Patent pruning is a process of analysing the patent portfolio of a company or an institution to identify, categorize, and optimize the patents. The analysis & pruning of the patent portfolio helps to identify and categorize the low-quality patents, so that the low-quality patents are discarded to strengthen the overall worth of the patent portfolio.
Patent pruning refers to the process of refining or simplifying a patent application by removing unnecessary or redundant elements while retaining the essential features and claims. This process aims to improve the clarity, focus, and strength of the patent, making it more likely to be granted and enforceable. Patent pruning process facilitates optimization of the patent portfolio of a company, wherein discarding low-quality patents can prevent the wastage of resources used in the maintenance of low-quality patents for a company and ultimately helps save significant amounts of money. The main benefit of the patent pruning process is cost saving, where a company can substantially reduce the patent maintenance cost by categorizing low-quality and high-quality patents. Let’s discuss the process involved in Patent Pruning.
- Patent Pruning process
It is essential to understand the process involved in patent pruning and the importance of patent pruning, to effectively execute the identification and categorization of patents. The patent pruning process involves:
- Patent indexing and categorization: The process of patent pruning starts with the indexing of patents and then categorizing them into core and non-core patents. More structured categorization and indexing of patents may be done by performing an IP Audit. Identifying and categorizing a company’s patents into core and non-core patents involves determining the patents that are related to a company’s core technology and products and the patents that are not so related to the company’s core technology. Further, along with determining the core and non-core patents, sides core and non-core classification, the patents can be shortlisted based on the market performance and future scope of the invention.
- Patent Mapping: Mapping the patents helps to understand the valuable core patents that can promote and protect the company’s business. Mapping the patents related to profitable end products and important sectors helps in analysing the core patents of higher value.
- Patent Grouping: After categorizing the patents, the patents of interest are grouped for further analysis, wherein the grouped patents can be related to core technology having profitable end products. Grouping of similar patents may be achieved by using patent landscape techniques.
- Patent Sorting: The sorting of the patent groups can be achieved based on various parameters, including the life of the patents, family size of the patents, citations per year, forward citations and self-citations of the patent etc. Based on these parameters, the grouped patents are sorted to discard the low-quality patents and optimize a company’s patent portfolio.
The life span of a patent is generally 20 years and in order to complete the life span, the patent has to be renewed by paying the required renewal and maintenance fee. As the term of a patent increases, the maintenance fee also increases. Hence, it is very important to identify the relevant and important patent groups to save unnecessary costs spent on patent renewal on low-quality patents. The analysis of patent life for the patent groups is highly critical as the industrial applicability of the patent for 20 years and its relevance for the complete life span helps to prune the irrelevant patents.
Further, the family size of a patent is important as it identifies the patent families comprising a large number of patent members, and it is to be noted that patents with a large number of patent members involve larger filing and maintenance fees. Another important parameter is the citations per year, wherein analysing the patent citations per year helps determine the patents with more citations per year, indicating that the patent has higher market potential. Such patents are important for a company as the increasing market potential indicates that such patents can prevent competitors from entering the market.
The next important parameter is the forward citations and self-citations of a patent, wherein the forward citations help determine the importance of a patent as the patent is cited by the competitors of the same domain. When a patent has a significant number of forward citations, the patent possesses great potential. And similarly, the patents with a very low number of forward citations are low-quality patents, and can be discarded, abandoned, sold or licensed. The self-citation of a patent is done when a patent cited by a company is of higher value. The number of self-citations of a patent determines if the technology protected by a patent is important for a company.
The sorting of the patent groups enables the companies to categorize the irrelevant patents clearly, and the irrelevant patents should be pruned to optimize the patent portfolio.
After completing the patent pruning process, the companies must effectively maintain their patent portfolio by conducting the pruning more often, leading to the selection of high-quality patents, and the selected high-quality patents are maintained, and low-quality patents are discarded.
- Patent pruning frequency
Knowing how frequently a company must run the patent pruning process is important. Companies can select their patent pruning frequency based on the number of patents they filed and their profits. Generally, big companies conduct the patent pruning process monthly. The pruning process can be conducted monthly, quarterly or yearly.
Pruning a patent portfolio is often necessary for several reasons:
- Cost Reduction: Maintaining a large patent portfolio can be costly in terms of maintenance fees and administrative overhead. Pruning allows companies to reduce these expenses.
- Focus on Core Technologies: Companies may choose to focus their patent efforts on technologies that are most relevant to their business strategy and goals. Pruning helps to streamline the portfolio in alignment with these priorities.
- Avoiding Infringement Risks: Some patents may carry risks of infringement claims against the company. By pruning patents that pose such risks, companies can reduce their legal exposure.
- Enhancing Portfolio Value: A leaner, more focused patent portfolio can be more attractive to potential buyers or licensees, potentially increasing its overall value.
- Adaptation to Market Changes: Technologies and markets evolve over time. Pruning allows companies to adapt their patent portfolios to reflect these changes and stay competitive.
Conclusion
The patent pruning process is critical in maintaining a company’s patent portfolio. Pruning the low-quality patents enables the companies to identify, categorize and optimize their patents, thus increasing the overall value of their patent portfolios and reducing the cost involved in the maintenance of the irrelevant patents.
Author: Megha S Nadiger, Origiin IP Solutions LLP
Please contact us at info@origiin.com to know more about our services (Patent, Trademark, Copyright, Contract, IP Licensing, M&A of companies)
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