he world that we live in is a knowledge-based economy. Research and development have become very essential for companies to survive in the global market. With increasing innovation in sectors such as artificial intelligence, neural networks, digital centralisation, blockchain technology and others, companies are protecting their technologies by filing patents in various jurisdictions. However, there have been instances, when companies have invested millions of dollars in research and development in a particular field, without conducting patent research of existing patent portfolios in the said field. Due to which, these companies may have had to face patent infringement suits and end up paying damages, litigation costs and royalty to the patent owners. Therefore, it is very important for companies to involve patent analytics as part of their decision-making process to ensure progress in fields relevant to the company.
Patent analytics refers to an in-depth analysis of patent activity in a particular technology field. Analysing large sets of patent data provides an overview to help take informed decisions at various stages of research and development. Two important kinds of patent analytics tools are patent landscape and patent watch. These tools, if used strategically, can help a company a great deal in determining investments, mergers and acquisition, litigation risks, competitors, market of interest, etc.
Patent landscape analysis
Patent documents contain around 80 to 90 percent of the published information in science and technology and provide information regarding the latest trends in technology. This is because companies would like to protect the technology developed, and the best means of obtaining legal protection for the technology is through filing patents. In this regard, a patent landscape report provides an overview of the current trend of a particular technology in a specific region, country or worldwide.
Patent landscape analysis is an exhaustive and time-consuming exercise. By closely analysing patent documents, a company can thoroughly understand the latest trends in a particular technology.
- Benefits of conducting the patent landscape analysis
A comprehensive patent landscape report includes a set of references to the patent records and corresponding analysis. Information related to business, technology and legal can be extracted from the report. This information enables companies to take informed decisions prior to investing time and money into new technology and product development opportunities.
The patent landscape analysis benefits companies in different ways, which are as mentioned below:
- Provides an insight of the current trends relevant to the company.
- Information on white space in a particular domain can be extracted. For instance, pursuant to completion of the landscape report, people skilled in the art can identify areas which are crowded (more number of patents filed) and areas which are less crowded (less number of patents filed). If the number of patents filed is predominantly less, then it implies that the corresponding area would be a good option to explore. E.g. Areas such as blockchain technology are new and a lot of financial companies are exploring options to utilise the technology since not many patents are filed.
Further, once the area is identified based on the patent documents analysed, the technical team can also analyse the problems that the documents are solving and compare them with the problems the company is trying to solve. By conducting this analysis, the companies can determine whether the solution offered is viable for commercialisation.
- The management of the company can identify the key players in the market. By doing so, they can work on the marketing and negotiating strategies. The legal team can work on aggressive, defensive or negotiations strategies.
- The aggressive strategy includes initiating proceedings such as invalidity.
- The defensive strategy includes trying to differentiate the technology relevant to the company from the technology covered by the patent portfolio of the competitors.
- The negotiation strategy includes trying to work out licensing opportunities with the companies holding the patent portfolio.
- Tips to conduct patent landscape analysis
- Understand the client’s goals
Before a meeting is set up with the client, it is advised to go through the client’s website to understand what they do and what technology they have developed. During the meeting, relevant questions should be asked to the client and relevant information provided by the client should be noted down. Understanding the client’s goals is very essential. For instance, the client may be interested in getting into the smart TV business. The smart TV business is rapidly evolving and a lot of patent applications are being filed for various components/technologies. It is important to understand the exact features of the technology and it is better to ask the client to provide copies of the technology description. Thereafter, one can prepare a scope of work for the analysis by listing down the methodology for the exercise.
- Identify the problem the technology is trying to solve
Pursuant to finalising the scope of work, it is necessary to understand the technical problem that the client and its new technology is intending to solve. For instance, let us consider the client has developed a technology which provides a better TV viewing experience. One needs to understand the specific components of the technology which provides the result. Once that is understood, next step would be to find out the problems of the existing technology and formulate a problem solving approach.
- Conduct an initial search
Conduct an initial search to find out what other companies are protecting based on the problem solution approach formulated. For instance, research on the solution offered by the new technology, and record the terms used in the art for the new technology.
- Conduct search based on keywords
List down the key features of the technology and the keywords which will be used for the search. Thereafter, search strings should be formulated for the search using Boolean operators.
Carry out various types of searches, such as a combination of search strings, classification search, backward and forward citation search, at various patent and non-patent databases to locate patent/non-patent records similar to the new technology.
Information obtained from the searches include data of patenting trends for the technology, how the technology has evolved over a period of time, filing history and strategies of the competitors.
- Analysis of the data
The final step of the analysis is comparing the technology with the retrieved patent and non-patent documents and determining the relevancy. Comparing would be based on the features of the technology, components involved and problems that the patent and non-patent documents are solving. The most relevant documents which are retrieved are flagged first, and then the remotely relevant documents are flagged.
Patent watch is an act of monitoring a patent or a group of patents for a change in some characteristics or conditions. Patent watch may be used for monitoring an individual patent/patent application or a group of patents/patent applications (portfolio watch).
- Types of patent watch and tips to conduct them
- Individual patent/patent application
Individual patent watch is performed when a company has different requirements. Each requirement along with the methodology adopted is enumerated below:
- Freedom to operate
Freedom to operate is a clearance search performed to determine if a technology could be used in a particular territory without infringing any patent. The steps of patent watch vary from a pending patent application and a granted patent.
For a pending patent application, patent watch includes the following steps:
- Monitoring prosecution status of the pending application: The prosecution of a pending application includes activities which occur after the application is published and up to the grant of the application. Monitoring prosecution status includes tracking examination, hearings and decision on the validity of the patents by the Patent Office.
- Monitoring foreign filing details of the pending patent application: An applicant of the pending patent application can file corresponding applications in various countries taking priority from the pending application. Hence, it is essential to monitor the foreign filing details of the pending application as this provides an overview of the validity of the application in other countries.
The steps of patent watch for a granted patent includes the following steps:
- Monitoring the status of the granted patent: Status of the granted patent includes monitoring whether the patent term is still in force or has expired and the status of the maintenance fee payment.
- Monitoring foreign filing details: Even though the patent is granted in a particular territory, it does not mean that it will be granted in other countries. Hence, prosecution in other countries should also be monitored.
- Monitoring assignment status: Once the patent is granted, the patent should be monitored for any change in the assignment status of the applicant. This could help the interested party to develop strategies such as negotiations, licenses, etc.
- Monitoring litigation of the patent: Monitoring litigation may include tracking litigation of the patent in territories in which it has been filed. By doing so, one can determine the validity of the patent. Generally, if a patentee files an infringement suit, the infringing party may file an invalidation proceeding to invalidate the patent. If the infringing party is successful in invalidating the patent, then any interested party intending to develop a technology similar to the one disclosed in the patent, can file invalidation proceedings in their respective jurisdiction using similar strategies used by infringing party in the other territory.
Any party interested to patent a particular technology has to first conduct a prior art search. During the search, if the interested party locates any patent/patent application similar to the invention, then the interested party needs to closely track the patent to determine the scope of the invention and what has been disclosed therein. Based on studying the disclosure of the patent, the interested party can try to design around the patent, if possible.
- Competitor detection
A patent/patent application includes various sections. One of the section includes citations of patent documents similar to the disclosure of the patent/patent application. Therefore, by monitoring a patent, the interested party can get an idea about other competitors in the similar space.
- Portfolio watch
Portfolio watch is conducted for various patents/patent applications and for different requirements, which are elaborated below:
- Freedom to operate, product development
As explained above for individual patent watch, portfolio watch is also conducted to determine if a technology could be used in a particular territory without infringing any patents. Further, the portfolio watch also facilitates product development by analysing different patents for various components of the technology.
- Competitive awareness
If an interested party has competitors in the similar space, then it can closely monitor the patent portfolio of the competitors to understand what is being protected by patents, their assignment details and geographic coverage.
- Benefits of patent watch
The patent watch benefits companies in different ways, which are as mentioned below:
- Monitor the patenting trends of others in a particular technical field/technology and to stay updated about technical developments.
- Monitor the patenting trends of specific companies or individuals, e.g. competitors.
- Take precautions of potential patent infringement at an early stage. By doing so, the R&D team can work around the patent applications and prevent infringement.
- Formulate patent strategies if the technology is infringing the searched patents. The patent strategies could be opposing the patent/patent applications, revoking the patents or entering into a license for the patented technology.
Tools such as the patent landscape and the patent watch can serve as excellent tools for the client when used at the appropriate time. They address the client’s requirements, be it for Intellectual Property or business strategy. By employing these tools during the client’s normal course of business, client can take measures so that their business can progress considerably, monetise and gain a competitive advantage in the market.
DISCLAIMER: The information provided in this article is for educational purposes only. The same cannot be construed as legal advice.