Patent Portfolios

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What is a Patent Portfolio?

A patent portfolio is a fancy term which simply means more than one patent that covers a
specific technology. For most inventions, there are several uses or different applications of the
invention. For that reason, it is common to have to limit the claims of the invention to one
version in order to get the application through the USPTO. The value of a single patent is
tenuous and is prone to designing around. However, when a portfolio of patents is in place,
covering any conceivable application, version, or embodiment of a core technology – the value
goes up considerably. That is why a majority of the patent transactions for purchase or license
from larger companies are for patent portfolios.

One Invention Per Patent

There is a rule, that only one invention may be issued at a time. The USPTO examiners are very
good at spotting inventions that are too broad. It’s their job to make sure that there is only one
core invention per patent that is granted. If the examiner believes there are more than one
invention in the patent application, they will reject the entire application and require the
inventor/applicant to elect only some of the claims they submitted. Often, the examiner will
divide up the application into discrete inventions, for example, they’ll say that Claims 1-4 are
drawn to invention 1, Claims 5-11 are drawn to invention 2, and Claims 12-20 are invention 3.
When the applicant/inventor picks one invention, the other claims are withdrawn from the
pending application.

How do you Develop a Portfolio?

When you have an examiner restrict some of your claims from moving forward, instead of
letting the unelected claims go abandoned, you can file what’s called a divisional patent
application, where you file a separate co-pending application on the same subject matter, but
claim the invention using the claims that were unelected on the original patent application.
Another way to grow your portfolio is to continue to develop your technology while the original
patent application is pending. You can file what’s called a continuation or a continuation in part
patent application which can claim new claims and point to new specification/drawings that
have come about through improvement or customer feedback during the pendency of the
patent application.

Still have Questions?

Get with a Bold Patent Attorney to explain your specific scenario, and we will walk you through
how to get on the path to developing a valuable patent portfolio today!

Call 800-849-1913 or self-schedule a free 30-minute consultation below.

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