Types of Patent Information Reports & Objectives and ...€¦ · Patent Strategy and Analytics...
Transcript of Types of Patent Information Reports & Objectives and ...€¦ · Patent Strategy and Analytics...
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Types of Patent Information Reports & Objectives and Motivations of Patent Landscape Reports (PLRs)
Anthony Trippe Managing Director – Patinformatics, LLC
WIPO Regional Workshop on Patent Analytics National Institute of Industrial Property (INPI)
Rio de Janeiro, Brazil – 26 August 2013
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Different Types of Patent Information Reports
• Patentability / Prior Art
• Freedom-to-Operate / Clearance
• Validity
• Watches or Alerts
• Landscape
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Patentability / Prior Art
• Performed in the legal context of determining if a new invention is eligible for patent protection
• Also used to determining how broadly the claims for the new invention can be written
• Can cover both patent and non-patent literature
• Typically looking for references that were published before the filing date of the invention in question.
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Freedom-to-Operate / Clearance
• Involves an organization asking for a legal opinion on whether a product they are planning on shipping will infringe any existing patents before they launch
• The search involved is very specific since it is country specific and only applies to in-force granted patents and their claims
• Analyst in this case needs to identify the critical components of the product in question
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Validity
• The object of the search involved with this report is to identify prior art references, which will allow a granted US patent to be made invalid during a re-examination before the particular patent office of interest or during a court proceeding
• Shares similar characteristics to Patentability but is normally far more comprehensive since there is typically much more at stake
• References in question can come from the patent or non-patent literature
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Watches or Alerts
• A process for monitoring newly issued patents, as well as possibly pending patent applications
• Patent alerts are also performed in order to determine if patent documents of interest undergo a change in status
• Organizations also set up patent watches to monitor new patent applications coming from competing organizations in high interest technologies
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Landscape • An overview of patenting activity in a field of technology
• Normally seeks to answer specific policy or practical questions and to present complex information about this activity in a clear and accessible manner
• Industry has long used patent landscapes to make strategic decisions
• Public policymakers are increasingly turning to landscaping to build a factual foundation before considering high-level policy matters
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More on Patent Landscaping
• Five to ten years ago, when some one asked for a landscape they were looking for a map or a picture of what the subject area looked like
• More recently the term has meant identifying the “lay of the land” or exploring various aspects of a subject area including looking at the organizations involved and the time periods in which they operated
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OBJECTIVES AND USERS OF PATENT LANDSCAPE REPORTS
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Patent Information as a Tool of Public Policy
• WIPO in cooperation with the Food and Agricultural Organization (FAO) organized a Symposium on Public Policy Patent Landscaping in the Life Sciences
• “Policymakers who deal with innovation and access in the life sciences – concerned with agriculture and food security; public health and pharmaceuticals; and environmental issues – have increasingly focused on the patent system. They look for clearer, more accessible and geographically more representative information to support key policy processes.”
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Patent Analysis for Public Policy Decisions
• Can be applied at various governmental levels
• Global efforts – bringing essential medicines to all nations
• Regional efforts – bringing technologies to bear to assist developing countries
• National efforts – for developing innovation and funding policies for country wide technology programs
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• Licensing Out - Lead Identification
• Licensing In - Lead Identification
• Industry Technology Profiling
• Competitor Technology Profile
• Strategic Technical Planning
• Technology War Gaming
Business Activities for Patent Landscaping
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MOTIVATIONS FOR GENERATING PATENT LANDSCAPE REPORTS
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Why Develop Patent Landscapes?
• Too many decisions are made without proper intelligence or analysis
• The “old boy” network or rolodex model applies
• Too often analysis is being done by individuals who do not understand the nuances of patent information
• We owe it to our organizations to get involved and come up with the best answers we can
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Why Develop Patent Landscapes?
• They are tool to assist with long term strategic technical planning
• They involve work processes for helping technical decision makers make smarter decisions faster
• They include analytical process that transforms disaggregated technological information into relevant strategic knowledge about your competitor’s or a subject’s technical position, size of efforts and trends
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Why Develop Patent Landscapes?
• From 1966 -”We have the choice of using patent statistics cautiously and learning what we can from them, or not using them and learning nothing about what they alone can teach us.” - Schmookler, Innovation and Economic Growth pg 56
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What is Analytics Not About • What is it not?
• For Patentability
• For Validity
• For Freedom to Practice
• Not about information its about intelligence
• It is about trends and forecasting not about focused and specific information retrieval
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The Philosophy Behind Analytics • Actionable Intelligence
• Intelligence Cycle • Define needs and prepare a plan • Collect source materials • Analyze the results • Impact the business
• Information when analyzed becomes intelligence • Intelligence directed towards a business decision becomes
actionable • Must be used by the decision maker
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Q: What is the most important commodity you can contribute to management in your organization?
The Philosophy Behind Analytics
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A: Time
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Providing Time
• Not data, not intelligence, not alternatives
• All vital but at end of day, the most valuable commodity you can provide is to save a decision maker time
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By:
Gathering the data Coming up with the alternatives Developing the intelligence And then...
How Do PLRs Add Value?
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• Boiling it down to a concise document that lays out options and alternatives
• Forming an opinion, sticking your neck out and supporting your opinion
• Developing a hypothesis and providing a conclusion
How Do PLRs Add Value?
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• Be prepared to follow-up if questioned
• Most of the time the decision makers is so busy they will not follow-up immediately
• Best results achieved when you have developed a plan and clear state your beliefs
• Executives are looking to analysts to provide an expert opinion, not raw data
How Do PLRs Add Value?
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Law of Linear Patent Analysis • Develop a Collection of Analysis Tools
• Understand the Need Behind the Need
• The Need Drives the Question
• The Question Drives the Data
• The Data Drives the Tool
• Why is this important? To a man with a hammer, everything looks like a nail - avoid
this at all costs