1. List key markets in size order.
  2. Add countries where competitors will manufacture.
  3. Add other particularly important countries for logistics – eg. is there a country that everyone will have to transit through?
  4. Review and reorder the list based on overall strategic importance with the above factors in mind.
  5. Get a quote from your patent attorney or a specialist national phase entry firm (if you’d previously filed a PCT).
  6. Go down the list until you hit your budget limit.

Done

Think IP Strategy's IP Strategy Playbook

How do you protect your IP Processes?  More importantly, have you ever done a freedom to operate clearance on them?

To kick off this short series of posts, here are a few insights on some of the top ‘patent process’ patent filers, what they are covering, and the most cited patents.

Given my 100 per cent client focus, I couldn’t really do this topic justice but I look forward to further insights from those with more time.

Patents

Top 10 assignees of patents covering patenting processes.

patent assignees

Were you aware of all of these companies and their patenting activities?

How confident are you that your own patent processes do not infringe any of these patents?

 

Top 10 patents by number of forward citations.

patent citations

Here is claim 1 of the most cited patent covering patent processes:

***

“1. A computer-automated method for rating or ranking patents or other intangible assets comprising:
selecting a first population of patents having a first quality or characteristic;
selecting a second population of patents having a second quality or characteristic that is different from or assumed to be different from said first quality or characteristic;
providing a computer-accessible database of selected patent metrics representative of or describing particular corresponding characteristics of each said patents in said first and second patent populations;
constructing a computer regression model based on said selected patent metrics, said regression model being operable to input said selected patent metrics for each said patent in said first and second patent populations and to output a corresponding rating or ranking that is generally predictive of the presence or absence of said first and/or second quality in said first and second patent populations according to a determined statistical accuracy;
and using said regression model to rate or rank one or more patents in a third patent population by inputting into said regression model selected patent metrics representative of or describing corresponding characteristics of said one or more patents in said third population to be rated or ranked and causing said regression model to output a corresponding rating or ranking based thereon.”

***

The more sophisticated a company becomes with its patent analytics, the more patents it will have to dodge, and file.  How are you placed in this landscape?

Obviously if you’re not in the business of inventing new patent processes and analytics, then there’s always the option of in-licensing them and there are plenty of great tools out there already.  Just check that the indemnity for patent infringement for using the tool is going the right way.

 

Top 5 IPCs

patent IPCs

These are only the top 5 of about 100 IPCs represented in this dataset which is surprisingly large.  It’s also interesting to note that the top IPC is 6 times more popular than the fifth most used IPC.

 

*Notes:

  1. Data is from 1969 through to 31 December 2015.
  2. Due to the quick data grab, the data is a little ‘dirty’ so I can’t give you certain insights, such as filing intensity over time.  However, I have cleaned out irrelevant records in the data presented here.
satellite-image-photo-of-europe-at-night

Thanks to Taylor Wessing’s brand new Patent Map, anyone can now quickly compare European jurisdictions on key litigation factors.

Those who have litigated in Europe will know that this comparison is at the heart of every strategic litigation campaign, whether seeking to launch a new product (and avoid injunctions) or attempting to stop competitors.

Key questions such as: “Which countries should go first and why, and what’s likely to happen and how long will it take?” are all readily addressed with the new tool.

As I’ve said before, understanding the terrain that you’re operating in is critical to a successful IP Strategy.  Well, in Europe at least, taking that step has just become a whole lot more accessible.

Ok, Taylor Wessing, now for the rest of the world…

[image credit: zonu.com]

It’s been a great honour to be a member of the IAM Strategy 300.  I was there in the first group (the IAM250) in 2009, and have been there every year since.  (Thank you so much for the previous nominations and votes of confidence.)

I think the IAM300 is a great way to let the world know about those at the top of the IP Strategy game and I’m absolutely delighted that this year’s selection will finally include people in in-house roles too.  Congratulations to Joff, SJ, Gavin and the team for a wonderful job.

As for me, my practice has changed, I no longer have 22 people in however-many countries around the globe.  It’s just me and my fantastic support team.  Apart from a handful of smaller clients that I can’t resist, I tend to spend more time working further up the chain, and more in the background these days, and I don’t have time for all of the marketing / business development we used to do.

There are many ‘up and coming’ IP Strategists who would cherish membership in the group and so it’s time to make room for them.

Best of luck to all of the nominees (and yes this blog will continue as and when I get time).

 

 

 

 

Back

To all of those people kind enough to pause and read my blog posts from time to time, thank you very much for your patience.

I’m now back from 14 months traveling around Australia with my family and am busily catching up on things for my clients.

The trip was incredible, of course, and perhaps if you’re interested I can give you a few highlights over a beer at the next conference I see you at.

I will soon be resuming the posting schedule at duncanbucknell.com, so stay tuned and thanks again.

Analysis

Strategy without analysis is like turning up to play a sporting match when you don’t know what sport you’re playing, what equipment to bring, the rules, who your opponent is or indeed where to show up for the game.

It’s not uncommon for far reaching errors to be made due to a simple lack of analysis.  The people involved may know what to do but never get that far because they didn’t pause and think.

Sun Tzu advocated analyzing oneself and the enemy according to a suite of weighted factors to come up with a score.

You obviously need good information in order to conduct good analysis.  What should you analyse? Start with the goal you have in mind – make it as specific as you can.

Then ask lots of questions.  Surprisingly, the ability to ask good questions is more important than having ready made answers.

I use a toolkit of question prompts I have developed over the past twenty years as a way to pose questions from different perspectives.  Our IP Playbook has been used in the same way.

Provided that you act on it in a timely and appropriate manner, you can never have too much analysis.

This is one of the 100 IP Strategy Principles.

Photo Credit: Julie70 via Compfight cc

Whoever has the best information is most likely to succeed and on their own terms.


It is difficult to overstate the importance of high quality information to the development and execution of world class IP Strategy.

The best IP Strategists are keen practitioners of competitive intelligence and analyse a wide variety of  information.

I use checklists of information sources tuned to different kinds of issues – some are free, some paid and some are highly specialised, bespoke services.

A key point in all if this to get as much first hand information as possible.  I was once in a natural disaster situation and we spent a lot of time trying to get accurate information.  We checked websites and called official departments.  The best information, of course was from the local officials manning road blocks.  Once we managed to speak to them, we knew exactly where we stood.

Do you remember the first time you played Chess against a much better player?  The insights the other person had, seemed like magic.  How did they know all of your possible moves and how were they prepared for all of them?  They just had more and better information than you – in this instance garnered from years of playing the game.

Information is magic – use it wisely and you will be even more successful.

This is one of the 100 IP Strategy Principles.

Photo Credit: sparktography via Compfight cc

Careful where you aim

There’s a lot of lip service given these days to ‘aligning IP with business goals’.  Most times there’s no indication at all about how to do that or any of the practicalities.

One practical matter that comes up time and again is around the goals themselves.  Specific goals allow more room  for compromise or pivots in the approach used to obtain what really matters.

 

Putting it another way, an indirect strategy is often the best – picture Alexander the Great at the siege of Tyre – he built a one km long causeway to turn a naval battle (which he would lose) into a land battle (which he won, emphatically).  The more specific  your goal the more room to use indirect means to achieve it.

Consider the following goal: to lead our market segment in sales of our latest innovation.

Compare this to the goal of maximizing business unit profit by the most effective means.

Say there’s a competitor who launches a product which infringes one of your patents in one of your key markets.

To maximise the number of units sold by you then you probably want an injunction stopping the competitor from selling.

However if it’s business unit profit that is the goal then a license may be much better.  You may in fact find that a cross license with access to another technology or market creates even more business unit profit.

Careful where you aim because you may not actually want to be there at all.

Photo Credit: PeterThoeny via Compfight cc

100 IP Strategy Principles

I’m delighted to introduce a new blog post series – 100 IP Strategy Principles.

It’s partly inspired by the 10th century Chinese text ‘One Hundred Unorthodox Strategies’ (which in turn incorporates many principles from the Seven Military Classics including the well known Art of War by Sun Tzu).

As with the popular ‘5o IP Strategy Mistakes‘ series, I’m very keen for readers to see your feedback and comments and suggestions for further tips (whether inspired by these or otherwise).

Each time I publish another post in this series I will add it to this page, so that you have them all in one place.

Please do join the conversation – I look forward to your thoughts.

1 – Information is magic

2 – Analysis

 

.