All Things Patent Blog


Leave a comment

Selecting the Right Search Provider: Distinguishing the Experts from the Novices

Selecting the right search provider

The prior art search challenge – 2

When going through the process of finding a high quality prior art search provider, you typically start by looking for a provider with experienced searchers that possess technical and academic credentials in the technologies that you are prosecuting or litigating. You look for technical expertise, access to an array of databases, good quality control processes, etc. (Please refer to our previous article on how to select the right prior art search professional here.)

What other attributes make a great search provider?

An important factor that is often overlooked and one which can be argued to be the single most important ingredient, is a search team with a deep understanding of the patents and technical publications; not from a legal standpoint, but from a standpoint of how topics and concepts are typically described in a patent or technical document. Specifically, how documents typically describe an invention, where the relevant concepts are likely to be located within and distributed throughout a document.

When selecting a search team to support your prosecution and litigation research, you need to look not only for a search team with expertise in various search tools and methods, but more importantly you need to look for prior art document experts.

Why is document expertise so critical?

Most searchers use commercial search tools that provide the searcher with a means for constructing sophisticated Boolean search queries including proximity operators. These skills, if used in combination with the knowledge about document construction, can serve as a powerful means of retrieving highly relevant prior art quickly. A searcher with this level of expertise can construct pinpoint queries capable of matching phrases within documents that discuss the salient point of an invention. However, in the hands of a novice search team these tools behave like any keyword search engine; returning sporadic and questionable results based primarily on word count matches; whereas an expert will encapsulate the inventive concepts form disclosure in their strategy due to their understanding of how these concepts are laid out in the underlying documents being searched. While semantic search tools can help with this, even the best semantic algorithms available don’t offer the accuracy required to detect the nuances important to patentability, invalidity, and freedom to operate searches.

In the next blog we will look at an example of how an expert searcher would construct a query, paying attention to their assumptions of how the inventive concepts are likely to be grouped within the documents they are searching, how these assumptions vary based on the literature type, as well as a command of synonyms for the technology domain in question.

Conclusion

Prior art search skills can be effectively assessed by testing a candidate firm through search trials, a review of their search strategies, as well as the prior art results their strategies produce. Additionally, a phone interview or conference call where the searcher walks you through the construction of their strategy can be helpful in assessing their competency. There is no single correct method of searching prior art, so the goal is to assess whether the methods are logically sound and that the searchers not only have command of the search tools but also a thorough working knowledge around the architecture of the documents they are searching.

How do I select the right prior-art search professional_banner


Leave a comment

How do I select the right prior-art search professional?

 

Key questions to ask while hiring a professional/firm to perform prior-art searches.

A patentability search and analysis are carried out to ensure that an invention would meet the novelty and non-obviousness requirements for obtaining a patent. However, such search and analysis would not be effective unless claimable subject matter is identified correctly. A patent agent or attorney needs to thereafter determine the breadth of the claimable matter by examining the disclosure along with the prior art identified in the search in order to complete the analysis.

A patent cannot claim something that already exists or is apparent on combining existing knowledge. Prior art refers to any technical information that exists prior to the effective date of a patent application that discloses the same or similar solution to the problem addressed by the invention.

Identifying relevant art that predates the critical date is a big challenge. It is important to choose a reliable prior-art search professional or firm, so that the full potential of an invention may be realized. In today’s electronic-age, anyone with Internet access and basic technical knowledge could, in principle, conduct prior-art searches. However, deep knowledge of the technical domain as well as patent law is required to analyze an invention satisfactorily for determining patentability. Appropriate usage of search tools and technical expertise are required if results are to be obtained within reasonable cost and acceptable timelines. There are a number of ways to locate a competent prior-art search professional or firm: Internet search, online directories, the patent office websites, etc.

Here are some of the key questions that should be asked by an inventor or applicant while hiring a vendor to perform prior-art searches.

Key questions to ask when hiring a prior-art search professional or firm

Indicators to predict patent litigation outcomes


1 Comment

5 Indicators to Predict Patent Litigation Outcomes

Indicators to predict patent litigation outcomes

If you are involved in any patent litigation, whether you are the plaintiff or defendant, you naturally want to know the potential outcome of your case. At this stage, it would be helpful to be able to forecast the outcome of the litigation.

Applying Data Analytics to Predict Litigation Outcomes

In the last 5 years, Litigation Analytics has gained popularity as a way for law firms and corporations to forecast the outcome of a case.

These indicators can help answer such questions:

For a case of this kind,

  • What were the previous outcomes in this domain?
  • What is the typical time-to-closure?
  • What is the success rate with a particular district court?
  • What are the trends on damages awarded?

Of course, there are many sophisticated algorithms to compute the outcome of an infringement case, but there are also other handy ways as illustrated below, to predict the outcome of the case even at the very early stages.

There is no doubt the outcome of a patent infringement case involves many other external factors like change in the policy, law, financial flexibility, ability to deal with the business disruption of the parties involved, etc. But some indicators and historic data will help you predict the likelihood of the case.

Key Indicators

In the uncertain world of litigation, metrics like time-to-closure, outcome by courts/judges, damages awarded and success rate by the traits of an opponent, for instance, can be deemed as key indicators. Using these data cues, one can very well connect the dots while evaluating the merit of a case without much complication.

For illustrative purposes, let us take the cases affiliated with the pharma industry*.

  • To analyze time-to-closure we reviewed cases filed in 2015
  • To analyze judgments by industry as well as by courts/judges we reviewed cases closed in 2015
  • To study the damages awarded by industry and success rates with regard to the nature of an opponent we reviewed cases closed from 2011 to 2015.

1. Time-to-closure

Not all district courts are patent owner–friendly. In jurisdictions such as Eastern Virginia, Delaware, or Eastern Texas a typical lawsuit goes to the trial stage and gets closed within a year, when compared to the average 3+ years from filing date to time-to-trial and then to closure with other district courts. Generally, these delays may also impact other factors like the cost to run the case, market value of the patent litigated, etc.

time-to-trial

In a panoramic view of patent litigations in 2015, we see the following statistics:

Over 550 Pharma cases were filed across various US district courts.

❏  The average time-to-closure was approximately 90 days.

❏  However, some power players took more than 325 days to contend with their opponents, for example CTE Global, Inc. and Otsuka Pharmaceutical Co. Ltd.

❏  About 70% of these cases were filed only in the district courts of Delaware and New Jersey.

2. Judgment by District Courts (or Judges)

Some US district courts have been showing a repeated pattern of outcomes in favor of either plaintiffs or defendants. Now look at the cases that closed with a judgment in 2015.

Charts to be handdrawn

Historically, the district courts of DE, Eastern VA, NJ, and Eastern TX are said to have been the favorite destinations to file cases due to their plaintiff-friendliness. However, for pharma cases given judgments in 2015, in these courts neither plaintiffs nor defendants were favored, while at the same time those in NJ slightly favored plaintiffs. This analysis can also be applied to judges and their rulings.

3. Outcomes Within the Industry

Many recent studies have revealed the outcome trends by industry. Outcomes of patent litigation can vary between industries. It is helpful to look at the outcomes within your specific field. Below are the outcomes for the pharma-related suits filed in 2015:

Charts to be handdrawn

More than 52% of pharma-related suits filed in 2015 were concluded as likely settlement and about 17% as voluntary dismissals.

4. Damages Awarded

The bio/pharma industry has been awarded the highest damages for patent litigations. Since 2011, the published value of awarded damages is more than $2.14B in the bio/pharma industry alone – Centocor Ortho Biotech, Inc. and SyntrixBiosystems, Inc. were among those who were apportioned the most expensive settlements in 2012 and 2013.

Charts to be handdrawn

In 2015, there were only two cases awarded damages in the pharma field in favor of plaintiffs – Astrazeneca AB and Monsanto. Astrazeneca, who had been combating this case since 2001 against Apotex Corporation, secured a large compensation of around $104.3M.

5. Success Rates by Traits of Opponents

NPE-vs-PEEvery year the number of litigations filed by NPEs, keep increasing. NPEs accounted for about 69% of the total cases that were filed in 2015 irrespective of industry type.

According to a recent study**, while the practicing entities had a lower median time-to-trial and a 10% higher success rate than NPEs for the last 10 years, in contrast, the median damages awarded for NPEs from 2011 to 2015 were 3 times greater than that for PEs.

While analytics becomes more and more handy and prescriptive, law firms and organizations have already started incorporating them as an essential component with their litigation strategies. By leveraging the analytical power of litigation tools like MaxVal’s Litigation Databank (or the API), you can forecast, strategize, and benchmark yourself against others.

Sources:
*MaxVal’s Litigation Databank
** PWC: 2016 Patent Litigation Study

For the methodology used in this blog and to order any such detailed custom reports, contact us at bd@maxval.com.


Leave a comment

Do Semantic “Similarity” Searches Produce Better and Faster Results?

The Prior Art Search Challenge

It is difficult to identify novelty of an invention without a thorough understanding of previous work in the field. Prior art search is essential to define the boundaries between a potential invention as claimable in a patent and the published prior art. It is common practice to perform keyword-based and/or classification-based searches of the disclosed concept. Getting a comprehensive result including hidden or unexpected prior art using classic methods is challenging, particularly when working under time constraints. The quality of the search greatly depends on how much time is spent on the search, and on the technical background and skill of the searcher.

Semantic search, similarity search or citation analysis approaches could be combined to overcome the above challenges in many cases. This article emphasizes the benefits of similarity search for finding potential prior art.

Similarity Search

A number of patent databases (both public and paid) provide similarity search options. Similarity search engines may operate in one or more of the following ways:

  1. Perform text mining and machine learning to extract contextual similarities between the target patent and the assets stored in the patent databases;
  2. Search for patents that have common citations or share citations within the same family;
  3. Retrieve a list of similar records leaving out stop words and common words such as “method”, “process” or “device”;
  4. Display potentially relevant prior art documents ranked based on the relevancy.

MaxVal validated the effectiveness of a similarity search engine¹.  MaxVal conducted similarity search for a set of three patents filed under different IPCs viz. US8315756B2, US8838292B2 and US9149609B2. In each case, the similarity search retrieved a large number of patents ranked in downward order of relevancy score, starting with the most similar with 100% rating. The top results with rating above 90% relevancy were filtered using either keyword or classification-based restriction to retrieve a handy number such as 200-300 that were easy to review. In each of the three cases, the examiner-cited references were retrieved with rating above 90% relevancy through the similarity search as shown in the table below.

Target Patent

Technology Examiner Cited References

Examiner Cited References Retrieved through Similarity Search

US8315756B2 G01C 22/00

(Decentralised systems, e.g. inter-vehicle communication)

US20100121518A1
US20140039716A1
US20130325210A1
US9092987B2
US9070022B2
US8838292B2 G05D 1/00

(Control of position or course in two dimensions specially adapted to land vehicles…)

US20030225477A1
US20040024527A1
US20040254729A1
US20080269992A1
US20060106538A1
US20070043502A1
US8315756B2
US9149609B2 A61M 25/06

(Guide tubes)

US4611594A
US5074871A
US5968057A
US5688234A
US20020026203A1
US5908435A
US20020068954A1
US7169154B1
US6517551B1
US20060135987A1
US20050119668A1
US20060253145A1
US20070191878A1
US20070208351A1

In summary, similarity search augments keyword/classification-based searches and dramatically increases the quality of the results set that needs to be examined. Thus, similarity search function could enhance the efficiency of prior art search by minimizing the probability of missing relevant prior art in given time.

¹MaxVal used Questel Orbit to test the functionality of Similarity search


1 Comment

MaxVal’s Litigation Databank to supplement Aistemos’ IP Analytics Platform, Cipher

Los Altos, CA – MaxVal Group, Inc. is pleased to announce its latest partnership with Aistemos, Europe’s leading IP analytics company, for its patent litigation data. US-based MaxVal licences its curated patent litigation data and the databank application programming interface (API) for integration into Aistemos’ global IP intelligence platform, Cipher.

MaxVal’s Patent Litigation Databank is a comprehensive collection of cases (71,000+) of the US District Court, Court of Appeals for the Federal Circuit, International Trade Commission, Supreme Court, and the Patent Trial and Appeal Board. It has fully searchable databases related to patent litigation from ECFs, PACER, ITC, etc.

Major benefits of MaxVal’s Patent Litigation Databank are proactively monitoring and querying whether patents of interest have been litigated; gaining analytical insights on plaintiffs, defendants, filing trends and courts, and staying updated with patent litigation alerts.

Paybacks of the API include easy access to complex litigation data without incurring any PACER expenses; and querying and analyzing using over 20 litigation fields including patents, products, plaintiff, defendant, court, judge, law firm, and outcome of cases.

Cipher is the world’s first IP analytics solution to aggregate, analyze and visualize IP data relating to patents and related events including litigation and licensing. MaxVal’s Patent Litigation Databank will seamlessly integrate into Cipher and be available to Aistemos’ clients immediately.

MaxVal’s CEO, D. Bommi Bommannan noted that combining good quality patent litigation data with IP analytics, as done by Cipher, provides clients a powerful mechanism to assess and manage patent litigation risk. Cipher combines the power of machine learning, AI and powerful visualization methods to help businesses understand and communicate IP strategy instantly. 

Commenting on the partnership, Nigel Swycher, CEO of Aistemos, said: “The production of world class IP analytics requires best in class data and MaxVal has done excellent work curating litigation and dispute data from a range of US venues.


Leave a comment

Deploy Patent Prosecution Analytics to Accelerate the Product Development Cycle: A Comparative Case Study

Patent prosecution analytics can provide valuable insight into the performance of an organization’s IP operations just as other forms of analytics help in reducing cost, in making better decisions and in creating new products and services. Technology companies who are actively filing patents can achieve cost savings and faster times to grant through prosecution analytics. I will illustrate what I mean by looking at two leading technology companies with different prosecution performance – Cisco and Juniper Network.

The patent prosecution analytics can illustrate areas for improvement, how a company compares with direct and indirect competitors, patent prosecution trends, and areas the company is performing well.

There are multiple ways to measure how well an organization’s patent prosecution processes perform. MaxVal and its clients have had good success with these methods:

  • Prosecution Success Score – The number of issued cases divided by the number of abandoned cases in a given year.
  • Application Abandonment before an Office Action
  • Rate of Issued Cases with 2 or more RCEs
  • Average Pendency

To illustrate these methods and the insight they can provide, MaxVal took a look at Cisco Systems and Juniper Networks, two competitors within the Computer Communications Equipment Industry. MaxVal used publicly available data for its analysis.

Patent Prosecution Score

A Prosecution Success Score is simply the number of issued cases divided by the number of abandoned cases in a given year. The higher the score, the better it is for the company. Higher prosecution success scores can be attributed to more efficient prosecution methods, a better invention disclosure screening process, and possibly fighting harder to get patent issuance.

Prosecution Success Score
Year Cisco Juniper
2013 12.3 15.6
2014 5.9 16.1
2015 5.9 47.8

While we see Cisco and Juniper had comparable Success Scores in 2013, Juniper has continued to improve their Success Score while Cisco’s Success Score has dramatically declined. Cisco is still getting patents issued at a high rate but many more applications are being abandoned. It would be useful for Cisco to further investigate and see what the reasons for these patent application abandonment are.

Rate of Abandonment Prior to an Office Action

Another telling metric would be the rate of abandoned cases prior to receiving an Office Action. If a case is abandoned prior to receiving even a single Office Action, then it is likely that the case should not have been filed in the first place or the company did not fight hard enough for the case. An option to reduce the number of abandonment prior to an OA would be to invest in pre-filing searches to become aware of the prior art.

Rate of Abandonment Prior to an Office Action
Year Cisco Juniper
2013 1.6% 9.1%
2014 4.2% 50%
2015 5.8% 40%

Cisco seems to have a very low rate of abandonment prior to an OA while Juniper’s rate in 2014 and 2015 seems rather high. However, Juniper only abandoned 14 and 5 cases, respectively, in 2014 and 2015 so the sample size is too small to make a proper assessment of their rate.

Rate of Issuance with 2+ RCEs

The next metric to look at is the number of issued cases prior to filing a Request for Continued Examination (RCE). A high rate in this metric is a strong indicator of inefficient prosecution methods (broader claims among other things). Since the application was ultimately issued, it can be inferred that it was inefficient prosecution by the practitioner that led to a number of RCEs prior to issuance.

Rate of Issuance with 2+ RCEs
Year Cisco Juniper
2013 3.3% 12.2%
2014 6.0% 6.6%
2015 4.0% 5.4%

Both Cisco and Juniper seem to have pretty good rates in this metric suggesting that their patent practitioners use efficient prosecution methods. While Juniper’s rate in 2013 was on the higher end of the spectrum, there has been a noticeable decrease in their rate.

The final metric to look at today is the average pendency between a first OA and issuance. While looking at the pendency from filing to issuance is a normal metric to look at, it doesn’t give the best insight to prosecution methods. Much of the time from filing to first OA is a result of the patent office delays in working on the application. So, a better indicator of an applicant’s prosecution methods is to look at the time from the first OA to issuance. A higher pendency can be attributed to receiving more OAs, taking longer to respond to OAs, and filing RCEs.

Average Pendency from OA to Issuance

Average Pendency from OA to Issuance
Cisco Juniper
Overall 13 months 18 months

As evidenced by the table above, Cisco seems to be getting their applications issued, on average, 5 months quicker than Juniper. Juniper should look closer at factors that can be attributed to this increase in pendency.

Overall Cisco and Juniper seem to employ reasonably efficient patent prosecution practitioners and methods. They both have high issuance rates and low abandonment rates. Cisco’s low abandonment prior to OA rate indicates a good invention disclosure screening process. And the low rate of issuance with 2+ RCEs indicates efficient patent prosecution methods.

These metrics, and others, illuminate a company’s patent prosecution process strengths and weaknesses. It allows companies to see how their competition is faring and what areas they need to improve.

By Bharath Venkat, MaxVal

patent renewal rates


Leave a comment

Patent Renewal Rates under Different Renewal Period Schemes

by Bharath Venkat

In order to keep a US patent in force, the US Patent & Trademark Office requires that patent owners make maintenance fees at years 3.5, 7.5 and 11.5 after grant. This is in addition to filing, search, examination and post-filing fees.

Other patent issuing authorities use different rules. For the European Patent Office (EPO), maintenance payments must be made annually and cannot be pre-paid. For Japan (JPO) and the Korean Intellectual Property Office (KIPO), fees are due annually and can be prepaid.

If the patent owner decides not to pay the maintenance fee, then the patent owner loses the patent rights and the patent reverts to the public domain. If a patent is abandoned, the term of the patent is shortened and patent protection ends well before the maximum life of the patent. At MaxVal, we have compared abandonment rates for US, European, Japanese and Korean patents. Our goal is to see if abandonment rates differ between single year or multi-year renewal countries.

patent renewal ratesAnalysis of Lapse Rates

A good indicator of this could lie in the rates that patents lapse due to nonpayment of renewal fees. As seen in the graph below, different patent annuity systems yield different lapse rates.

Looking at the US – in 2014, 50.7% of active patents were renewed for the Third Stage (11.5 years). Since payment of the Third Stage gives those patents protection from years 12-20, it can be said that 50% of patents filed in the US are active for the full 20 years of the patent term.

This lapse rate is much different than in patent offices that require annual patent fees that cannot be paid in an advance lump sum like the EPO. In 2010, only 50% of active patents were renewed for the 8th year of the patent term. Only 42% of the patents are renewed beyond the 12th year of the patent term. Furthermore, only 33% of patents were renewed beyond the 15th year. Only about 17% of patents are active for the entire 20-year patent term. These statistics indicate that patent owners were very wary of paying higher annuity fees and were able to judge if the patent was economically viable on a yearly basis. This arguably led to a higher percentage of patents lapsing and entering the patent domain much earlier than in the US.

Additionally, patent offices that accept advanced lump sums of annual fees, like JPO and KIPO, have different renewal rates as well. At the JPO, the number of renewed patents only dropped to 50% after 17 years of the patent term. Also, 33% of patents were renewed throughout the 20-year patent term. At the KIPO, the number of renewed patents only dropped to 50% after 13 years of the patent term. However, the patent renewals drop to 33% after the 16th year of the patent term. These statistics indicate that, if allowed to, patent owners are more likely to pay their maintenance fees in advance, which would prevent the lapse of patents that are economically not viable.

Conclusion

For patent owners, annual renewal schemes seem to offer greater flexibility for making renewal decisions. When fees are payable annually, patent owner have more control over what to keep than they do in the US system.

From the perspective of a patent office, it would appear that forcing patent owners to make multi-year commitments increases renewal income. So, a multi-year scheme is beneficial for the patent office.

Owners of US patents should take care at the Third Stage. The data suggests that some patents that are routinely renewed at 11.5 years should be considered for abandonment. Those patents would be soon abandoned under an annual renewal scheme – but that option is not available in the US.

*Sources:

  1. 2014 USPTO Performance and Accountability Report
  2. Four Office Statistics Report 2010

MaxVal offers the Annuity Payer service to help companies plan and execute fee payments.


Leave a comment

IP Managers – Don’t Expose Your Company to IP Management Risk

Intellectual Property Management can be exciting and rewarding  but can also be very unforgiving if you don’t do it right. There are some mistakes that can be extremely costly, but are, unfortunately, easy for an IP Manager to make. These mistakes can cause your company to lose its IP rights and can result in competitors getting those rights.

Eleven IP management slip-ups that can increase IP risks and threats to your company:

  1. Failure to capture an invention.  With the “America Invents Act”, the US converted to “first to file” from “first to invent”. The first one to file a new invention gets the patent right – not the first to invent, unlike the olden days. If one of your inventors has a patentable idea, and you don’t find out about it – you risk having a competitor file ahead of you. Your company can be excluded from using the invention, thus losing competitive advantage..
  2. Failure to make a timely filing decision.  Once you have the invention disclosure, you need to quickly make a filing decision. If you dawdle, you again risk being trumped by a competitor.
  3. Failure to meet statutory deadlines.  Once you begin the patent filing process, you must meet strict statutory deadlines to file abroad and to respond to communications from the patent offices. These include conversion to non-provisional status, application filing deadlines, and national filing deadlines. Miss these dates and your patent rights go poof!
  4. Failure to Stay in the Loop.  Are there IP related conversations and actions happening in your company that you are not aware of? While you may be diligently tracking your activities, your inventors, attorneys or outside counsel may be taking actions (or not taking actions) that you need to know about. Things can easily fall through the cracks if you are not tracking them or in the loop. This can result in expensive mistakes and potential loss of patent rights.
  5. Failure to accurately project costs.  There are costs associated with building an IP portfolio. These include outside counsel fees, filing fees and maintenance fees. Your IP program can be adversely affected if you cannot accurately project what these fees will be and budget accordingly.
  6. Failure to respond to PTO actions on time.  During prosecution, your patent applications will receive communications from patent offices. Either you or your outside counsel must respond to these in a timely manner. Failure to take timely actions, can lead to expensive penalties and/or loss of rights.
  7. Failure to properly disclose material information. In many countries, including the US, you are required to file Information Disclosure Statements that include all relevant prior art. These statements need to be consistent across all of your related patent applications. Failure to make proper disclosures can result in the loss of your patent rights.
  8. Failure to maintain your patent. In most countries, you must pay regular maintenance fees for issued patents or annuities for pending applications. If you miss making a payment, are delinquent, or if a payment is not properly processed, you can lose your patent rights or may have to pay significant penalties to restore your rights.
  9. Failure to enforce license obligations.  If you have licensed patents to others, you need to monitor the agreement and track the royalty payments. Failure to do so can result in significant loss of royalty revenue, and unlicensed use of your IP.
  10. Failure to align patent portfolio to business needs.  Over time, your patent portfolio will grow.  At the same time, your company’s business strategy may change. You need to monitor your portfolio to make sure it is aligned with your business needs. Maintaining a portfolio of low-value patents that doesn’t support your business strategy is a bad investment.
  11. Failure to accurately disclose your IP portfolio. For companies with SEC reporting obligations, it is mandatory to accurately disclose your patent assets. If you don’t have an accurate picture of your actual portfolio, you will encounter costly and embarrassing legal problems.

As the IP Manager, you are always confronted with these challenges. You ought to be keeping eternal vigil to manage your company’s IP portfolio successfully.  This is definitely a daunting or impossible task.  But, there is technology available that can help.

How can an IAM System help?

An Intellectual Asset Management (IAM) system tracks all of your intellectual assets through their entire lifecycle.

Here are all the things an IAM system can do:

  • Capture invention disclosures and monitor progress through filing, prosecution and maintenance.   
  • Enable creation of workflows that route tasks to the appropriate person and ensure that deadlines are met.
  • Store all assets in one place. This enables you to access and track all the data that you need to make informed decisions based on correct, current and complete data.
  • Provide visibility into the entire IP portfolio. Make accurate reports for forecasting and strategy reviews.

How can an IAM system mitigate the risks mentioned above?  Here is my view:

Risk

IAM Risk Mitigation

Failure to capture an invention A robust and easy to use invention disclosure capture system will encourage inventors to disclose their inventions in a timely manner.
Failure to make a timely filing decision An IAM system will initiate workflow events and deadlines. Invention disclosure reviews and filing decisions will be scheduled and completion will be tracked.
Failure to meet statutory deadlines An IAM system,  which can connect to patent office application tracking databases, will automatically create tasks and reminders. Responsible parties will be notified of upcoming deadlines and responses will be tracked.
Failure to Stay in the Loop By maintaining a single calendar of events, the IP Manager can monitor all activities and their status.
Failure to Accurately Project Costs By tracking all applications, foreign filings and maintenance fees in one place, the IAM system can accurately project costs..
Failure to respond to patent office actions By maintaining a single calendar of events, the IP Manager can monitor all upcoming patent office actions, their status and who is responsible for the response.
Failure to properly disclose material information The IAM can provide a robust Invention Disclosure database.  This will ensure proper and consistent disclosures.
Failure to maintain your patent By having a complete and accurate portfolio database that is connected to a fee payment system, the IP Manager will be notified of upcoming payments and can forecast future payment costs.
Failure to enforce license obligations Tracking compliance is made easier by recording license terms in one central database.
Failure to align patent portfolio to business needs Having a portfolio level view of the assets and the pipeline of pending applications enables the IP Manager to accurately report on the current portfolio, and to support strategy reviews.
Failure to account for your IP portfolio Having a complete portfolio view, including the relationship between IP and products, enables the IP Manager to support accounting reviews and meet reporting requirements, e.g., with the SEC.

As the IP Manager, you have a significant responsibility to avoid the IP risks discussed above. An Intellectual Asset Management (IAM) system can help you mitigate your risks. To get better insights on mitigating IP management risk using an IAM system, please watch the SymphonyIAM overview video: SymphonyIAM by MaxVal

Please contact us if you would like more information on SymphonyIAM, or to find out about MaxVal’s service offerings. MaxVal is dedicated to making IP professionals, including IP Managers, successful. We can help you manage IP risk.

IP5 Global Dossier


Leave a comment

The New Game Changer – IP5 and Global Prosecution Data

It has been over fifteen years since the release of Private PAIR. It was one of the most significant technical achievements by the USPTO and one of the major milestones in the patent data revolution by allowing electronic patent filing and data access.

Although a real game changer fifteen years ago, as anyone who tried to get through the latest Java updates to access Private PAIR (especially on a browser other than FireFox) can attest, Private PAIR is far from cutting edge in 2016.

Make no mistake; PAIR is still the bread and butter for US patent practice operations and a valuable source for patent prosecution data. However, today’s savvy IP Managers are looking for additional tools and data to elevate their IP management.

One of the major reasons why PAIR is no longer the game changer that it once was is the internationalization of patent portfolios. US patent data is simply no longer enough to provide the complete view of patent portfolios. For many companies, a significant portion of their portfolios are now non-US patent assets.

One indicator of the importance of non-US patent filings is the PCT national phase filings. Based on the latest WIPO data, although US is the single most popular national phase filing destination in 2014, the total number of national phase filings in four popular non-US patent offices (China, EP, Japan and Korea) is now more than twice the number of US filings (128,946 US filings vs. 267,688 non-US filings).

PCT national phase filings in China, Europe, Japan, Korea and US in 2014PCT 2014

Country

Number of national phase entries in 2014

China 79,612
Europe 92,627
Japan 58,337
Korea 37,112
United States 128,946

Table and Graph 1: PCT national phase filings in China, Europe, Japan, Korea and US in 2014 from WIPO IP Statistics Data Center http://ipstats.wipo.int/ipstatv2/index.htm?tab=patent.

The top five Patent Offices (IP5) have recognized this internationalization phenomenon and many directives have been introduced to facilitate cooperations between the patent offices. Perhaps the most significant since the PCT itself is the IP5 Co-operation.
IP5 CountriesIn their own words, IP5 is the name given to a forum of the five largest intellectual property offices in the world that was set-up to improve the efficiency of the examination process for patents worldwide (www.fiveoffices.org).

The members of IP5 are:

To IP Managers, the most immediate impact of IP5 is the efforts to facilitate greater integration of the global patent system through sharing of patent data. For example, the IP5’s Common Citation Document (CCD) application now allows access of up-to-date citation data of all five patent offices.

Perhaps even more impactful is the IP5 Global Dossier Service, which integrates prosecution data of EPO, JPO, KIPO, SIPO, and USPTO. For the first time, IP managers can now have a global view of prosecution history and status of five most popular patent offices that accounts for a vast majority of patent filings.

This global view that is now available to IP managers is the true game changer of intellectual asset management in 2016. Successful harnessing of this technology, especially in combination with private PAIR, will provide IP Managers the correct, current and complete view of their patent portfolios, and thereby allowing them to take informed actions and perform meaningful analytics.

Steven Gong, JD, MSCE
Director, MaxVal, SymphonyIAM Product Manager
SymphonyIAM_Sign

 

 


Leave a comment

Are You the IP Manager?

Are you the IP ManagerUsually in large companies, IP is managed by a senior IP counsel who runs a dedicated IP operations department. In your company, there may not be a dedicated in-house IP counsel.  But, in every innovative business there is always someone whose job includes managing the company’s IP. That person, the IP Manager, makes sure that the company’s patent strategy is implemented, deadlines are met, forms are completed, and documents are submitted, etc. The IP Manager makes sure that the IP train runs on time, so to speak. They may not have IP in their title or have a law degree, but they are the go-to-person for all IP matters.

In a start-up, the IP responsibilities may start small, with just one or two patent applications to file. In the beginning, most of the work is done by outside counsel.  But the job can quickly become challenging and time consuming as the company grows: more applications are filed and foreign filings become necessary.

For emerging technology companies, the IP Manager’s responsibilities will eventually include:

  • Work with in-house scientists and engineers to identify patentable ideas.
  • Work with outside counsel as they draft patent applications.
  • Work with outside counsel as they prosecute the patent applications.
  • Decide when and where to file foreign applications. Europe? WIPO? China? Japan? Korea?
  • Make decisions about budgets, patent maintenance, licensing and IP acquisitions.
  • Decide when to take legal action if there’s infringement on the company’s IP.

Finally, as the resident IP expert, the IP Manager must help senior management decide on an IP strategy and keep them informed on how the strategy is being executed. Mistakes can expose the company to significant risk.

Are you that person?  If so, congratulations!  Whether you planned it or not, you provide a critical service to your company. To a large degree, your company’s future prospects depend on you. As your company’s patent portfolio grows, your responsibilities grow and the amount of time you must commit to managing your company’s IP increases.

Automation has been a boon. Your company’s sales and support organization depend on a Customer Relationship Management (CRM) system to keep track of customers and prospects.  Your company’s finance department uses automation to keep track of accounts receivable, payroll, and other expenses.

Similarly, you can benefit from using an Intellectual Asset Management (IAM) system to keep track of your company’s IP. Such a system puts all IP related activities in one place so that you can access everything and manage everything through one interface. To see what we mean, please take a minute to look at the SymphonyIAM overview video:

Also see Steven Gong’s blog on how SymphonyIAM can make you a better IP Manager and visit our SymphonyIAM preview page for more information. MaxVal is dedicated to empowering IP professionals and IP Managers to mitigate risks and manage better.

MaxVal is now running an invitation-only trial of SymphonyIAM. If you would like to experience the prelaunch SymphonyIAM, please visit our SymphonyIAM preview page and sign up for a trial – http://symphony.maxval.com.

We hope to hear from you soon.

Dr. Bommi Bommannan, CEO

Follow

Get every new post delivered to your Inbox.

Join 225 other followers