In general, it is advisable to review your IP portfolio to make sure certain items are in order and to assess any holes in your protection. Such a review is valuable in maintaining the strength, security and enforceability of your IP. This article includes some pointers in maintaining your IP portfolio, but is not meant to be an exhaustive list.
IP licensing portfolio
If you have a licensing portfolio, that is, licenses with other parties which allow you to use their IP or vice versa, it's a good idea to periodically review the licenses to make sure everything is in order. First, we recommend identifying all of your licenses and making sure you have a copy of each, and that the licenses and related paperwork are organized in a safe place. Then we recommend reviewing all of the licenses to make sure your copies are complete and executed. If there are any missing copies, appendices, etc., make sure to obtain those copies.
Next, review the licenses and confer with the necessary people to make sure the licenses are being followed. For example, if applicable to your situation, some of the provisions you should check include: milestones, royalty payments, completion and recordation of necessary paperwork (such as patent assignments), and the like. You should also take the opportunity to check the expiration date of the license, determine whether you need to physically renew the license or whether it is evergreen.
Finally, review all outstanding draft licenses. Figure out what needs to be done and by whom. If an agreement is ready for execution, make sure to get that done right away. If you are awaiting a draft from another party, follow up. If you are responsible for getting a draft done, do it now!
Trademark portfolio
Portfolios of pending and registered trademarks should be reviewed on a regular basis to ensure pendency and/or registration is maintained. First, we recommend you review your docket and identify upcoming deadlines with respect to outstanding office actions in both the U.S. and foreign countries. We also recommend reviewing your docket to identify renewals and foreign filing deadlines that are coming due within the next year. Renewals should be discussed with the appropriate people within your organization to determine whether the registrations will be maintained. Determining renewal dates and foreign filing deadlines will also give you a sense of what kind of budget will be needed to tend to such matters.
Next, we recommend reviewing the portfolio to determine whether assignment data is correct. If assignment data has changed, it should be reflected in the file and with the relevant trademark offices in which the mark is pending or registered.
Lastly, we recommend you review your organization's portfolio to determine whether all marks are correctly labeled as a registered mark (®) or a common law mark (™). Any revisions should be made and the appropriate people should be notified of any changes.
Patent Portfolio
With respect to patent portfolios, we recommend similar action items as discussed with respect to trademark portfolios. First, we recommend reviewing your docket for any outstanding office actions and identify any upcoming foreign filing deadlines. Decisions with respect to responding to office actions and filing in foreign countries should be discussed with the necessary people within your organization. Decisions regarding responding to office actions and foreign filing will help plan the patent budget of your organization. Similarly, we recommend a review of upcoming maintenance fees to make decisions on whether patents should be maintained.
Decisions regarding abandonment of applications or non-payment of maintenance fees should be cross-checked against any licenses related to such applications and/or patents to confirm there is no obligation to prosecute or maintain such assets.
We also recommend reviewing assignment information recorded with the respective patent offices and updating such information as necessary.
Conclusion
The above-mentioned suggestions are meant as a starting point in a regular review of an IP portfolio. There are additional factors that should be considered and reviewed, including citation of prior art in pending patent applications, follow-up with decision makers regarding filing trademark and patent applications, and reviewing employment contracts to make sure confidentiality and IP assignment clauses are included therein. Additionally, we recommend that review of your IP portfolio be conducted throughout the year at regular intervals to make sure all assets are in order and proper protection is being obtained.
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