Fractional CIPO for Established Companies
You have a patent portfolio. It should be working.
You have been filing patents for years. You have issued patents, pending applications, and maintenance fees coming due. But is the portfolio generating revenue, protecting your product lines, and clearing the path for new ones — or is it just costing you money?
Most established companies default to autopilot: the docketing system sends a reminder, someone approves the maintenance payment, and the cycle continues. Nobody reviews. Nobody questions. The people sending the reminders — outside counsel and docketing services — get paid when you pay. Nobody in that chain has an incentive to say “stop paying for this one.”
A fractional Chief IP Officer turns your portfolio from a cost center into a business function — one that generates licensing revenue, protects existing products, clears technology space for new ones, and positions your IP for standards, partnerships, and enforcement.
What the CIPO Does at This Stage
Protects revenue with freedom-to-operate
Your existing product lines generate revenue your patents should be defending. As products evolve and enter new markets, other companies’ patents create risk you may not see. The CIPO monitors the competitive landscape continuously — catching inbound FTO risks before they become lawsuits. FTO done early changes the decision tree: design around, negotiate a license while you still have leverage, challenge validity, or proceed with eyes open.
Clears technology space for new products
When R&D is developing the next product line, the CIPO maps the third-party patent landscape around the target technology — before the product launches, not after. Which patents create risk, and how do you design around them? Where are the gaps in competitors’ patent positions, and how do you fill them with your own blocking patents? The goal is not to react to what competitors have done. It is to change their behavior before they do it.
Runs active outbound licensing
Your patents may cover products and services your competitors are already selling — and nobody inside your company is watching. The CIPO identifies licensing targets, maps your claims to their products, and manages the process of converting patents into revenue streams. But outbound licensing requires one thing many patent holders overlook: the credible threat of enforcement. The CIPO ensures enforcement credibility is in place — through enforcement insurance, litigation budget, or both — before any licensing campaign begins.
Positions patents for standards and patent pools
Standards essential patents are the Holy Grail of intellectual property — they generate revenue as long as the standard exists. Patent pools for Bluetooth, MPEG, 5G, WiFi, and EV charging generate billions of dollars a year. The CIPO identifies which of your patents may qualify for standards bodies, positions them for FRAND licensing, and manages the relationship with patent pool administrators.
Manages asset sales and acquisitions
Some patents are worth more to someone else than they are to you. Investment-grade patents sell on the secondary market for $200,000 to $500,000 — three to ten times their original cost. The CIPO identifies sale candidates, positions them for maximum value, and manages the transaction. On the acquisition side, the CIPO evaluates third-party patents available for purchase — patents that clear FTO risk, strengthen a licensing position, or block competitors.
Deploys IP in negotiations
Patents are trading cards. Large companies maintain huge portfolios purely for trading with other companies in negotiations, joint ventures, partnerships, and supplier agreements. An investment-grade patent is a very big stick in any negotiation. The CIPO ensures your negotiating team understands what you hold, what it is worth, and how to play it. Cross-licenses, co-development agreements, patent pools — each requires a different approach and different positioning.
Optimizes the portfolio and stops paying for dead patents
Not every patent deserves continued investment. Maintenance fees come due at 3.5, 7.5, and 11.5 years — individually modest, but across a portfolio of 20 patents, lifetime maintenance totals roughly $260,000 before foreign annuities. The CIPO evaluates each patent at every maintenance window against three tests: Does it still protect a specific revenue stream? Would you actually enforce it? Does it have enough life left to justify the cost? Patents that fail get pruned. The money saved gets redirected to patents that serve your current business.
The difference between a portfolio that costs money and a portfolio that produces a return is not the patents themselves. It is whether someone is actively managing them — watching the market, mapping revenue to claims, identifying licensing targets, monitoring the competitive landscape, and making maintenance decisions based on business strategy instead of autopilot.
No outside counsel will do this for you. They see their cases. They do not see your portfolio. They do not see your business strategy. And they have no incentive to recommend that you stop paying them.
The Mistakes We See
These are the patterns that destroy portfolio value at established companies. They happen because the portfolio exists but nobody is managing it as a business function.
Maintenance fees on autopilot
The default behavior at most companies is to pay every maintenance fee on every patent, every time. Nobody reviews. Nobody questions. Across a portfolio of 20 patents, lifetime maintenance totals roughly $260,000 — before foreign annuities, which can run $2,000–$5,000 per country per year and increase over the patent’s life. Each payment should be a conscious capital allocation decision. Instead, it is a rubber-stamped invoice. The people sending the reminders get paid when you pay. Nobody in that chain has an incentive to say stop.
Maintaining patents for the business you had, not the business you have
Every patent in a portfolio should correspond to an identifiable business purpose. That purpose changes over time. Products evolve. Markets shift. Competitors pivot. But nobody performs the periodic review. Does this patent still protect something customers pay for? Is the competitor landscape the same as when you filed? Has the technology moved in a direction that makes this patent irrelevant? These are not difficult questions. They are uncomfortable ones. Nobody wants to hear that the patent they spent $50,000 on no longer serves a purpose.
Sunk cost psychology
You have already spent $30,000 or $50,000 on this patent. Letting it die feels like admitting failure. But the money is already spent. The only question is whether spending more money on maintenance will produce future value. If the company has pivoted away from the technology, the answer is no. If the market has designed around the claims, the answer is no. If the remaining patent life is too short to justify enforcement, the answer is no. Let the patent go. Redirect the maintenance budget to patents that serve a purpose.
Walking Dead patents
Some companies have been relentlessly pouring money into their patent portfolio for 10 or even 15 years without turning a profit. Some have patents that issue with 3 years left of enforcement — they expire before the second maintenance fee is paid. These “early filing date monstrosities” become boat anchors. Because the company disclosed too much in the original application, they are forced to do continuation applications year after year, at roughly $10,000 per year per family — not for protection, but for life support on patents that protect nothing.
Competitors infringing your patents and nobody watching
Your patents may cover products and services your competitors are already selling. Who is watching the market and noticing when a competitor’s new product line steps into claim space? Your outside counsel is not doing this. They are waiting for you to call. The attorney drafted the claims. They are not monitoring the market to see who infringes them. That is business intelligence, not legal work — and it requires someone inside the company with the market knowledge to spot the opportunity and the authority to act on it.
No enforcement credibility behind licensing demands
No company pays to license someone else’s IP voluntarily. The only real reason someone takes a license is the threat of a lawsuit. A patent lawsuit costs $2 to $5 million per side. Big companies engage in efficient infringement — they use your technology and wait for you to sue, knowing you almost certainly cannot afford it. Without enforcement insurance or a litigation budget, outbound licensing is a fantasy. Enforcement insurance costs around $6,000 per year for $500,000 of coverage — less than a coworking desk. But most companies never purchase it because nobody inside the company owns the function.
Panic pruning instead of strategic pruning
During COVID, patent abandonment rates nearly doubled — from 12.5% to 23% for small entities. Companies did not prune strategically. They cut budgets across the board. The crisis gave them permission to do what discipline should have required all along. Strategic abandonment when times are good is discipline. Panic abandonment when times are bad is damage.
Prosecution damage discovered too late
Every amendment made during prosecution — every claim narrowing, every argument to the examiner — is public record. One patent owner’s attorney narrowed his claims by using the term “planar surface” to get past the examiner. The competitor designed around it by changing that surface to something else. During acquisition due diligence, the buyer’s counsel reads the entire prosecution history specifically looking for these concessions. Weak patents do not just fail to add value — they signal to the acquirer that the company does not understand IP.
Not filing improvement patents on your own technology
Your technology evolves. Your engineers solve new problems every quarter. If you are not filing improvement patents on your own innovations, someone else will — a partner who gets under the hood during a collaboration, a competitor who reverse-engineers your product, or a supplier who sees your technical direction. One sensor company entered a collaboration with a multinational. The multinational filed a dozen improvement patents on the sensor technology. The original patents were expiring. The improvement patents would be enforceable for twenty more years. The multinational built a moat around the smaller company’s technology — completely legally, completely within the contract.
The Engagement
| Freedom-to-operate | Ongoing competitive landscape monitoring, risk assessment, and design-around strategies |
| Technology space clearing | Pre-launch FTO and blocking patent strategy for new product R&D |
| Outbound licensing | Target identification, claim-to-product mapping, enforcement credibility, revenue generation |
| Standards & patent pools | SEP identification, FRAND positioning, patent pool participation |
| Asset sales & acquisitions | Portfolio segmentation, third-party patent evaluation, transaction management |
| Negotiation leverage | Cross-license strategy, JV/partnership IP positioning, M&A leverage |
| Portfolio optimization | Maintenance scoring, strategic abandonment, budget reallocation |
| Revenue protection | Competitive monitoring and enforcement recommendations |
| Counsel management | Streamlined communication with outside counsel |
| Board reporting | Portfolio performance data and deployment options your board can act on |
Investment
At this stage, your IP decisions govern licensing revenue, enforcement strategy, standards positioning, and portfolio returns measured in millions. This is executive-level capital management — not patent administration.
Engagements are structured to your portfolio scope and deployment objectives.
Common Questions
We have never done outbound licensing. Where do we start?
The CIPO starts with a portfolio-to-market mapping — identifying which of your patents cover products or services that competitors are already selling. That analysis tells you whether licensing opportunities exist, how strong the claims are, and what the realistic revenue potential looks like. But licensing requires enforcement credibility. No company takes a license voluntarily — they take it because the alternative is a lawsuit they would rather avoid. The CIPO ensures enforcement capability is in place before any licensing campaign begins, whether through enforcement insurance or litigation budget.
How do we know which patents to keep and which to let go?
Each patent gets scored against three tests at every maintenance window. Revenue test: can you point to a specific product or revenue stream it still protects? Enforcement test: if a competitor infringed tomorrow, would you actually sue? Remaining-term test: does it have enough life left to justify the cost? Score each 1–3. Anything below 5 out of 9 is a strong candidate for abandonment. The default at most companies is to pay every maintenance fee on every patent, every time. That is waste by autopilot.
How does FTO work for new products still in R&D?
The CIPO maps the patent landscape around the target technology before you commit to a product design — not after launch. That analysis identifies third-party patents that create risk and gaps where you can file blocking patents to clear the space. The result is a product that launches with its FTO risks understood and addressed, and a set of patent filings that make the competitive landscape harder for anyone who follows you.
Can our patents qualify for standards bodies or patent pools?
If you are contributing technology to an industry standard — Bluetooth, WiFi, 5G, EV charging, compression algorithms, or others — and your patents cover solutions that are essential to implementing the standard, they may qualify. The CIPO evaluates your portfolio against active and emerging standards, identifies candidates, and manages the submission and FRAND licensing process. Standards essential patents generate revenue as long as the standard exists, often across millions of devices at per-unit royalties.
How does this work with our existing patent attorney?
They continue handling prosecution and legal execution. The CIPO provides the strategic direction — which patents to maintain, which to license, which to sell, which to position for standards bodies, and how to deploy the portfolio for business objectives. The attorney drafts and prosecutes. The CIPO decides what to draft, when, and why.
What do the first 90 days look like?
Month one: full portfolio assessment — every active patent and pending application scored against your current business strategy for revenue alignment, enforcement viability, licensing potential, standards eligibility, and maintenance justification. Month two: competitive landscape mapping around your existing products and R&D pipeline, FTO risk assessment, and licensing target identification — who is infringing your patents today and what is the realistic revenue potential? Month three: deployment plan across all functions — outbound licensing campaigns, standards and patent pool positioning, portfolio optimization with maintenance decisions, asset sale candidates, and negotiation leverage mapping — with a board-ready presentation and concrete next steps. After 90 days, the engagement continues with ongoing portfolio management — competitive monitoring, licensing execution, prosecution oversight, and quarterly portfolio reviews tied to your business strategy.
