Patent Portfolio Building


Organisations with a commitment to research and development will employ professional Design Engineers engaged to solve technical problems. This will result in the creation of patentable subject matter. Over time, many patent applications may be filed; some will be maintained for a period, but eventually all will expire. The portfolio of patents, therefore, comprises those currently in force. The portfolio has two dimensions:

  • WHAT HAS BEEN PROTECTED, and
  • WHERE HAS IT BEEN PROTECTED

For a given investment, a portfolio may be narrow and deep (few inventions protected in many countries) or wide and thin (many inventions protected in few countries).

Inventions may be graded. Some may be protected in many countries, while others are protected in fewer or even only allowed to publish for defensive purposes. Let us consider an example:

Grade 1:    UK, Europe, US, Canada, Australia, China, Japan, Korea.

Grade 2:    UK, Europe, US, Canada, Australia.

Grade 3:    UK, US.

Grade 4:    UK.

Grade 5:    UK but allow to lapse after publication.

Grade 6:    Withdraw to prevent publication.

This grading system facilitates Portfolio Management and improves the efficiency of portfolio review meetings. Exceptions may be made – to file in Brazil, for example, for a particular invention. However, once graded, it becomes easier to make decisions during the prosecution process. Furthermore, Portfolio Management is an active process of periodically re-evaluating these gradings, which usually get pushed downwards as products fail or new pertinent prior art comes to light.

The example is UK-centric and would look different if starting in a different country. It will also look different for different industries and for individual industries (take automotive for example) the grading structures will change over time.

Not only outcomes but strategies may vary for each grade. Thus, for Grade 1 and Grade 2, a first application may be filed at the EPO but for Grades 3 to 6 a first application may be filed nationally in the UK. For Grade 1, an international application under the PCT may be filed within the twelve-month convention term, whereas national applications may be preferred for Grade 2 because they do not require translations.

We would encourage the preparation of an IP policy document setting out criteria for grading and the procedures followed for each grade. This reassures investors that the IP spend is being optimised towards building shareholder value.