Ten Tips for In-House Counsel for a Better Patent Portfolio

April 13, 2021 Publications

Budgets are tight and competition is fierce. In today’s market, patent portfolios must be optimized to meet the demands of business by reducing unnecessary cost, as well as be aligned with competitive pressures. Given my background as in-house counsel, I’ve outlined 10 practical tips to improve return on investment (ROI) and future-proof your patent portfolio.

1. Engage the Business – Is your patent portfolio unfocused? It probably didn’t start out that way, but over time a number of organizational changes can impact the value of a patent portfolio. Initially, all of the patents and applications were probably focused on your company’s best or most important products. But, as time goes on and in-house counsel gets busier and pulled in more directions, the time spent on focusing the portfolio can get lost.

To better align the patent portfolio with business needs, it is critical to ensure that in-house patent counsel is engaged with not only R&D, but also the sales and marketing teams, who are the eyes and ears of the marketplace. Sales and marketing are vital to understanding the competition as well as what the consumers want. In-house counsel, combining information from R&D with the marketplace insights from sales and marketing, can ensure the patent applications and overall portfolio are aligned with the needs of the business and will cover the competition entering the marketplace.

2. Keep ‘Em Pending – For patent applications in important or developing technologies, keep an application pending by maintaining a continuation filing. In many instances, patent counsel may not know the ultimate importance of a patent application until years down the road when litigation becomes more likely. By keeping an application pending, patent counsel can adapt the claims to the competition, creating a portfolio that will be difficult to defend against. Pending applications also allow patent counsel to adapt to changes in the marketplace and focus the claims on the competition, should the competition attempt to work around any granted claims.

3. Cut the Fat (Annually)– Do you really need to pay those patent maintenance fees in every country you filed in? Maybe you didn’t even know you were paying maintenance fees in a number of countries. An important activity is to conduct a review with the business, together with patent counsel, to get a sense for where the value lies in the portfolio and where it falls flat. Cut the fat by abandoning patents in countries where you are unlikely to enforce, or where competition is unlikely to make, use or sell your patented invention, and reinvest in IP that will hold more future value. Remember, the marketplace is not static, so taking a look through your portfolio every year can ensure that it maintains alignment with the movement of the marketplace.

4. Invention Harvesting – All too often patent departments are in a reactive mode, reacting only to invention disclosures submitted to the patent counsel. However, it is easy to leave important IP on the table when patent counsel isn’t actively recruiting inventions. Don’t leave IP on the table. Make sure the patent counsel is sitting at the table with the business on a regular basis and extracting all of the valuable IP. One of the best times to begin the harvesting process is during the yearly or quarterly business reviews, when budgets are being set as to which technologies to pursue. Having patent counsel available and soliciting information from inventors at this time will ensure the important inventions are recorded and patent applications are filed.

5. Patenting Outside the Box – When reviewing invention disclosures for possible patenting, it is important to think broadly, and outside of the box. Even if the IP isn’t immediately valuable for your business, think broadly and strategically about what other technology areas might capitalize on your IP. Remember, you don’t have to be the developer, manufacturer and distributor for all of your IP. There may be opportunities to sell or license the patent outside of your current business space to generate additional ROI.

6. Roadblocks, Hurdles and Flytraps – In many instances, having a single patent that covers a technology may only present a hurdle for your competition to design around. When developing the patent portfolio for important technologies, make sure your IP comprises a wide swath of your technology area to ensure that competitors do not have an easy way to sidestep your IP. This may entail filing multiple applications to cover the many different angles the technology can be viewed from, or at a minimum, strategic drafting of multiple claim sets to cover the technology. In the best case, your portfolio will be difficult or impossible to design around because patent counsel’s strategy in claiming the invention was broad enough to create wide roadblocks. If the technology is particularly appealing, and the patent portfolio is robust, the patents can act as flytraps that create an irresistible urge for your competition to use the technology and ensnare the competition in infringement.

Make sure your patent applications are filed in the countries that make sense. When the desired extent of global protection isn’t well-known up front, consider Patent Cooperation Treaty (PCT) applications to delay the decision and provide the option for broader global coverage in the future.

7. Brainstorming – Brainstorming is a tried and true method to develop great ideas that can lead to patentable inventions. Taking the time for an attorney-led, or co-led, brainstorming session can pay dividends. However, it is important that brainstorming sessions be well planned and include the right people and sufficient time (many times 8-16 hours) to work through the ideas. Having patent counsel present, or even leading, during the brainstorming sessions can pay dividends since the patent attorney can help to flesh out what may or may not constitute patentable aspects of the technologies.

8. Garbage In, Garbage Out – Patent applications are only valuable if they are well drafted. Make sure a qualified attorney assists with drafting your patents, including provisionals. If the invention is worth patenting, it is worth investing in a good application. A poor provisional may be more damaging than no provisional at all, as it may give a false sense of protection. Invest up front, because just as a building is only as strong as its foundation, the same is true for patents.

9. Don’t Let your Patents Collect Dust – Patents make beautiful wall art, it’s true. However, patents are an investment, and investments must be monitored, adapted and used when needed. All too often companies invest in securing patents, but do not take the time to inventory them or review them on a regular basis to ensure the competition isn’t infringing. Accordingly, it is important to have patent counsel monitor the portfolio and review it with the business on a regular cadence to ensure your patents are not forgotten and your competition is not making unauthorized use of your patented technology.

10. Don’t give up too easily – Don’t allow a great application to become a weak or worthless patent by floundering in prosecution. Knowledgeable patent attorneys will use arguments, amendments, interviews and appeals strategically to meet the goals of the patent applicant. Strategically accepting allowable subject matter and filing broader continuation applications can create a strategically strong portfolio that will create headaches for your competition. By thinking strategically during prosecution, and creating a portfolio of both broad and narrow claims for your technology, your company can create an impenetrable barrier for competition and confidence for investors.

By following these simple tips, you can reduce wasteful spend and dramatically increase the value of your patent portfolio. Channeling spend away from wasteful activities and forgotten patents, and back into patents for innovations aligned for your company’s future, will increase profitability and provide a competitive advantage.


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