Patent Portfolio Management: A Practical Guide by Simone Frattasi and Jean-Claude Alexandre Ho is a comprehensive resource designed to provide patent professionals and legal practitioners with practical strategies and tools for managing patent portfolios effectively. Part of the Elgar Practical Guides series, the book is structured to offer step-by-step guidance, supported by substantive law and procedural rules, making it an invaluable reference for both seasoned professionals and newcomers to the field of intellectual property (IP) management.

Content Overview

  • Introduction to Patent Portfolio Management

The book opens with a clear and concise introduction to the concept of patent portfolio management, using visual metaphors to illustrate the difference between haphazard and structured management. This sets the stage for the detailed strategies and methodologies that follow, emphasizing the importance of a well-organized patent portfolio in maximizing business value and minimizing risks.

  • Strategizing Patent Portfolio Management

The second chapter delves into the strategic alignment of patent portfolios with broader R&D and business strategies. The authors provide a comprehensive roadmap for creating a patent portfolio strategy, including the use of IP SWOT analysis to define patent strategy positions. This section is enriched with case studies and practical conclusions, offering readers concrete examples of how to implement these strategies in real-world scenarios.

  • Budgeting Patent Portfolio Management

Budgeting is a critical aspect of managing a patent portfolio, and the authors cover this topic in depth. They discuss the responsibilities and decision-making authority related to budget management, providing practical advice on managing legal expenses, in-house consultants, and external service providers. The inclusion of detailed budget examples and cost-saving measures makes this section particularly useful for financial planning within IP departments.

  • Organizing Patent Portfolio Management

The book introduces a tech-based organization approach, which involves creating a comprehensive taxonomy of technical areas and assigning patent engineers and attorneys accordingly. This structured approach offers several advantages, including improved transparency, efficient workload distribution, and enhanced strategic alignment. The authors provide visual aids and examples to illustrate the implementation of this organizational structure effectively.

  • Working with Agents

A significant portion of the book is dedicated to the relationship between patent departments and external agents. The authors explore various outsourcing architectures, such as direct contact with local agents, primary-secondary agents, and cluster-based outsourcing. They provide criteria for selecting agents, negotiating fees, and strengthening collaboration. Practical advice on invoicing instructions and framework agreements is also included, ensuring clarity and transparency in agent relationships.

  • Patent Filing Strategies

The authors offer detailed strategies for both first filings and subsequent filings, considering factors such as invention types, legal requirements, and subjective factors. They provide a data-driven methodology for filing strategies, including country ranking and ranking-based tiers. The discussion on the Unitary Patent (UP) and opt-out options is timely and relevant, given the recent developments in the Unified Patent Court (UPC).

  • Ensuring Quality of the Patent Portfolio

Quality assurance is a recurring theme throughout the book. The authors emphasize the importance of standard operating procedures (SOPs), patent quality guidelines (PQGs), and internal instructions for maintaining high standards in patent drafting and prosecution. They introduce the Agents’ Performance Tracking Tool (APTT) for monitoring agent performance and provide practical advice on ranking and incentivizing agents.

  • Extracting Value from the Patent Portfolio

The book provides a systematic approach to extracting value from patent portfolios, including workflows for small and large portfolios, criteria for valuable patents, and the use of patent intelligence tools. The authors discuss the importance of regular portfolio reviews and provide practical advice on conducting infringement searches and analysing the value of identified patents.

  • Pruning the Patent Portfolio

Pruning is essential for maintaining a cost-effective and strategically aligned patent portfolio. The authors compare renewal-based monthly pruning with yearly pruning, highlighting the pros and cons of each approach. They introduce the Pruning Recommendation Tool (PRT) for making data-driven decisions on which patents to prune, save, or review.

Strengths

  • Practical Approach: The book is rich in practical advice, checklists, and sample documentation, making it a valuable resource for both novice and experienced patent professionals.
  • Comprehensive Coverage: The authors cover all aspects of patent portfolio management, from strategy and budgeting to quality assurance and value extraction.
  • Innovative Techniques: The introduction of tools like the APTT and PRT demonstrates the authors’ commitment to providing innovative solutions for patent management challenges.
  • Clear Structure: The book’s clear structure, with well-defined sections and subsections, makes it easy to navigate and find relevant information.

Areas for Improvement

  • Case Studies: While the book includes some case studies, additional real-world examples could further illustrate the practical application of the concepts discussed.
  • Industry-Specific Insights: The book could benefit from more industry-specific insights, particularly for sectors like pharmaceuticals and biotechnology, where patent strategies can differ significantly.

Conclusion

Patent Portfolio Management: A Practical Guide is a comprehensive and practical resource for anyone involved in managing patent portfolios. Simone Frattasi and Jean-Claude Alexandre Ho have succeeded in creating a guide that combines theoretical insights with practical tools and techniques. Whether you are a corporate patent professional or a patent attorney, this book will equip you with the knowledge and skills needed to optimize your patent portfolio and align it with your business strategy.

👉 Our IP business academy expert Simone Frattasi is offering a webinar on the topic of “The Management of Patent Portfolios” on 12th November this year. If you book the seminar via the following link, you will benefit from the best conditions for the IP business academy community.