An annual check on the work you still care about

The brand you expected to use for one season is now your main business. The side project you registered three years ago has gone quiet. A photograph that seemed incidental has become the image customers recognize. A yearly review catches these changes and turns them into decisions about time and money.

WIPO calls this kind of review an IP audit: a look at the IP your business owns and uses. It recommends doing it regularly, because IP changes in value as your business and technology change.2

Look at the work as it is now

Start with what you currently make, sell, share, license or keep confidential. Then open your inventory and compare:

• Which important things are missing?
• Which entries describe a product, collaborator or plan that has changed?
• How is each asset used now, and is each registered right still valid?2

If the whole portfolio is too much for one sitting, review one collection or business area at a time.

Include work whose value is not mainly financial. A teaching resource, community archive or shared code library deserves care because people depend on continued access. Write that purpose next to the entry so a future decision does not judge it by revenue alone.

Ask what each item is doing for you

For each active asset, write down its role, what it costs to maintain, and any new opportunity or dependency. Many registered rights need regular payments to stay alive. The review is where you find the ones you pay for and no longer use, so you can stop paying the renewal fees or earn from them instead.2 A name customers recognize earns attention even if the current product range is small. An expensive filing for an abandoned plan needs a keep-or-drop decision before its next fee.

Put the next cost of every registered right on the list. Two U.S. examples:

• Utility patents. Pay maintenance fees 3 to 3.5, 7 to 7.5 and 11 to 11.5 years after the patent issues. If the fee and surcharge are still unpaid at the end of the 4th, 8th or 12th year, the patent lapses. Design and plant patents need no maintenance fees. The current amounts are on the USPTO fee schedule linked from the same page.3
• Trademark registrations. File a Section 8 declaration of use between the fifth and sixth years after registration, then a combined Section 8 and 9 filing between the ninth and tenth years and every ten years after that. Each deadline has a six-month grace period; miss it and the registration is canceled or expires.1 The fees per class are on the USPTO trademark fee page.4

Quiet is not the same as worthless. Before you let a right or agreement lapse, check what you lose, what you owe other people, and whether you can undo the choice. An investor or lender may have a claim on the asset, and a licensee may depend on it.2 If someone else relies on a right you plan to drop, have an IP attorney read those agreements before the deadline passes.

Check that the story and the paperwork still match

List the new contributors, permissions, agreements, and changes of owner or contact since your last review. Then check:

• Can you still find the signed versions?
• Do the restrictions you recorded match how the material is used now?
• Who else has the right to use each asset, and on what terms?2
• Is anyone using your work without your permission?2
• Does your business now rely on someone else's IP?2
• Does the person responsible for each date still work with you?

Give official records the same check. A U.S. trademark registration should list only the goods and services you still use the mark on. When you stop using it on some of them, file a Section 7 request to delete them promptly; deleting goods this way between maintenance filings costs no fee. Do not file a maintenance declaration for goods you no longer sell. If the USPTO audits the registration, you must give more proof of use, delete what you cannot prove, and pay a fee for each class with deletions. If the owner has changed, record the change so the ownership information in your maintenance filing matches the USPTO's records.1

Finish with a few clear decisions

End the review with decisions, for example: keep maintaining the main brand; get one photographer's permission in writing before the next catalogue; update the address on two records; decide on the unused product name before its next fee. That is worth more than marking the whole portfolio "reviewed."

For each significant decision, record the reason and who follows it up. Give every open item an owner and a date to look at it again. Leave the inventory in a state that next year's reviewer can pick up without asking you.

Once a year suits the broad look. Run a focused review sooner when you change direction, look for investors or a loan, talk to a buyer or partner, need to cut costs, or face a licensing deal or a dispute.2