Reprinted with permission from the June 2026 issue of The Intellectual Property Strategist. © 2026 ALM Global Properties, LLC. Further duplication without permission is prohibited. All rights reserved.

If managed with purpose, a patent portfolio can be one of a company’s most valuable strategic assets. Too often, portfolios grow without a clear connection to business objectives, consuming time and money without delivering meaningful value. A thoughtful patent audit helps companies refocus their efforts, reduce waste, and ensure their intellectual property supports long-term growth. Here are practical tips to guide an effective audit.

Start with Business Goals, Not Patents

Before reviewing individual patents, anchor the audit in the company’s broader strategy. Patents should serve the business rather than exist in isolation.

Consider what the company is trying to accomplish:

• Is there a plan to launch a new product or service?
• What is the expected lifecycle of that offering?
• Is the goal to increase market share or enter a new market?
• How competitive (and how litigious) is the space?
• Is the company preparing for a merger, acquisition, or fundraising round?
• What are your competitors doing both with their products and services and intellectual property portfolios?

The answers to these questions provide the lens through which every patent decision should be evaluated.

Be Strategic with Limited Resources

Every patent portfolio is constrained by two things: time and money. Filing, maintaining, and enforcing patents can be expensive, and companies must make deliberate choices about where to invest.

Effective resource allocation may include:

• Prioritizing a focused set of patents tied to core technologies
• Filing in jurisdictions that align with revenue opportunities
• Avoiding “fixed” spending that prioritizes quantity over quality
• Considering alternatives to traditional utility patents, such as design patents, trade secrets, copyrights, or trademarks where appropriate

The goal is not to build the largest portfolio, but the most valuable one.

Organize the Portfolio into Three Categories

One useful audit framework is to divide the portfolio into three groups:

1. Issued Patents
2. Pending Applications
3. Inventions Not Yet Filed

Each category requires a different strategy and set of decisions.

Issued Patents: Focus on Value and Practical Use

Issued patents require ongoing investment including: maintenance fees and potential enforcement costs. It is also important to remember that a patent does not give a company the right to make or sell a product; it only grants the right to exclude others.

When auditing its issued patents, a company should ask:

• Do we clearly own or have we licensed all of the rights to the patent?
• Are maintenance and renewal fees up to date?
• If the patent is in-licensed do the commercial terms of that agreement still make sense?
• Do the claims actually cover our products or a competitor’s?
• Are we operating, or planning to operate, in this space?
• Can we identify likely infringers?
• Do we have the resources to enforce the patent(s) if necessary?
• Are the claims still valid in light of changes to a given jurisdiction’s IP law?
• Is the geographic coverage still relevant?
• Are the claims strong, with defensible fallback positions?
• Are there any issues with the claims and can those issues be corrected through reissue or with a currently pending application?
• Is there strategic value to leaving the family open to capture future competitors?

After analyzing, each patent should ultimately fall into one of four categories:
keep, license, sell, or let lapse. If it does not support the business or justify its cost, it may be time to reconsider its value as a company asset.

Pending Applications: Decide Where to Continue Investing

Pending applications represent future opportunities, but they also require continued spending on prosecution, foreign filings, and administrative costs.

Key considerations include:

• Confirming ownership and assignment rights
• Confirming that all prior art has been collected and disclosed in information disclosure statements.
• Ensuring annuities and fees are current
• Determining whether the claims align with current or future products/services
• Determining how the company would identify an infringer
• Identify any potential infringers
• Evaluating how much has already been invested and the state of the application
• Does it make sense to keep prosecuting to state “patent pending” on product/service
• Assessing whether the jurisdictions pursued still make sense
• Estimating future costs, including translations and foreign filings
• Understanding which jurisdictions are most favorable for enforcement
• Analyzing the scope of the pending claims in view of any federal court decisions or updated USPTO guidance

Not every application must be carried forward. As with issued patents, decisions should be intentional: continue, license, sell, or abandon.

Inventions: Be Selective About What You File

One of the most important audit questions is whether every invention should become a patent at all. Filing decisions should balance legal potential with business reality.

Before filing, consider:

• Freedom to operate: Can the company use the invention without infringing others’ rights?
• Patentability: Is the invention truly novel and non-obvious?
• Alternative protection: Would a trade secret or copyright be more effective?
• Timing: Has the invention been publicly disclosed, triggering filing deadlines or loss of rights?

Additional business-focused questions include:

• Do we have clear assignments from the inventors?
• What is the budget for filing?
• Would a provisional application allow time to test the market?
• How critical is the invention to the company’s product roadmap?
• Are competitors entering this space?
• Could the technology be better protected as confidential know-how?
• Who would we realistically enforce this patent against?
• Are the target jurisdictions strong enforcers of patent rights?

Careful screening at this stage prevents unnecessary spending and helps focus resources on high-impact innovations.

Turn Insight into Action

A patent audit is not just a legal exercise, it is a business tool. When done well, it helps companies:

• Reduce unnecessary costs
• Strengthen protection around core offerings
• Minimize legal and competitive risk
• Identify licensing or monetization opportunities
• Align intellectual property with strategic goals

Ultimately, the most effective patent portfolios are not the largest, but rather the most intentional. By regularly auditing patents with a clear business focus, companies can ensure that their intellectual property works as a driver of value rather than a passive expense.

Organizations with patent portfolios seeking a fresh, independent perspective are invited to connect with our team.