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End of the year portfolio cleanup December 28, 2010

Posted by Brian Schar in Patent prosecution, USPTO.

In-house patent counsel are in the best position to perform portfolio management, and whether that’s in your job description or not, it’s something that should always be in the back of your head.  In this short week at the end of the year, when the engineers are on vacation and you’re cleaning up your desk, one great year-end task is taking a hard look at your patent portfolio.  The “management” part of “portfolio management” implies that you shouldn’t simply pay maintenance fees and continue prosecution of pending applications blindly.  Rather, if you’re going to spend time and money on IP, it ought to be IP that has some use.

The USPTO has extended the backlog reduction plan by which an applicant can “trade in” an old pending application in exchange to make a different application special.  I have done this for several applications already, and plan to scour my portfolio again to see if I can take further advantage of it.  This is a perfect program for exchanging old lower-value applications for quick prosecution of newer, more-critical applications.  Old continuations and divisionals with claims that aren’t significantly different from other patents in their families are good ones to consider for trade-in.

Whether you participate in this backlog reduction plan or not, it’s a good New Years’ resolution to resolve to actively manage the portfolio for which you are responsible.


1. patent litigation - January 4, 2011

USPTO Director David Kappos’s patent “trade-in” program could certainly help not only applicants but the patent law office itself, if enough prospective patentees opt to drop patent prosecution during the pendency period. This initiative, along with David Kappos’s other programs like the “green” patent fast-track, missing parts, and 3-track plan, can conceivably help to whittle down the patent office’s burdensome backlog.

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