LegalGELegalGE
...

Patent Portfolio Management

How often do I need to pay patent maintenance fees?

In Georgia and most jurisdictions, maintenance fees (annuities) are paid annually. The payment cycle typically starts from the filing date or the grant date, depending on the country's specific laws.

What is the benefit of a patent portfolio audit?

An audit aligns your IP assets with your current business strategy. It identifies obsolete patents that drain the budget and highlights gaps where new protection is needed, optimizing overall IP expenditure.

Can you handle PCT national phase entries from Georgia?

Yes, we manage the transition of international PCT applications into national phases in target countries. This involves strategic selection of jurisdictions and coordination with local attorneys to meet strict deadlines.

What happens to the portfolio during a company merger?

During M&A, patent ownership must be legally transferred and recorded in the respective patent offices. Proper portfolio management ensures that all assets are valid and unencumbered during the due diligence process.

Reading Time

3 min

Published

...

Patent Portfolio Management is a strategic service for companies that own multiple patents or plan to expand into international markets. A patent is not a one-time act; it is a living asset that requires constant monitoring, payment of annual fees (annuities), and strategic planning of geographic coverage. Missing even a single deadline can lead to the cancellation of the patent and the loss of technology. Effective portfolio management implies not only deadline control but also patent auditing—determining which patents are profitable, which should be sold or licensed, and where protection should be dropped to save costs.

What Patent Portfolio Management Services Cover

Partner patent bureaus on Legal.ge offer full administrative and strategic support:

  • Deadline Monitoring and Renewals: Organizing the payment of annual maintenance fees in Georgia and abroad (deadlines vary by country).
  • International Expansion (PCT/Paris Convention): Managing national phases—deciding which countries to enter before the priority period expires.
  • Portfolio Audit and Optimization: Evaluating existing patents against business goals. Identifying "dead" patents and abandoning them to save budget.
  • Licensing Administration: Tracking licenses and monitoring royalties for patents in the portfolio.
  • Recording Changes: Reflecting changes in ownership, address, or name in patent registers.

Practical Examples and Scenarios

Portfolio management is critical for the following situations:

  • Expired Patent: A Georgian pharmaceutical company missed the 5th-year annuity payment deadline in Germany. As a result, the patent was revoked, and a competitor began producing a generic drug in the German market. Hiring a manager would have insured against this risk.
  • Cost Optimization: A tech company holds 50 patents, but 20 relate to obsolete technology no longer in use. An audit decided to abandon these 20 patents, saving the company thousands of dollars annually.
  • M&A Deal: A large corporation buys a startup. During Due Diligence, the portfolio is checked. An orderly registry and paid fees increase the company's credibility and valuation.

Georgian Legal Framework

Portfolio management is based on the Patent Law of Georgia and international treaties (PCT, European Patent Convention). In Georgia, to maintain a patent, annual fees must be paid every year after the patent is granted. In case of non-payment, a grace period (6 months) applies, after which the patent is cancelled. At the international level, the Paris Convention sets a 12-month priority period for filing applications in other countries. Adhering to these deadlines is the main responsibility of a portfolio manager.

The Process: How a Manager Works

The process is continuous and systematic:

  1. Inventory: A unified database of all assets (dates, countries, status) is created.
  2. Calendar Setup: An automated notification system for payments and actions is established.
  3. Strategic Session: Once a year, management reviews where to expand protection and where to cease it.
  4. Execution: The patent attorney handles payments and correspondence with foreign associates.

Why Legal.ge?

In-house lawyers often lack the resources or specialized software to track deadlines for dozens of patents across different time zones. Legal.ge gives you access to specialized firms that use modern portfolio management systems and insure you against human error. Entrust your intellectual capital to professionals on Legal.ge.

Updated: ...

Specialists for this service

Loading...