Identifying (and Pruning) Patent Maintenance Fees That Don’t Benefit Your Business

Companies of all sizes want to make sure that the patents in their portfolio are worth the maintenance fees they spend to maintain ownership. Modeling maintenance fee spend can help you identify ineffective patents that you can offload to ensure proper investment in more important initiatives.

We’ve already discussed the importance of predicting and avoiding high-cost prosecution while applications are still under consideration, and you can take a similar approach once a patent has been issued. Depending on the value of the patent to your business, you can use data to assess maintenance fees and avoid unnecessary costs.

With patent analytics, you can discover applications that may not benefit your organization and decide whether to keep them or drop them based on their alignment with your business priorities.

Metrics to Get Started

There are four main metrics that can help you and your team identify the patents that have not lived up to their full potential:

• Number of forward citations by examiners
• Number of forward citations by other patents
• Number of child applications
• Date of issuance for the patent

How to Use the Metrics

The first three metrics (the number of forward citations by examiner, forward citations by other patents, and child applications) help you zero in on which patents are worthy of review and possible off-loading. If a patent has zero forward citations from examiners or other patents and zero child applications to grow the family, those patents may not actively be protecting a contentious piece of technology. If you were hoping that these patents would serve as a buffer to competition, or even as a means to create licensing opportunities, patents that fall under these parameters are doing neither.

Additionally, you can reference the date of issuance for the patent to determine which ones require a maintenance fee to be paid in the next 365 days. By projecting 3.5 years, 7.5 years, and 11 years out from the date of issuance, you can decide if these individual patents are worth the investment of a maintenance fee, or worth a quick prune from your portfolio to protect your resources for more important work.

How Does Portfolio Size Affect Approach?

Of course, pruning all patents that meet this criteria may not be the best approach for all companies. Companies with smaller portfolios may prefer this stricter rule-based pruning to help them identify which patents are worthy of more focus and time and which patents are weighing on their (typically smaller) budget. 

Companies with large portfolios want to protect as broad a scope of technology as possible in order to stay competitive. If the maintenance fees aren’t an overwhelming detriment to the budget, keeping these less effective patents may still be beneficial in the long run.

By working this research into your portfolio maintenance, you will have a better idea of which patents add value to your portfolio and which are draining your budget. Whether you are a larger company with thousands of patents or a smaller company with a much more contained list, you don’t want maintenance fees to be the reason you have to restrict your research and development initiatives. By keeping a watchful eye on where your money goes, you can balance your budget and continue to compete at the highest level in your industry. 

Of course, this is just one example of the many ways you can use Juristat data to model maintenance fee spend for issued patents. If you are ready to see Juristat Patent Analytics in action, schedule a demo.