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The Patent Renewals Challenge: Balancing Risk and Cost

BY Paul DiGiammarino
March 31, 2009

As economic recession forces companies to cut costs and grow revenue, there is an opportunity to reduce IP overhead without impacting risk. By intelligently abandoning non-essential patents and trademarks and increasing revenue from IP sales, businesses can strengthen their balance sheets and increase competitiveness. The complex process of pruning a patent portfolio and determining what to renew and what to abandon is equal parts art and science. However, successful players in the IP space have learned that their IAM decisions can be made more precise and better grounded in business objectives. Many companies are successfully incorporating systems to help organize their patent portfolios and manage the risks inherent in them.

Economic recessions force businesses to cut costs and identify new and efficient sources of revenue. Yet many companies will pass up millions of dollars of low-hanging fruit annually in the form of reduced patent annuities and increased revenue from sales of unused patents. Reinforcing this, the USPTO 2008 Annual Report states that “the renewal rates for (patent) maintenance fees have been
increasing modestly over the last four years and the trend indicates that this growth pattern will continue.”

It is generally believed that a business can shed 15-20% of its IP through a systematic portfolio review based on contribution to company P&L, strategy, and objectives. This is not surprising, given that as few as 5% of patents contribute to company revenue (Table 1). Despite this, almost 75% of patents are renewed in their first 11 years, as shown in Table 2.

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