IP Prosecution is the operational backbone of intellectual property management. It encompasses all activities required to secure, maintain, and renew IP rights over time. Unlike registration, which is a one-off event, prosecution is an ongoing discipline-tracking deadlines, responding to examiner queries, paying maintenance fees, and ensuring compliance across jurisdictions.

Why is this critical? Because IP rights are not perpetual by default. Trademarks require renewal, patents demand maintenance fees, and many jurisdictions impose proof-of-use obligations. Neglecting these tasks can lead to irreversible loss of rights, exposing businesses to competitive threats and eroding asset value.

For legal teams, IP prosecution is a strategic function. It ensures that the company’s intangible assets remain enforceable, market-ready, and valuation-friendly. Without it, even the most innovative businesses risk losing their competitive edge.

PAA: What does IP prosecution mean?

IP prosecution refers to the processes involved in securing and maintaining IP rights, including filings, renewals, and compliance activities.

The scope of IP Prosecution includes:

◼️Application management: Preparing and filing trademark and patent applications.

◼️Office actions: Responding to examiner reports and objections.

◼️Renewal tracking: Monitoring deadlines for trademarks and patents.

◼️Maintenance fee payments: Ensuring patents remain in force.

◼️Proof-of-use compliance: Providing evidence of trademark use where required.

◼️International coordination: Managing filings under treaties like Madrid Protocol and PCT.

◼️Portfolio health checks: Auditing IP status and identifying gaps.

◼️Budget planning: Allocating resources for ongoing prosecution costs.

Understanding key concepts is essential for effective prosecution:

◼️Renewal: Extending the term of protection for IP rights.

◼️Maintenance fees: Payments required to keep patents active.

◼️Proof of use: Evidence that a trademark is genuinely used in commerce.

◼️International registration: A single application covering multiple jurisdictions (e.g., Madrid Protocol for trademarks).

PAA: Is IP prosecution the same as IP litigation?

No-prosecution is about acquiring and maintaining rights, while litigation is about enforcing them in disputes.

In GLS legal ops speak – the IP Prosecution Platform is considered a “Specialist” resource within the process ecosystem of an in-house legal team.

The Specialist Resource: Is responsible for driving the performance of a very specific part of an individual legal function. Its productivity contribution is limited to that single legal function. 

The best practice features of the GLP are as follows:

◼️Centralised tracking: Maintain a master calendar for all IP deadlines.

◼️Automated alerts: Use technology to prevent missed renewals.

◼️Dedicated ownership: Assign responsibility for prosecution tasks.

◼️Global harmonisation: Align processes across jurisdictions.

◼️Portfolio audits: Conduct regular health checks on IP assets.

◼️Proof-of-use readiness: Maintain evidence to defend registrations.

◼️Budget discipline: Forecast and allocate funds for renewals and fees.

◼️Professional engagement: Leverage IP specialists for complex filings.

The IP Prosecution station delivers the following value to the Business:

◼️Asset preservation: Prevents loss of valuable IP rights.

◼️Valuation uplift: Maintains enforceable rights for funding and M&A.

◼️Market protection: Secures exclusivity in key jurisdictions.

◼️Cost efficiency: Avoids expensive re-filings and disputes.

◼️Investor confidence: Demonstrates operational discipline over intangible assets.

PAA: How often should IP rights be renewed?

Trademarks typically every 10 years; patents have annual or staged maintenance fees, varying by jurisdiction.

For legal teams, IP prosecution provides:

◼️Control: Centralised oversight of IP lifecycle management.

◼️Predictability: Reduced risk of missed deadlines and lapses.

◼️Efficiency: Streamlined processes for filings and renewals.

◼️Defensibility: Strong documentation for enforcement and audits.

◼️Alignment: Integration with global IP strategy.

The IP Prosecution station is essential for:

◼️In-house legal teams managing IP portfolios.

◼️Businesses with significant brand or innovation assets.

◼️Organisations operating in multiple jurisdictions.

◼️Companies preparing for funding rounds or M&A.

A legal team operating without an IP Prosecution framework will face a wide range of inefficiencies including:

◼️Missed renewals: Leading to irreversible loss of rights.

◼️Costly recovery: Expensive attempts to regain lapsed IP.

◼️Portfolio chaos: Lack of visibility over asset status.

◼️Investor delays: Due diligence complications and valuation risks.

◼️Operational disruption: Inability to enforce rights confidently.

Technology is a critical enabler for IP prosecution. IP management platforms automate deadline tracking, store filings securely, and provide portfolio analytics. Integration with contract lifecycle management systems ensures seamless coordination between IP and commercial agreements.

PAA: Can IP management software help?

Yes-it can automate reminders, track status, and store documents securely.

1. PAA: Who handles IP prosecution?

Typically IP attorneys or specialised in-house teams, supported by technology.

2. PAA: What happens if you miss an IP renewal deadline?

You may lose your rights entirely, and in some cases, they cannot be recovered.

3. PAA: What famous companies have lost IP rights due to poor prosecution?

McDonald’s (Big Mac in the EU), Harley-Davidson (sound trademark in the US), and Microsoft (regional lapsed marks).

4. PAA: What is the difference between renewal and proof of use?

Renewal extends the term of protection; proof of use shows the mark is genuinely in commercial use.

5. PAA: How does IP prosecution differ globally?

Jurisdictions vary in renewal periods, proof-of-use requirements, and maintenance fee structures.

6. PAA: What tools support global IP prosecution?

IP docketing systems, renewal trackers, and treaty-based filing platforms.