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Inhouse credit: Editor: Amoolya Jain
Last updated: 21/10/2021
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Synopsis: In todays time when everyone wants to hold claim to any new idea, patent analytics analyses the novelty of a technology and helps companies keep an eye out for potential competition. This article details how and when to conduct such analytics.
The 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.
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:
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.
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.
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 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.
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.
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).
Individual patent watch is performed when a company has different requirements. Each requirement along with the methodology adopted is enumerated below:
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:
The steps of patent watch for a granted patent includes the following steps:
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.
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 is conducted for various patents/patent applications and for different requirements, which are elaborated below:
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.
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.
The patent watch benefits companies in different ways, which are as mentioned below:
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.
K Law, Bangalore
Chinthan Japhet is a Patent Attorney and a registered Patent Agent working as a Senior Associate at K Law, Bangalore. His areas of expertise include patent analysis, patent prosecution, patent litigation, patent licensing and patent portfolio management. Prior to joining K Law, he worked with AMD Law Group, U.S.A. and Krishna and Saurastri Associates.
Mr. Japhet completed his Bachelor of Engineering in Telecommunications from B.M.S. College of Engineering, Bangalore, LL.B from University of Mumbai and LL.M in IPR from University of Illinois College of Law, U.S.A.
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