offerings of the business and overall strength. Bloated IP portfolios can be costly to maintain. The maintenance and attorney fees associated with sustaining the rights to unused or under-utilized technologies is a constant reality and the result can be a decrease in the amount of resources available for new patent acquisition or research and development of new technologies.

A comprehensive IP valuation can help the business to make informed decisions regarding which IP assets to shed and which technology areas to strengthen. For instance, perhaps there are patents in the portfolio that, while not necessarily applicable to the current business objectives, may be of value to other businesses. A decision to sell IP that falls into this category may help offset the costs associated with maintaining an IP portfolio and can help establish a leaner, more focused IP model for your company.

Pruning is the practice of trimming a plant’s diseased and damaged branches or buds in order to promote the growth of the healthy leaves and flowers. Analyzing your IP portfolio to determine key value drivers and identify those items that may fall outside the goals of the business increases the potential value of the business and can free resources.

Pruning can be a dangerous task—no one wants to excise the wrong asset. Often it takes multi-industry experts to see the potential value of a patent in a completely different area than the current business. Expert consultation is highly recommended before abandoning patents or letting any or IP expire. However, like horticulture, IP valuation processes performed by skilled experts can help identify and eliminate inefficiency that will hopefully generate solid new business growth.

Practices that identify and prune under-utilized and unused patents from your IP portfolio are but a small piece of IP management. Working with industry and technological experts is incredibly valuable in creating and maintaining a plan for your IP. Understanding the value of the individual components that comprise the whole can aid in determining which items should be maintained and which should be under consideration to be cut.

Ready to learn more about IP valuation and how to apply solid IP management practices to your portfolio? Contact the patent portfolio experts at TechPats today.


The Art of the Claim Chart

The Art of the Claim Chart


Protecting your company’s intellectual property is a vital business practice. IP protection ensures that the unique elements of your products and processes are protected and solidifies your standing in the industry. When it comes to patentable technology, patent claims are your first line of defense as they put the world on notice to the subject area and boundaries of your invention. When a competitor crosses those lines, crying “foul” isn’t going to stop him from making or using your patented invention—you have to prove it!

In the patent world, claims charts are used to illustrate how a real-world product or service is allegedly infringing your patent claim . Infringement must be proven by showing that the product or service (the “use”) infringes each and every element of the asserted claims. It is a detailed process that results in a simplified, aesthetically pleasing, textual and graphical comparison of the claims and the potentially infringing use. Because claim charts navigate the features of the product or service using claim terms, the explained potential infringement is often referred to as a “mapping.”

The depth of a claim chart can be dependent upon how it will be used. For instance, general claim charts, or other charts demonstrating “Evidence of Use,” may provide an overview of a patent’s claims and how a family of products or materials may be covered by those claims. Highly sophisticated claims charts will have more details from a thorough investigation of the products and services, and often point to support from the patent’s written specification to bolster an interpretation of a claim term. Generalized claim charts are typically used as internal tools to communicate about existing products and IP, and are typically used as stepping stones for licensing strategies. The more highly sophisticated claim charts are a necessary step for demonstrating actual infringement of each claim element and examining possible interpretations of the claim in preparation for patent litigation.

Claim Charts in Court

Highly sophisticated claim charts are a necessity when preparing to go to court. The claim charts will be the basis for the majority of petitions, briefs, and reports presented to the court. They are a vital tool in quickly and simply demonstrating the claims of the patent in relation to the product, service or other use in question. During trials, certain technologies and uses may require a more delicate approach as presenting the most-detailed claim charts may be overwhelming to anyone without an advanced degree. Claim charts must be tailored to the situation.

Whether asserting your patent rights against an alleged infringer or defending a product against a company’s patent infringement claim, well-planned, highly-developed claim charts set the tone of the trial and convey a depth of understanding and support that cannot be accomplished with other tools.

Knowledge is Power

In addition to the complex technology in the subject matter of some patents, patent laws can be complicated—and so can patent claims. It is unwise to expect that each person in the courtroom has the ability to evaluate claim language at a level that is necessary to quickly compare the claim to the product and make a determination of infringement. Claim charts lay out the claim elements, as well as the corresponding, allegedly infringing features of the use, in a way that the infringement (or non-infringement) is plain to the viewer. Claim charts are the accepted way of communicating complex process and analysis findings without burying the courtroom in high-tech jargon or legalese.

Perhaps the most powerful use of claim charts during trial is when they are explained by your expert witness. A well-qualified expert who can compare and explain each element of the claim and how the product- or service-in-question infringes is often the focal point of a patent infringement trial. Through declarations, expert reports, rebuttal reports, depositions, testimony and other presentations, the expert witness has the opportunity to walk a judge and jury through the alleged infringement with ease via the claim charts.

Burden of Proof

The hard truth is that it can be extremely difficult for the accusing company to win a case of patent infringement. Public policy is generally in favor of allowing businesses to grow and promoting a free marketplace where individuals are permitted to develop products and services without the fear of a meritless patent infringement claim.

To that end, the burden of proof lies with the accuser. If your patent is being infringed, it is advantageous to develop a detailed and comprehensive claim chart that clearly demonstrates the relationship between the patent claims and the suspect product or service. The clear and logical presentation of this information may mean the difference between winning and losing.

Many patent professionals, experts, and attorneys assert their proficiency at developing the most sophisticated claim charts. As claim charts are typically the basis of any patent infringement case, the key is to find an experienced team with industry knowledge and expert insight to help develop a rock solid case for you and your company’s needs.

Ready to learn more about claim charts and how to develop a winning patent infringement case? Contact the patent portfolio experts at TechPats today.


IP Management: 5.5 Critical Reasons You Need An IP Consulting Firm

IP Management: 5.5 Critical Reasons You Need An IP Consulting Firm

Intellectual property means much more than just innovative inventions and patents. To realize and enable different income streams, your IP portfolio must be properly managed to safeguard proprietary technologies and help maintain a competitive advantage in the marketplace, while also attracting interest and investments.

An IP consulting firm is an important ally when building or strengthening your patent monetization efforts.

Partnering with an IP consulting firm go hand-in-hand with a robust IP strategy that aims to identify, evaluate, capture, protect and attain valuable IP assets. Here’s why:

1. You Find Engineers And Analysts With Years Of Experience

A good IP consulting firm has engineers and analysts with years, if not decades, of industry experience. They know how to take a 30,000-foot view of your patents and their related technology, but are also able to get up close and identify key patents that form the basis for a solid patent monetization strategy.

2. You Secure The Absolute Best Blueprint For Patent Monetization

As a leader of your corporation, you do not necessarily have the dedicated resources it takes to develop a comprehensive roadmap for successful IP management.  When you partner with an IP consulting firm, they are focused fully on realizing the potential of your IP portfolio, leaving no stone unturned. With an underlying awareness for integrated, exhaustive patent mining, the right IP consulting firm gives you the absolute best blueprint for patent monetization.

3. You Easily Adapt To Industry Trends For Strategic IP Management

Industry, technology and applications are ever changing, and it is often difficult for company leaders to stay ahead of the curve where the future of their patents are concerned. To truly get the most from your IP portfolio, it requires strategic IP management that is best attained with an experienced IP consulting firm that’s able to predict future industry trends. This high level of strategic patenting is going to give your company an edge over competitors.

4. You Gain Reverse Engineering Services And Teardown Capabilities

When your company faces competitor threats to your intellectual property, you need patent litigation support. The right IP consulting firm has reverse engineering services with experts in technology teardown tactics. The evidence these experts uncover is commonly a deciding factor in court.

5. You Receive Patent Litigation Support For Legal Proceedings

Whether you are protecting your IP against infringers or defending your products against the infringement claims of competitors, an IP consulting firm provides highly experienced patent litigation support services to work with either in-house or outside counsel. The firm acts as a silent partner for legal counsel. With attorneys on staff, the firm understands the position that you may be stuck in and tailors the work product for use by those acting in a legal capacity.

5.5. You Get Efficiency And Value

Effective IP management requires a quick, proactive team to get through a portfolio, comply with a docket or find EoU. When you partner with an IP consulting firm, they provide all the IP services you need, as they have the team already built and ready to go to work. This level of efficiency and expertise equals value by saving your time and money both in the short- and long-term.

While providing your business with a proactive approach to IP management, an IP consulting firm also assists in mitigating significant risks resulting from poorly considered or reactive approaches to patent monetization.

Ready to partner with the right IP consulting firm and receive long-term, successful IP management for your corporation? Contact the patent experts at TechPats today.