Due diligence and the analyses og the patent landscape
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Due Diligence and the analyses of the patent landscape Per Wendin - Kapea
description
This presentation was given on 27th November 2013 in Stockholm.
Transcript of Due diligence and the analyses og the patent landscape
Due Diligence and the analyses of the patent landscape
Per Wendin - Kapea
Agenda
• Risks of entering new product or geographical markets
• Analyses of own patent portfolio and the patent landscape
• Ways of remedying risk
Infringement
Infringement
• A party (other than the patentee or licensee of the patentee) that manufactures, imports, uses, sells, or offers for sale patented technology without permission/license from the patentee, during the term of the patent and within the country that issued the patent, is considered to infringe the patent.
Infringement
• A party (other than the patentee or licensee of the patentee) that manufactures, imports, uses, sells, or offers for sale patented technology without permission/license from the patentee, during the term of the patent and within the country that issued the patent, is considered to infringe the patent.
• The infringing party's product or method falls within one or more of the claims. Test: Reading a claim onto the technology (claim chart), see next slide.
Infringement
• A party (other than the patentee or licensee of the patentee) that manufactures, imports, uses, sells, or offers for sale patented technology without permission/license from the patentee, during the term of the patent and within the country that issued the patent, is considered to infringe the patent.
• The infringing party's product or method falls within one or more of the claims. Test: Reading a claim onto the technology (claim chart), see next slide.
• Direct vs indirect infringement vs contributory infringement etc.
Example of claim chart
Global IP overview
Source: WIPO Statistics Database, October 2012
Global IP overview
Source: WIPO Statistics Database, October 2012
Patent applications
Source: WIPO Statistics Database, October 2012
Patent families
Source: WIPO Statistics Database, October 2012
Patents granted
Source: WIPO Statistics Database, October 2012
Patents in force
Source: WIPO Statistics Database, October 2012
7.3 million patents in force and 5.17 million pending applications in 2010
Patents - geographical distribution
Japan Internet
China
Patents - technology (2011)
Source: Thomson Reuters 2012
ICT∼50%
Number of US lawsuits
Source: US Government Accountability Office GAO, Aug 2013
Number of US lawsuits
Source: US Government Accountability Office GAO, Aug 2013
Number of defendants in US litigations
Source: US Government Accountability Office GAO, Aug 2013
Sued by whom?
Source: US Government Accountability Office GAO, Aug 2013
Not cheap...
For a claim that could be worth less than a $1 million, median legal costs are $650,000. When $1 million to $25 million is considered "at risk," total litigation costs can hit $2.5 million. For a claim over $25 million, median legal costs are $5 million.
Source: American Intellectual Property Law Association 2011
DamagesSource: PWC 2013
Damages
Source: PWC 2013
Distribution of cases
Source: PWC 2013
What can/should one do?
Options
Ignore
Wait and see
Solve problem as they come
Don’tIgnore
Be proactive
Strategicactions
Don’t ignore - strategic actions
Don’t ignore - strategic actions
• Create own patent portfolio - takes time
Don’t ignore - strategic actions
• Create own patent portfolio - takes time
• Buy patents - quick but good patents are expensive
Don’t ignore - strategic actions
• Create own patent portfolio - takes time
• Buy patents - quick but good patents are expensive
• Buy insurance - cost will reflect risk
Don’t ignore - strategic actions
• Create own patent portfolio - takes time
• Buy patents - quick but good patents are expensive
• Buy insurance - cost will reflect risk
• Join patent pool - somewhat expensive
Patent landscape
Patent landscape• Who is doing it?
- A start-up
- An established industry player
- An investor
Patent landscape• Who is doing it?
- A start-up
- An established industry player
- An investor
• What will it be used for?
- General patent landscaping (e.g. management presentation)
- Cross-license agreement
- Law suit/nullification
Patent landscape• Who is doing it?
- A start-up
- An established industry player
- An investor
• What will it be used for?
- General patent landscaping (e.g. management presentation)
- Cross-license agreement
- Law suit/nullification
• How much time/money am I prepared to pay? (50%-75%-95%)
- Internal/external
General Patent Landscape
• ”10,000 m overview” (or lower)
• Trends
•Major patent holders
• Key patents
• Areas of high/low patenting
Patent landscapeEstablish a view based on
- IPC class
- Key words
- Assignees (eg. Competitors)
- Inventors
- Time/Trend
- Countries
- Legal status
Example of Patent landscape
Key word: Chain saw
Example of Patent landscape
0"
100"
200"
300"
400"
500"
600"
1994" 1995" 1996" 1997" 1998" 1999" 2000" 2001" 2002" 2003" 2004" 2005" 2006" 2007" 2008" 2009" 2010" 2011" 2012" 2013"
Chain&saw&Applica-ons&
Key word: Chain saw
Example of Patent landscape
Key word: Chain saw
Example of Patent landscape
Key word: Chain saw
Example of Patent landscape
Infringement - what do I do?
Infringement - what do I do?
• Patent vs. application
Infringement - what do I do?
• Patent vs. application
• Validity (here: fee paid)
Infringement - what do I do?
• Patent vs. application
• Validity (here: fee paid)
• Ignore
Infringement - what do I do?
• Patent vs. application
• Validity (here: fee paid)
• Ignore
• Design around
Infringement - what do I do?
• Patent vs. application
• Validity (here: fee paid)
• Ignore
• Design around
• Business solution: Cross-license/take license
Infringement - what do I do?
• Patent vs. application
• Validity (here: fee paid)
• Ignore
• Design around
• Business solution: Cross-license/take license
• Legal solution: Find prior art and invalidate
Infringement - what do I do?
• Patent vs. application
• Validity (here: fee paid)
• Ignore
• Design around
• Business solution: Cross-license/take license
• Legal solution: Find prior art and invalidate
• Withdraw product from market
Who pays whom?
Your patents
Their sales
Your sales
Their patents
%
%
You need patents that read on competitors’s products - not your products.
