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PATENT LANDSCAPING

Prevention and Response Checklist for Victims and Investigation Agencies

PATENT LANDSCAPING

By Dr. Vinod Surana

Overview

A patent is an exclusive right granted by a sovereign authority for an invention. It can be a product, process, a novelty or an improvement, or a solution to a problem. It plays an essential role in encouraging innovation and developments across all sectors. Inventors gain exclusive rights to the process or design for a fixed period (which varies per jurisdiction), In exchange, the creator must provide particulars regarding the invention.

Patents both incentivize and protect companies in research and development. The exclusivity granted by patents allows monopolistic production and sales of a creator’s work; absent that right to exclusivity, inventors’ creations could be duplicated by others who have not invested in R&D. It is essential to note that Intellectual Property Rights are territorial in nature; freedom to operate and patent analysis plays an essential role in determining the legal status of the granted patent in a country.

The Problem?

“Tens of millions of published patents and patent applications are available for review by the public” The sheer volume of knowledge makes it difficult to categorically weigh the value of available resources and consequently, the legitimacies surrounding an IPR.

The Solution!

Patent landscapes (patent maps) provide an overall trend of patenting activities and opportunities in specific fields of technology. It provides a constructive skeleton for answering specific policy related questions and reflects complex information in a clear, concise format. Patent landscaping helps to make strategic decision on investments and research, and to develop a factual foundation and insights into competitors’ activities (IIIPRD, 2016; Roman Kopytko)

By providing graphical representation of patent meta-data, patent maps help organizations, investors, and agencies to identify patents within a technology domain, correlate among different patents, gauge risks, and stay alert to zones of infringement.

Importance of Patent Landscaping

Patent landscaping provides valuable business insights, advancing an edge over competitors. Business strategies utilize the information starting with dominant players in the sector to source available solutions, identify gaps, and open new hemispheres of opportunities in tech domains. Figure 1 depicts the importance of Patent Landscape Analysis when an entity wishes to launch their product in the market.

In addition, companies become more equipped to develop new licensing strategies and improve their existing products besides merely identifying commercial value of existing patents. Patent database searches net only live patent details, with searches additionally restricted to jurisdiction ( I.e., live patents are searched only within India or the US, depending on the country of application). If you have invented new data sharing methods over the internet that you wish to patent, there may certain infringements Individuals or organisations have the option to buy that patent, initiate a joint venture with the other party, or establish a share agreement.

Figure 2: Patent landscaping report for electronic waste management (World Intellectual Property Organization, 2013).

Figure 2 represents a patent landscaping report for electronic waste management. It shows extensive growth in patent families dealing with hazardous Cadmium from batteries, battery dismantling and use of conveyor belt for e-waste logistics and sorting from 2006 to 2010. The number of patent families from 1980 (50 families) to 2010 (650 families) have increased with majority countries adjoining the Asia Pacific region (Japan, China) followed by the USA, Germany and Korea (World Intellectual Property Organization, 2013).

Benefits of Patent Landscaping

Several companies wish to understand their relative strengths and leverage upon the collaterals. Individuals or organisations who are developing new mechanisms, tools and technologies can rely on patent landscaping reports. The risk assessments can be streamlined and the nature of investments required can be gauged. Benefits include capacity to:

  • Identify all patents that are associated with a relevant technology.
  • Gauge risks postulated by other competitors.
  • Avoid IP infringement.
  • Identify the nature of investments required for Research & Development.
  • Answer: Is your innovation ‘actually’ an innovation?
  • Understand the dynamics associated with underlying technologies.
  • Protect market entry plan by preventing IP infringement.

Components of a patent document

Applicant:

The entity who presents an application for the grant of an industrial property right is an applicant. It can be the inventor or a representative of the inventor.

Dates:

Patent documents include application filing date, priority date, publication and grant date. These date establish when inventions were developed, time taken to improve the application and what modifications were made to the previous draft when filed.

Text:

Patents contain title, abstract, description and claims that define the scope of the IPR. Boolean keyword search assists in constructing queries to extract relevant results for example: Smartphone AND NFC technology AND gesture control. This query will fetch results that will search through “Smart phones with NFC and gesture control technology”.

Classification codes:

Class codes are labels assigned by the patent authoritative office meant to classify the patents. Patents have multiple class code like the US class codes (USPTO), European Classification codes (ECLA) and the Cooperative Patent Class codes (CPC).

Citations:

Patents have citations relevant to their topic that evaluates the veracity of  the information.

Claims:

At least one claim is included in every patent application. It is mandatory to include all technical features of the discovery which are vital, all essential details required to solve the technical problems that gave birth to the innovation and the development that the innovation brings.

Family relationships:

Patents have unique family relationships referred to as the Family ID. It may include several publications of the patents and therefore develop a relationship chain.

There is no known framework that defines the process of PLA. Figure 3 illustrates a step by step guide to a systematic PLA process (Smyth et al., 2013; Trippe, 2015).

Each country generates a separate report. There are several considerations depending upon jurisdictions. Search parameters include a set of keywords that are essential for a product that help narrow the search dimensions. After the initial assessment, one must understand the key components or features of their product.

Patent search sources include individual patent office websites like IP India Services (https://ipindiaservices.gov.in/publicsearch), Worldwide Espacenet (https://worldwide.espacenet.com/ for global search) and USPTO (https://www.uspto.gov/patents-application-process/search-patents for USA).

If there is an IP infringement issue, one can modify the design or process to dodge the specific issue  or meet necessary requirements. Alternatively, applicants may  use this as an early assessment to identify areas of collaborations, purchase and joint agreements. If the product does not infringe any patents, one may pursue the patent if the technology is likely to meet the patent criteria. Alternatively, if one wishes to not pursue the patent, then a ‘defensive publication’ or a ‘technical disclosure’ can be opted for.

Automated Tools

The automated process of conducting a PLA is based on a set algorithm that is powered by a collection of facts by the creator. Exploring extensive amounts of data (scientific papers, journals, reports) can be exhaustive, time and resource consuming (Abood and Feltenberger, 2018; IRPD solutions, 2020). Automated patent landscaping tools quickly implement key words, sift through enormous data and deliver a preliminary overview accompanied by graphical representation. The process is swift, known to have lower accuracy levels (less than 80%) and excellent for people who wish to review information quickly (IRPD solutions, 2020). Examples of automated tools are: (Abood and Feltenberger, 2018; IP Checkups, 2017):

  • The patent lens
  • Clarivate analytics
  • CPA Global
  • Lexis Nexis
  • PatentCAM

Conclusion

Patent landscaping involves considerable time and resources; many who conduct such assessments are unaware of the associated technology or lack relevant scientific skillsets. Improving search methodologies, utilizing proper keywords and commercial tools will boost the accuracy. PLA plays a pivotal role in determining the value of your product by giving the entity a pre-assessed playground to bat on. With a PLA one can avoid IP infringements, modify their products or make alternate implementations to their processes. The costs involved pale in comparison to the litigation costs that may accompany future infringement issues. The companies will be at lesser risks while they can gauge innovations alongside budgeting for R&D. Preliminary analysis with the help of automated tools can be recommended for quick information, with the caveat that analyst must have the specific qualifications and scientific background required to conduct the search, identify keywords, associated technology and understand the scientific methodologies.

References

Abood, A. and Feltenberger, D. (2018) ‘Automated patent landscaping’, Artificial Intelligence and Law, 26(2) Springer Netherlands, pp. 103–125. Available at: 10.1007/s10506-018-9222-4 (Accessed: 16 October 2020).

IIPRD (2016) Basics of patent landscaping., medium.com Available at: https://medium.com/@iiprd/basics-of-patent-landscaping-68b21000c012 (Accessed: 16 October 2020).

IP Checkups (2017) Patent Landscape Analysis overview. Process, benefits, and outcomes. Available at: https://www.ipcheckups.com/blog/patent-landscape-analysis-overview/ (Accessed: 16 October 2020).

IRPD solutions (2020) When To Use Automated Patent Landscape Tools?., Evalueserve Available at: https://www.evalueserve.com/patent-landscaping-to-use-or-not-to-use-automated-patent-landscape-tools/ (Accessed: 17 October 2020).

Roman Kopytko (2017) The Basics of Patent Landscaping., Wellspring Available at: https://www.wellspring.com/blog/the-basics-of-patent-landscaping (Accessed: 16 October 2020).

Smyth, S.J., McPhee-Knowles, S., Baker, A. and Phillips, P.W.B. (2013) ‘Developing a patent landscape methodology’, Queen Mary Journal of Intellectual Property, 3(3), pp. 251–266. Available at: 10.4337/qmjip.2013.03.05 (Accessed: 18 October 2020).

Trippe, A. (2015) Guidelines for Preparing Patent Landscape Reports. Available at: https://www.wipo.int/edocs/pubdocs/en/wipo_pub_946.pdf (Accessed: 19 October 2020).

World Intellectual Property Organization (2013) Patent Landscape Report on E-Waste Recycling Technologies. Basel Convention. Available at: www.wipo.int/patentscope/en/programs/ (Accessed: 12 November 2020).

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