[Patent Talk] Corporate Patent Maintenance Strategy

This column by patent attorney Taeyoung Lee of our firm was published in Etoday on January 18, 2021. It discusses issues in managing patent maintenance (annuity) fees.

[Patent Talk] Corporate Patent Maintenance Strategy

At the startup stage, companies strive to obtain as many patents as possible, but as they grow into mid-sized companies or larger, patent-related costs start to become a burden. In practice, when a company faces a business crisis, it typically cuts research and development (R&D) costs, and the volume of new patent filings naturally shrinks as well. However, once a company's portfolio of registered patents reaches a certain size, not only new filings but also maintaining existing patents costs a great deal, so a strategic approach to patent maintenance is needed.

The most basic step is to establish a process in which the in-house patent team decides every year whether to maintain or abandon each registration. It is crucial to set criteria for these decisions. The criteria may vary with each company's specific circumstances, but as a rule, patents covering the company's own products should be maintained.

Should patents not used in the company's own products then be abandoned? Not necessarily. Even if a patent is not currently used in the company's or a competitor's products, it should be maintained if it may be used in the future. In other words, maintenance decisions should be based on an assessment of future usefulness. Because this involves qualitative judgment, decisions can be difficult, but in general, patents in future growth fields can be considered highly useful, while patents in declining industries can be considered less useful.

This is how the overall direction for registering and maintaining patents can be set, but more detailed strategies can be considered at a finer level. First, for global companies, in each country ...

(Please click the link below to read the full column.)

LNB IP Law Firm