- List key markets in size order.
- Add countries where competitors will manufacture.
- Add other particularly important countries for logistics – eg. is there a country that everyone will have to transit through?
- Review and reorder the list based on overall strategic importance with the above factors in mind.
- Get a quote from your patent attorney or a specialist national phase entry firm (if you’d previously filed a PCT).
- Go down the list until you hit your budget limit.
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.
Top 10 assignees of patents covering patenting processes.
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.
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
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.
- Data is from 1969 through to 31 December 2015.
- 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.
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).
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.
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.
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.
2 – Analysis
“…fools are able to ruin a friendship but wise people know how to profit even from enmities.”
You can do business so as to avoid bumping into other companies, or you can focus on your goals (and your strategy) and realise that inevitably, you are going to annoy others.
You can believe the mantra that patents are evil, or you can invest in protecting your inventions so that you can extract maximum value from your hard work.
You can stand on your soapbox and yell about trolls or you can spend time analyzing the vulnerability they expose in your business.
If you receive a threatening letter from a competitor is it better to let emotions rule or stop and consider the weakness in your position that they are aiming at and how you might remedy it?
You see, where an enemy attacks is a weakness that you can now fix. There are many shortcomings that an enemy is quick to perceive. This is one reason why I run war games for clients.
A world with strong competitors is good – with no enemy to fear or compare to you have to be even more careful.
[Photo Credit: kaibara87]