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IP Portfolio Management

How do you track potential trademark infringements?

We use professional monitoring tools ("Watch Services") that scan new trademark applications globally and online marketplaces. If a confusingly similar mark appears, we alert you immediately so we can file an opposition within the statutory deadline (usually 3 months), which is much cheaper than a full lawsuit later.

Can I add new goods/services to my existing trademark?

No, you cannot expand the list of goods/services in an existing registration. If you launch a new product line, you must file a new trademark application for those specific classes. Portfolio management ensures these new filings are consistent with your existing brand architecture.

Why is "Gap Analysis" important for my IP portfolio?

Gap Analysis reveals weaknesses—markets where you sell but aren't protected, or core technologies that are exposed. Identifying these gaps allows us to proactively file for protection before competitors exploit them, securing your market position and revenue streams.

Do I need to record license agreements in the registry?

In Georgia, recording a license agreement with Sakpatenti is not mandatory for its validity between parties, but it is highly recommended to be effective against third parties. Recording ensures that if the IP is sold, the new owner must respect your license. We handle this recordation process.

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Intellectual Property (IP) Portfolio Management is a strategic service that goes beyond registering a single patent or trademark. It is the unified, systematic management of all of a company's intangible assets (trademarks, patents, designs, domains, copyrights) to achieve business goals. Effective portfolio management involves constant monitoring of assets, controlling protection terms, expanding geographic coverage, and minimizing risks. For companies with multiple brands or technologies, professional management is vital to avoid losing rights due to missed deadlines or misappropriation by competitors.

What IP Portfolio Management Services Cover

Partner lawyers and patent attorneys on Legal.ge offer full outsourcing or consulting in portfolio management:

  • Strategy Development: Creating an IP strategy aligned with the business plan (which brand to protect where, what to patent, and what to keep as a trade secret).
  • Deadline Management and Renewals: Controlling validity periods and timely renewal of trademarks and patents with Sakpatenti and international offices.
  • Expansion and Registration: Organizing the registration of new objects locally and internationally (e.g., via the Madrid System).
  • Competitor Monitoring: Constant market research to timely detect attempts by competitors to register similar marks or technologies.
  • Budgeting: Planning and optimizing IP costs (official fees, attorney fees).
  • Gap Analysis: Identifying "holes" in the portfolio—areas where the company is vulnerable.

Practical Examples and Scenarios

Portfolio management is essential for growing businesses:

  • Wine Exporter: A company sells wine in 10 countries. They need management to ensure their brand is protected in all export markets, control renewal deadlines in different jurisdictions, and timely prevent counterfeiting.
  • Franchise Chain: A restaurant chain has a main brand and several sub-brands (menu items). Constant control is needed to ensure franchisees use marks correctly and do not violate standards.
  • R&D Company: A tech startup constantly creates new inventions. A portfolio manager helps them decide which innovation to patent and which to protect as "know-how" to optimize costs.

Georgian Legal Framework

Portfolio management relies on all major IP laws: the Law on Trademarks, the Patent Law, and the Law on Design. Adhering to deadlines is particularly important, as restoring an expired patent is often impossible, and an expired mark can be registered by someone else. Also relevant are the General Administrative Code of Georgia regarding interactions with Sakpatenti and international treaties (Paris Convention, Madrid Protocol) that define international protection terms.

The Process: Working with a Specialist

This is a continuous process, not a one-time act:

  1. Inventory: A full registry of all the company's existing IP assets is compiled with status indications.
  2. Audit: Verification that all assets are properly formalized (e.g., are all marks registered in the correct classes).
  3. Planning: An action plan for the next 1-3 years is defined (new registrations, market entry).
  4. Execution: The lawyer carries out necessary procedures (filing applications, submitting oppositions).
  5. Reporting: The client periodically receives reports on the portfolio status.

Why Legal.ge?

Managing an IP portfolio requires significant time, attention, and specific knowledge. In-house lawyers often lack the resources for all of this. Legal.ge allows you to hire an external IP manager or specialized firm that will take care of your assets at a professional level. Find your IP partner on Legal.ge and be at peace regarding the safety of your brands and inventions.

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