USPTO-Registered Patent Attorney · Wisconsin · Serving the Midwest & Nationwide (414) 250-7985

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IP Strategy & Portfolio Management

Filing decisions tied to business goals – portfolio audits, invention capture, continuation strategy, and IP that holds up in diligence.

Individual patents are tools; a portfolio is a strategy. The difference between the two is deciding – deliberately – what to file, what to keep as a trade secret, what to let lapse, and how the filings map to where the product and the company are going.

Portfolio audits

What do you actually own? An audit reconciles your filings against your products and your competitors': claims that no longer cover the shipping product, inventions that were never captured, maintenance fees being paid on assets with no strategic value. The output is a concrete keep / file / fix / drop plan.

Invention capture

Most companies' best inventions never reach a lawyer. A lightweight disclosure process – sized to your team, not to a Fortune 500 form – catches the protectable work when it happens, while inventorship is still clear and nothing has been publicly disclosed.

Continuation strategy

Keeping a continuation pending from an allowed application is the cheapest option on future claim scope you can buy. As the product evolves and competitors reveal their design-arounds, a pending continuation lets you draft new claims aimed at what the market actually does – with your original priority date.

Patents versus trade secrets

A patent publishes your method to the world in exchange for a 20-year right; a trade secret lasts as long as it stays secret. Process parameters and internals competitors can't reverse-engineer often belong in the second bucket. We help you draw that line asset by asset, with the agreements and hygiene to make the secret half stick.

Diligence readiness

Fundraises and acquisitions stall on the same findings: unassigned inventions, misnamed inventors, broken chains of title. We get those clean before anyone is looking – it's cheap maintenance now and a fire drill under a term sheet.

Typical engagement: a portfolio review with a filing roadmap, then ongoing counsel as the product and competitive landscape move. Strategy is a cadence, not a memo.

Common questions

We have a few patents already – where do we start?

With an audit: what the claims actually cover versus what you ship and what competitors ship. That gap analysis drives everything else.

How do we decide patent versus trade secret?

Roughly: if a competitor could reverse-engineer it from the product or develop it independently, patent it; if it's genuinely hidden and you can keep it that way, a trade secret may protect it longer and cheaper. We work through it asset by asset.

What's a continuation and why keep one pending?

A follow-on application sharing the parent's priority date. While it's pending you can write new claims aimed at competitor design-arounds – it's the portfolio's flexibility reserve.

Can you work on a fixed budget?

Yes. Strategy work is scoped and quoted up front, and the filing roadmap is explicitly prioritized so the budget goes to the assets that matter most.

Want a portfolio that maps to the business?

Bring your sketches, prototype, or a rough description – we'll tell you what's worth protecting and what it will take.

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