Showing posts with label Patent Landscapes. Show all posts
Showing posts with label Patent Landscapes. Show all posts

Wednesday, 11 July 2012

Patent Landscapes: Common Pitfalls Series – I

How to conduct better patent landscape study

In my previous posts (Myth Series one, two), I tried to list some of the myths related to the use of patent landscape studies. In this post, I will explore common pitfalls while executing a landscape study and extracting the highest value from the analysis. This post can be useful to analysts and managers with responsibilities to conduct and/or commission patent landscape studies. Some of these points are also valid for business, marketing, and general research.

Pitfall 1 : Data import/export is not always correct
As analysts, we rely on third party databases and the provided data exports. We rely on the result set appearing after uploading the publication number. But do we go back and check if they are correct?
Few examples are, inclusion of false positives, wrong reassignment information, wrong legal status, faulty family family build, No. unique id for family, etc.

Solution: Next time you start analysing the data, pay attention to families which are unusually large, assignees that are not known to be active in the researched area (say Nokia in Pharma), kind codes of Asian countries (esp JP,CN), do random checks on the details provided by the database

Pitfall 2 : Using wrong bibliographic field for answering right question
Patent data can provide direction towards answering business and technical questions. But are you using the right metric to do that? Also, are you providing incomplete answers by only looking at a certain field only? These are the most common mistakes that I have observed in landscapes available publicly.

Solution: Understand and analyze the problem. The best way is to break a question into smaller questions and attack it by analyzing various fields. A top quality solution is to have a direct answer complemented by data to validate. You should know when to use latest publication data vs. latest priority date vs. earliest priority date. Patent is a legal instrument. To be a skilled analyst, you need not be a lawyer but should have very good understanding on patent law and prosecution process.

Pitfall 3 : Overly process centric approach
Do you have set rules/templates/macros to do your landscape report? Is yes, then you may be called a killer of creativity. Pick up books on business research and IP research, a lot of authors and experts suggest that patent analysis is a science (so called patinformatics) but at the same time it is an art.

Solution: I do not say we should not have tools to make the analysis process efficient. However, while doing any analysis one should think about the problem, or the research question and be creative in presenting and conducting research. Remember, you are also an artist!

Pitfall 4 : Complex category structure to address simple objectives
In many occasions, patents need to be categorized into logical categories to answer specific question or to understand parts of a technology/company. It is recommended to follow the famous MECE principle to do this. However, in many instances the risk related to taxonomy/bucketing/categorization schedule is to go either very deep or very shallow. This may lead to complete failure, in-correct insights, wasted effort, and over complexity of technical details.

Solution: Spend enough time in preparing a usable taxonomy, discuss with the end users (if possible), test the category on regular basis. If there is a need, it is not bad to have overlapping categories and non compliance to MECE principle. The technical subject may be too complex to have exclusive category or you may not even need very complex category. The taxonomy should be flexible enough to include exceptions and odd items. While creating a taxonomy schedule, KNOW WHEN TO STOP & BE FLEXIBLE!

Pitfall 5 : Great analysis but bad communication.
I think this is one of the most common pitfall. You may need to report your findings/research output/insights to your client/researcher/marketing team/ BD team. The analyst or researcher may not always gets an opportunity to present his/her findings to the end client. However, this may cause great loss both the end users and the research team. Sometime the bits of information that analysts do not feel worthy to report are really useful to the end user. Also, timely feedback from the end users help the research team to plan their research accordingly for the future. Role of communication is not overstated in all the management text books, communication is also an important part of the entire landscape research exercise.

Solution: It is highly recommended to have an open discussion between the landscape researcher and the end user. In my view, not all great technically skilled person are good communicators. Hence, they should either identify one in the team or up skill themselves to communicate the ideas clearly. The big message is "GO BEYOND DATA DUMP"!

I hope you will find this useful and next time you will watch your research steps to avoid these pitfalls. Comments & suggestions are invited.

Happy Researching!

Please note that these are my personal opinions not my employer’s.

Friday, 16 September 2011

US Patent Reform made easy - What's in it for you!

Introduction:

This article is for the people who are in the technological world and their profession either involve patents or affected by patents and intellectual property. This article is a time saving guide and provide prospective of the recently passed Leahy-Smith America Invents Act 2011. 

" Yes! we can"

On Sept 8, 2011 the Leahy-Smith America Invents Act bill passed by both houses of the U.S. Congress and finally Mr. Obama signs it today (16th Sept,2011) to make it as a part of US patent Law.  

This is the fourth attempt to introduce significant changes in U.S. patent law, and closely resembles previously proposed legislation in the Senate in its previous session (S. 515, see the Patent Reform Act of 2009). In this bill the most significant aspect is the transition from a "first to invent" to a "first to file" system. It has been referred as the first significant change to the U.S. patent system since 1952. 

What is US Patent reforms Act?

Patent law reform, as with other law reforms, is the process of examining existing laws, and advocating and implementing changes in a legal system, usually with the aim of enhancing justice or efficiency.


Why so much Noise recently?

1. This reform is a landmark in American patent history as it shifts from first to invent to first to file. This harmonizes with the rest of the world. The apprehension is that changing the tenet that put the United States as the topmost innovative nation in the world might not be to its advantage.

2. Fees diversion: There is still a lot of noise on this issue, the fees that innovators pay is diverted by the government into other channels and is 

looked upon as a tax on innovation.

3. It took long to overhaul the patent law and Finally its happened!


What are key provisions on this reform? How it will affect the patent laws in US? What does it entail?

1. First-to-file system
2. limits on patent marking ”trolls
3. Post-grant review
4. Courts have made it harder to get a patent invalidated by alleging that someone misled the patent office
5. The bar is now higher for what is patentable.

Following Map outlines most important provisions of the US Patent reform act. 


Image content not readable? Just CLICK HERE to open in a new window for better readability.
US Patent Reform - Simplified


How it may affect the industry?

According to USPTO, the cost of proving who was first to invent, under the current system, is an average of $400,000 to $500,000 in legal fees to engage in interference proceedings. Those costs can double if a case is appealed. By contrast, under the legislation, a $110 provisional application will establish effective rights to an invention, securing first-inventor-to-file status with no risk of subsequent disputes. The USPTO believes that the near- and long-term effects of certainty, predictability and reduced costs of the first-inventor-to-file system will benefit all stakeholders, both small and large entities, regardless of the area of technology.



Concluding Remarks


Law will take it course, this common one liner fits well with this reform act as well. "Yin" and "Yang" discussions around this reform has started happening but How it will change patent world is yet to be seen. All we can do is to start accepting this as a way of life and start working towards incorporating it in practice. Lets all hope for the best for invention, inventor, and industry!



By: Dr. Sarasija PadmanabhanGovind Kedia

Please feel free to share insights, thoughts, and additional information on this subject.
If you liked it, share it!
-------------------------------------------------
The article has been jointly written with Dr. Sarasija Padmanabhanwho is registered patent agent at Indian Patent office. Please note that the information by no means is complete and may need further research. Writers are not responsible for any error in the presented data . This article does not represents writers' employer position on the subject .
Please do not copy/reproduce mind-map for commercial use without permission. Its against copyright Law! 

Thursday, 16 September 2010

A guide to Patent & Innovation Benchmarking

In this article, I am trying to outline some ideas and thoughts that should be kept in mind while conducting benchmarking studies. It is very common in corporations to benchmark themselves against their peers in the industry. It could be for variety of reasons for example, measure R&D effectiveness, cost control, find strategic insights etc.

Before jumping on practical challenges, there are some basic concepts that should be kept in mind before conducting these studies.
1.  What kind of benchmarking you are going to conduct?
There are two types of benchmarking
A. Internal benchmarking: These types of benchmarking studies are conducted to see how various divisions are doing in terms of protecting their products, utilizing budgets, etc. There could be variety of parameters on which divisions can be benchmarked and companies may seek to find best practice within each division.

 B. Competitive benchmarking: These types of benchmarking studies are conducted to see how company is performing in its task environment.  These studies may provide valuable insights if conducted accurately. These studies could reveal pattern, best practice employed by other players in the industry, impact of patents filed by the company etc.


2. What is objective of the study?
For any benchmarking study, analyst must freeze the objective of his/her study. Who is going to be seeing the report? What is it that you want to find out? What you want to show to your end customer? And finally what is scope of the study?

I found following practical challenges pertaining to these studies:

Availability & accuracy of data: One of the biggest challenges in conducting benchmarking studies is availability of sanitized patent data. It is very important to clean the data before putting in a nice fancy presentation.  For example, in the end result one wants to benchmark two companies in a certain country say the UK. Though, the problem statement looks very generic but it does not have a straight forward solution. One must look very deep into the data to get exact figures. Analyst will face challenges in getting EP granted patents designated in the UK or granted but lapsed, add acquired assets, discount divested assets, check correct assignee of publication, remove duplicates, and so forth. Unfortunately none of the commercial database to my knowledge gives error free data. Only solution to this problem is manual analysis!

Lack of understanding:  In some cases a superficial understanding of the parameter, nature of task environment, and legal intricacies could also lead to unfruitful study. A researcher should make a thorough understanding of key variables involved in the study.

Overlooking other factors & misinterpretation: Analyst should not Oversell patents! It is undisputed fact that patents play a major role in business. However, that’s not all. It is not recommended to credit or discredit patent benchmarks for organization performance.  Conclusion from benchmarking should be derived after looking at market, regulatory, legal and other business factors.

Too much statistics: It’s always good to have statistical validation of benchmarking. However, researcher must not throw statistical jargons to make things look sane. Follow the KISS! Keep it simple and sober.


Handy Skills
In my view these skills could add value in the analysis and somewhat important for conducting these studies (in no particular order)
1. Strong Business Research & Understanding of business 
2. Understanding of Patent laws & Data
3. Advanced Microsoft Excel
4. Visualization techniques
5. Understanding of Managerial Issues


Possible Audience & Possible applications
Patent and innovation benchmarking could have wide variety of audience and it is important to customize the result based on audience. Strategic thinkers, lawyer, R&D heads, marketing could derive endless benefit from such exercise.

Note: It would be great if readers could also leave their comments and share best practices and make this write up more interesting. 

Thursday, 12 August 2010

A report on - Where is Pakistan in the Patent World







Setting the Context:

For some of us who decided to read this report (esp my countrymen) this may shock you
“Yes, Pakistan has patent office and it promises to protect patents and other IP in the country!”.

Being a patent knowledge explorer, I came across to a link on WIPO academy on Global Network on Intellectual Property (IP) Academies which has been launched in order to support the work and sharing of resources, including training programs, of the Global Network of IP Academies and to provide an effective forum for exchanging of views and experiences among the members of the network. India does not seem to be part of this program.
On this page I learned that Pakistan has its own patent law system and does promise innovators to protect their patents in the country.

Scope & Safe statements:
This report is exploratory in nature and does not represent my employer’s opinion. The analysis presented in this article is based on data provided by Pakistan IPO website. I do not guarantee the accuracy of data & analysis presented here. Please free to post your comments and suggestions. I hope you will enjoy this report.

Genesis of Patents in Pakistan

Patent Act in Pakistan evolved from the original (Indian) Patents and Designs Act, 1911 and was amended as Patents Ordinance 2002 & Designs Ordinance, 2000. Intellectual Property Organization is under a Cabinet Division of Pakistani Government. However, I am not sure which ministry owns the responsibility of enforcement and protecting the rights conferred by the state. The website of the Patent office seems to be well organized and easy to navigate.

The basic premise of patentability is standard and is same as Indian law i.e. The invention should be new, involves an inventive step, capable of industrial application, and should not be contrary to law or morality. However, PTO is not much concerned about industrial application. Software is not patentable in Pakistan.

The prosecution procedure also seems to be standard viz. filing the “application”, examination and acceptance of application by the patent office, overcoming opposition, grant of patent, and sealing the patent.

Patent Statistics:

Pakistan patent office website provides data of patents granted from year 2005 till February 2010. They have used varying format for providing the data. This section is a “bird’s eye view” of granted patents in Pakistan.
Patent Grants from Year 2005 to February 2010 in Pakistan
There are around 1064 patent grants in the past five years. The patent grant in Pakistan has witnessed a steep decline. There may be multiple reasons for this. It may be due to backlog of black/mail box application relating to chemical products intended for use in agriculture and medicines. The application will be kept dormant until 31st December 2004. Also, the political instability of the state seems to have affected the patents in the country very hard.
The data provided by the PTO is not consistent and have limited information. Filing date was provided for only 424 patents. Based on this data the average grant period is around 4 years. However, some pharmaceutical patents took more than 10 years in grant process.

My further analysis point was the “brave J” applicants who are filings  patents in the state. I have noticed an obvious trend of Pharmaceutical and Chemical companies monopolizing the patent filings in underdeveloped economies. Information & Communication Technology (ICT) companies choose to stay away as Pakistan has pretty much open borders with China (politically)!

Following figure segments applicants in broad industry areas.
Patent Grants by Industry


There were three Indian companies and one individual inventor who filed patents in Pakistan. These are:
CSIR India, Godfrey Philips India Ltd,India, Cipla,Ltd,and Dr.Adhijit De

There has been a very small portion of the total filings filed by Local companies and inventors. Local sports equipment manufacturer showed trust on the national patent office and filed patents seeking protection on football, cricket bat and balls etc.

Top Applicants in each category are:


A compiled patent data could be downloaded from this link.

During the quick scanning of the data, I have seen some interesting patents. Some of them are:

  • A patent on credit card rewards system filed by Citi Financial Corporation.
  • Recording and /or playback device comprising means for writing and /or reading information blocks in an information tract filed jointly by Philips Electronics & Sony Corporation
  • A simulated smoking article filed by British American Tobacco (Investments) Ltd,Uk
  • Genes and polypeptides relating to human colon cancers filed by Oncotherapy Science
  • A mousetrap for trapping and /or killing mice filed by Reckitt Benckiser Healthcare
  • Creation method for characters/Words and the information and communication service method thereby filed by Neopad Inc.Korea.
  • Solid Fuel Stove filed by and ex. Pakistani army man Lt. Col. (R) Mahmud Shah
  • A cricket pitch filed by Lourens Steyn Australia
Conclusion:
As WIPO member Pakistan seems to be working towards the protection of IP in the country. The PTO did a fairly good job in putting up a website. However, due to Pakistan’s current Socio political environment, there has been a steep decline in the patent filings and grant in the country.


Current political environment force me to think that the government of Pakistan (don’t know who!) should be protecting the innovators first than the innovation in the company. Pakistani economy and innovation seems to be surviving only due to the foreign government and companies.

I apologize for any of my comment which may have hurt the sentiments of anyone. 

Tuesday, 20 July 2010

Patent Data Application – Series I

Law Practice planning through patent data analysis

This new series aims to find possible role of patents in decision support and business development. In this post, I am trying to list some possible applications of patent data in business planning for small and medium sized law firms.
Law firms are like any commercial entity which need cash, clients, Intangible assets, competitive edge and right business planning to stay profitable. Patent data are wealth of information that could be leveraged to find invisibles and data for strategic decision. 

In my view, the patent data can be used for:

Business Planning:

Practice location planning: Many PTOs around the world provide bibliographic data which could be used to map inventor, assignee, technology area, etc. A law firm expanding their practice and planning new offices in a country could use these data to plan offices, resources, and predict financial benefits based on past filings.

Resource Planning: Patents are indicators of technological advancements. An emerging law firm may want to plan its resource based on market demands and technological advancements in certain geographic region. A patent based trend analysis can provide interesting insights towards legal and technical resource requirements in foreseeable future.

Business Development:

Targeting New Clients: Patent data could give valuable insights about target companies. It may help the BD officers to target right in-house attorneys, assess technical areas of filings, profile target company, etc.

Finding Share of Wallet: Data analysis could help medium sized law firms in analyzing whether the top clients are using competitor law firms for their filings. This could help in gauging effectiveness of service, client loyalty, and possible business negotiation areas.

Building new partnerships: Companies file patents at various geographies. Patent data could help small and medium sized law firms find possible overseas partners who can cross refer each other in case of patent family extensions. This analysis could be done looking at various angles.

Competitive Benchmarking & Intelligence

Benchmarking Pendency: This analysis could help a law firm in making a better business pitch. A law firm with lower pendency may help in winning more accounts. Also, this analysis could be extended to see if patent filed by competition have seen significant change in claims during prosecution.

Claim Strength analysis: A semi-automated analysis to benchmark competition on claim strength.  There are various proven scoring mechanisms that could also be used to make better business case.

Resource mapping: Various countries allow law firms to put information about their practice areas and resources or various patent offices provide attorney data. This data could valuable source of information in order to map resources and law firms. This analysis is best done when complemented with primary and secondary research data.

Effective Prosecution:

Examiner relationship network: Law firms can conduct examiner relationship network to understand how examiners world together in various technology areas. Also, a technology specific network may also provide leads to HR department.

Technology area and type of rejections: A law firm specializing in niche areas or emerging technology areas may want to understand common prosecution hurdles. This may help them in better planning while drafting applications. This analysis could be combined with examiner analysis to identify any pattern.

Patent application scoring: Law firms handling clients with large volume of pending application can use proven techniques to prioritize efforts. The scoring can be done on various parameters.

Challenges:

Underlying Data: The above mentioned analyses are data intensive and require correct data for any meaningful result.

Automation: Based on my experiences with PTO data, I think data provided by patent offices around the world require lot of normalization. They are in no way ready to use for such data intensive analysis. Automation is essential for such analysis. Automation can be used for range of activities such as pulling right data from websites, normalizing & cleaning crude data.

Data handling: These analyses may involve data which may run in hundreds of thousands of records. These analyses also require correct understanding of the data. A single data handling mistake can change the face of entire analysis.

Risk of misinterpretation: “Little knowledge could be dangerous” this is true for these kinds of analysis. The end user and analyst must question the output and check the sanity of the results.

Conclusion:
These are only some ideas on patents and its application in this context. These are based on my experiences and similar consulting projects.  There could be other numerous applications of patent data that could help law firms.

These analyses are certainly worth spending time and money. These analyses could help a law firm in not only expanding its practice but also for regular health check. However, with a caveat that external factor should be considered while taking any action. These analyses can provide actionable intelligence but cannot replace human judgment and creativity. 
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