Patent management

1. Decide what to file and whereWIPO's guide for small and medium-sized enterprises says that a patentable invention does not necessarily result in a commercially viable product, that a patent may be expensive and difficult to obtain, maintain and enforce, and that whether to file is strictly a business decision. It lists factors such as whether the invention is easy to design around, whether expected profits justify the costs of patenting, and whether the owner is ready to invest in enforcement¹. An article in WIPO Magazine by authors from Quantify IP adds that a smart filing strategy involves assessing the market potential of the technology, the location of manufacturing centers, competitors and their filing strategy, the nature of the invention and the enforceability of patents². Because a patent is a territorial right, the choice of countries is part of the decision¹. See Patent territoriality and Priority date.
2. Prosecute the applicationAfter filing, the application is examined. The USPTO says the applicant can amend the application or argue against the examiner's objections and rejections³. See Patent prosecution and Office action.
3. Keep the patent in forceA granted patent generally lasts for a limited term provided the required maintenance fees are paid on time¹. WIPO says maintenance or renewal fees are generally paid on an annual basis, but the schedule differs by office, as the United States example below shows^1,4. See the next section and Patent maintenance fees.
4. Review the portfolio and let weak patents goWIPO's guide separates the legal life of a patent from its business or economic life. The economic life is over if the technology is outdated, cannot be commercialized or the product has not succeeded, and the patent holder may then decide to stop paying maintenance or renewal fees and let it expire¹. The WIPO Magazine article says right holders need to continuously monitor the value of their patents and abandon one when it loses value, and that this strategic abandonment can save maintenance fees, which generally increase substantially as the patent ages². See Patent valuation.
5. Use the patent: license, sell, enforceWIPO's guide lists four ways to commercialize a patented invention: directly, by selling the patent, by licensing it, or through a joint venture or strategic alliance¹. A license lets someone else use the IP while the owner keeps ownership, in exchange for something of value such as a lump sum or royalties, whereas an assignment transfers ownership⁵. A patent gives the right to exclude others, not a right to use the technology, so patents owned by others may also need to be licensed¹. See Patent licensing, Patent litigation and Freedom to operate.

Fee deadlines recur through a patent's life and differ by jurisdiction. The table shows how the United States and the European Patent Convention handle them. It is not a complete list of deadlines, and it does not give fee amounts, which change. Check the current fee schedule of the office concerned.

Everything in the table is per country or per system. A company with patents in several countries tracks several schedules, because a patent is a territorial right¹.

WIPO's guide says it is important to keep in mind and properly budget the costs related to patent application and maintenance, that these vary considerably between countries, and that if you patent abroad you should consider official filing fees, translation costs and the costs of local patent agents, which are a requirement in many countries for foreign applicants¹.

• The guide notes that after a first filing the applicant normally has 12 months to file for the same invention in other countries and keep the benefit of the first filing date, and that using the Patent Cooperation Treaty can postpone the payment of translation and national fees¹. See PCT application.
• Among its ways to manage global patent costs, the article in WIPO Magazine by authors from Quantify IP lists using the PCT to defer national filing costs, the timing of the request for examination, and strategic abandonment later in the patent's life².
• Who does the work is also a decision. WIPO's guide suggests considering a patent agent or attorney with expertise in the relevant field, particularly for drafting the claims¹. See Patent attorney.