Challenges in IP Portfolio Management


Our previous post in this series discussed the value Intellectual Property brings to business and why managing the life cycle of IP systematically and efficiently becomes imperative. However, efficient management of the IP life cycle comes with its share of challenges that need to be addressed continuously and consistently to ensure smooth prosecution life of the IP. Today’s post is aimed at discussing some of the challenges professionals in IP face while managing IP portfolios.


Challenges with respect to timelines

Each IP application has numerous deadlines during its lifecycle. For each application, the process and deadlines vary based on the country where the application is filed. Owing to various international agreements and treaties, the overall process for IP protection and management may seem similar across the globe, however differences exist in procedural laws and rules involved in the process of protection and management. For example, in US, examination fee for a patent application is paid at the time of filing the application whereas in India the examination request has to be filed within 4 years of filing the priority application.

In most countries, deadlines to file the application and forms vary. Thus, understanding different laws and associated timelines and requirements become important.

Further, it becomes challenging to keep track of deadlines even through automated tools as the timeline for each country varies. Most managers may find ease in manually tracking the deadlines however great caution needs to be exercised in this regard. For example, for an Indian patent application,  if the deadline to file a Complete specification pursuant to filing a provisional application falls due on 02.03.2016 and if the deadline is noted as 20.03.2016, the applicant loses the right to file the Complete specification and his provisional application is considered as being withdrawn.


Challenges in coordination

At each stage of IP lifecycle, i.e. from filing to payment of post-grant annuities, the portfolio manager has to interact with clients, attorneys and patent offices. Concerns with respect to receiving timely instructions from clients and prompt responses from foreign attorneys may arise. For example, if the deadline to file a convention patent application falls due on 3.09.2016, some clients may not respond until 2.09.2016. For instructions received 1 day before the deadline, coordinating with foreign attorneys in different countries based on their time and ensuring the application is filed within the deadline becomes challenging.  The working model differs from attorney to attorney, reporting mechanism demanded by different client and our foreign attorney may differ; and reviewing of the as filed documents by the foreign agents becomes cumbersome at times. Further, interacting with different foreign patent offices becomes challenging owing to language and time barriers. The time to process requests made to patent office vary based on countries and may cause procedural delays.


Challenges with respect to translation

Most countries accept applications in English however some countries insist on receiving the documents and all communication in their local languages such as Chile, China, Japan, Mexico, Brazil, Thailand etc. Thus the burden of ensuring good quality of translated documents falls on the portfolio manager. Accuracy of the translation is extremely important and needs attention to detail in order to ensure that scope of the IP is not altered by translation limitations.  Also, countries with requirements to submit translated documents have comparatively different timelines and need to be paid close attention to. For example, a deadline to respond to an office action issued by Chile patent office on 2 Jan 2017 is 2 March 2017. Even though the applicant has 2 months to work on and respond to the office action, in order to ensure accurate and good quality translation, one needs to ensure that the response is provided to the attorney atleast 15 days before the deadline i.e. by 17th Feb 2017. An efficient portfolio manager hence needs to consider these factors while timing the communication with both the client and the attorneys.


Challenges with applications belonging to same patent family

Patent applications can be filed in different countries during convention or national phase. The claim sets may have to be amended keeping in mind the substantial (such as subject matter) and procedural (such as elimination of multiple dependent claims) laws of the country where the application is filed.

For example, we can file a national phase application with multiple dependent claims in China and EPO however in US, we need to file a preliminary amendment to remove multiple dependent claims. Thus, the portfolio is bound to have applications belonging to same family but different claims in different countries. Keeping a track on the scope of claims in each country becomes challenging.

Challenges with respect to docketing:  Any portfolio manager will agree to the statement that docketing is like housekeeping, important but never ending. Importance of well maintained dockets can never be underestimated. If the docketing is not done timely, accurately or is flawed in any other manner, it may cost a patent. Hence, systematic and well defined docketing process is of utmost importance.

One has to overcome these challenges to ensure efficient portfolio management. Attention to detail, knowledge of changes in law and a smooth working process with clients and foreign associates can help one to manage IP portfolio well.

Authored by: Vinita Radhakrishnan & Nisha Kurian, Patent portfolio division at BananaIP Counsels


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