Using Patent Information in Your Organization

1. Using Patent Information in Your Organization

2. Patents as Information Sources • Patents are used as: • Sources of legal information • Sources of business information • Sources of technical information

3. Why Patents? Source of Business Information • Understand who is doing what, uncover licensing opportunities for companies, reveal strengths/weaknesses of a company’s technology portfolio, discover joint venture or other “relationships” with other companies, etc. • Example: You want to learn who the major technical players in a certain industry are ...do a patent search!

4. Case Study: The Patent Board™ • The Patent Board is an independent provider of tools & metrics for patent analysis & IP investing. • Focus on patent portfolios as measurable financial assets & drivers of market value. • Patent data is used as a valuation tool to measure a company’s level of innovation & strategy, compared with industry levels. “Patents and patent portfolios have emerged as a distinct asset class and a driver of value for most technology sectors.” Eric Gillespie, COO

5. The Patent Scorecard in the Wall Street Journal • No longer PUBLISHED in Wall Street. • Online http://online.wsj.com/mdc/public/page/2_3022-macromkt.html

6. Patents – Business Information • Who is a company collaborating with? • universities, research centers, other companies? • Who else may be listed as an assignee? Where are the inventors from? • How large is the research staff working on a specific area?

7. Patents – Business Information • Reassigned patents may also allow you to unveil which patents may have been sold to another company. • Be careful: Reassignments do not NEED to be reported to the USPTO.

8. But, what is the “right” answer for any particular client? You may think you know if you’ve worked with them before, but be careful – what was good before may not be what’s needed the next time. Many scenarios... • The client doesn’t expect to find an answer. Perhaps they even hope they don’t [for prior art or clearance searches]. • The client thinks only a few well-focused articles can help them with the decision they are trying to make. • The client wants an overview on the subject in order to figure out where to direct project resources. • The client knows that a large amount of literature and patents [prior art] exist on a subject, but wants to find the potential gaps in technology that can open up certain areas of operation. • The client knows the research area very well and wants you to confirm what he or she already knows. • The client is generally uninformed in the research area. • The client actually does want a complete and exhaustive search of all published literature on the topic in question. Excerpted from “Patent Searchers: An essential value to clients”, by Alison Taylor, Searcher, March 2005, p. 30.

9. Applying Patent Information in Your Organization • Types of searches • Company Profile/Landscape/Portfolio • State of the Art/Technology • Citation Search Analysis • Patentability • Freedom to Practice • Invalidity/Opposition • Legal Status • Presenting results Competitive Intelligence

10. Company Portfolios • An attempt to reconstruct an accurate record of the IP holds of a company or individual • Can include non-patents, trademarks, design & domain names • Patents include those: • originated by the company • Acquired by the company • “leased” or licensed technology • It should not include patents that have been sold or re-assigned to another company unless the purpose is to identify innovate capacity

11. Company Portfolios (2) • Start with a patent assignee search. Must consider: • Company name changes over time • Minnesota Mining Company to 3M Innovative Properties • Companies that may have been acquired • P&G has acquired Tambrands, Clairol, Gillette, etc. • Use of subsidiary names • Tools such as Derwent Patentee Codes, IFI Standardized assignee names & the Directory of Corporate Affiliations can make this easier

12. Company Portfolios (3) Create charts/graphs of the following to see trends • IPC or US class codes to see technology areas • Priority Country to see where research is being done • Priority Year VS IPC codes to see time trends for a technology area • Inventors to see who are technology leaders in company • Inventors VS Priority year to see when they did the work

13. State of the Art • A state of the art search provides a broad overview of a field of technology • Includes patents & articles (option of requester) • Not exhaustive (general retrospective review) • Can be used to identify: • Manufacturers/competitors • Key technologies in the field • Show gaps or “whitespace” that can be exploited • Takes skills similar to patentability but is broader in scope • Consider using analysis tools to show trends

14. Patentability (aka Novelty or Prior Art) • Patentability searches are done to identify prior art that may prevent a patent from being granted or limit its scope. • Prior Art can be Knowledge/information made available to the public by means of a written or oral description, by use, or in any other way • patents, journal or new articles, research disclosures, press releases, exposures to public, actual products This means you must search more than just patents though patents can be a good place to start

15. Patentability (2) Tips for patentability searches • Meet with the inventor & patent attorney to: • Identify and clarify the novel concepts • Ask for any known inventors/companies/prior patents • Identify keywords/synonyms • Identify scope • Example, the idea is a closure on a flexible package for baby wipes. Do you need to search rigid packages? Do you need to search household cleaning wipes?

16. Patentability (3) • Start simple with focused keywords • Use this strategy to find some good patents on the topic • Analyze the results for IPC codes, indexing terms and “patentese” • Expand your search with new terms • Use Citation searching (forward & backward) to find more relevant results • Read & Compile for your clients

17. PATENT CITATION SEARCHING • Allows you to move forward and backward in time. • Find new, unknown information based on older, known information. • Track use of your research or a competitor’s research. • Backward through “Cited References”. • Forward through “Citing References”. • Uses cited references as subject terms. • Explore hidden connections between patents. • PAST PRESENT FUTURE

19. 1996 patent 1982 patent 1957 patent Patent Citation Searching Traditional search Cited reference search 2004 patent 2001 patent 1987 patent 1993 patent 1999 1999 1996 patent 1982 patent 1957 patent

20. Patent Citation Searching - Free • USPTO • References Cited [Referenced By] • Esp@cenet (European Patent Office) • Cited Documents (only for EP & WO patents)

23. Patent Citation Searching - Fee • Derwent Patent Citation Index • Cited and Citing References • Chemical Abstracts • Cited References (1997-present only) • Thomson Science Citation Index • Includes patents if cited in an article • Many patent databases offer options for citation searching – know limits/focus

24. Freedom to Practice aka Infringement aka Clearance • Also called Freedom to Market, to Use, to Operate • Purpose is to avoid infringing any patents in whatever you to want to do, sell or make • Need to search IN-FORCE patents specific to the country in which you will practice • Claims are the relevant part of the patent • Patent attorney or agent is need to provide legal opinion on scope of claims

25. Invalidity/Opposition/Validity In an opposition or invalidity search, you try to find prior art to a competitor’s patent that was not considered during examination in order to: • Prevent enforcement of the competitor’s patent • Persuade the patent office to cancel patent rights • Determine the level of risk before practicing invention • Defend against lawsuits • Negotiate settlements

26. Invalidity/Opposition (cont’d) Different from other searches in that you • Narrow focus on patent claims • In searching • In reporting • Directs attention to specific teachings of cited art • Related art omitted • Search limited to art published BEFORE patent’s priority date • May have more Financial incentive to search in depth • Damages • Legal fees

27. Invalidity/Opposition (cont’d) • These are handled differently for each country • European patents have an opposition period for 9 months after the grant date • Prior art must have been published before the priority date • In the US, granted patents are assumed to be valid and are opposed through invalidation proceedings in the Federal Courts • Grace period: art must be published more than one year before the earliest US filing date of the patent • Public use of the claimed invention must be in the US to invalidate

28. Legal Status It may be necessary to determine if a patent is in force or who the valid owner is • Patents can “expire” for a several reasons • Time – can be calculated from priority or publication dates depending on the country. • Nonpayment of fees • Patents can be reassigned or sold like any other asset. • Licensing deals may be mentioned in business databases such as PROMT & ABI-Inform

29. Legal Status (cont’d) • Sources of Legal Status information: • US Public PAIR – http://portal.uspto.gov/external/portal/pair • INPADOC (online hosts, Delphion) • Epoline Online European Patent Register http://www.epoline.org/portal/public/registerplus • IFI Current Patent Legal Status Database (US only, online hosts) For some countries, you may need to contact the Patent office directly

30. Presenting results • Present the facts but do not make legal interpretations of the patents! • Best to quote sections directly from the patent • Consider programs that automate the process • Biz Int Smart Charts (http://www.bizcharts.com/) • Imports online results from STN/Dialog/Questel-Orbit into customizable chart • Can be exported to html, Word or spreadsheet • STN Express Table Tool, Report wizards • Dialog Link Report template Builder • Micropatent Report Generator, etc.

31. Biz Int Smart Charts

32. Presenting Results Visually • Consider using patent databases that allow you to manipulate data to create new information (e.g., export to Excel to sort, create charts). • Consider including bar charts or some other chart to visually reproduce and present the BIG PICTURE quickly for your client/patron/customer.

33. WIPO PatentScope Graphics Tool

34. Conductivelayers Active layer Module fabrication Solar technology IP – active companies, targeted areas and timeline (1981-2006)

35. FIBER GLASS With Chem Abstracts generated labels

36. Clean Energy Patent Growth Indexhttp://cepgi.typepad.com/

37. Patent Assignee Chart

38. Geographic Distribution Chart

39. Other possibilities – Explore!

40. Search Reports Develop a search report template • Purpose of the search • What you searched & when • Sources used • Summary of results/Executive summary • Results • Could be charts, graphs, spreadsheet or simple list of patent numbers • Search history – useful if you have to update the search sometime in the future

41. Current Awareness • Alerts & RSS feeds available on many sites • WIPO PatentScope • FreePatentsOnline • FreshPatents.com • Fee-based providers have more options

43. Other Services • Patent Translations • Japanese Patent Office has machine assisted translations form Japanese to English • www.paterra.com (Japanese-Korean (others) English Machine Translations • KIPRIS (Korean to English Machine Translations) http://eng.kipris.or.kr/eng/main/main_eng.jsp • Patent Mining, Mapping & Analytics • Aureka, Anavist, Thomson Analyzer, etc.

44. Key to Patent Searching Finding a piece of information in 1 place, and carrying it to another for further research & exploration.

45. Defining Your Search • Prior to performing a patent search (really any search), you need to address: • What Information Do You Have? • What Information Do You Need? Answering will help you create your search strategy

46. What Information Do You Have? Inventor(s) Company/Assignee Patent/Application Number Publication/Patent Dates/Years Class Code(s) Intl or National Subject or Key Words (synonyms) What Information Do You Want? Abstracts Citations Claims Copy of Patent English Language Equivalent Family Data Full-Text Images International US Only Legal Status Create a Worksheet* *This one based on a Dialog Patent Seminar Worksheet

47. Choose Your Path....Wisely • Know what your customer NEEDS to answer his/her question • Review & select databases based on subject coverage, patent coverage, cost factors • Limit database range/coverage (years and patent countries, other info needed) • Input search terms (structure, codes, text, etc.) using available proximity & boolean search operators (L, S, near, with, etc.) • Focus search scope (Abstract/Indexing; Claims only; full-text) • Limit search further using other fields/delimiters needed • Scan/review results • Refine, if needed [9.] Analyze results [10]. Compile report

48. Exercise (Discussion): • See article. One of your clients came to you with this article and asked if you can find some information regarding the technology. What would you do?

49. http://www.ornl.gov/sci/eere/documents/No_1_1999.pdf

50. After questioning the client, you learn that they are really interested in seeing patents (and they want to see the actual patent documents, instead of summaries) about this specific technology. Pick out the key terms you might be able to search on [information you have] TRY/TEST EASIEST PATH FIRST