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Patent Landscaping
Patrick J. Kelly, Ph.D., J.D.Ballard Spahr LLP215.864.8841kellypj@ballardspahr.com
The content of this presentation should not be construed as legal advice, and readers should not act upon the information presented without professional counsel.
2
Patent Landscaping
Topics
• What is patent landscaping?
• Managing Risk – identification of competitors, their patents and the scope of claim coverage
• Presenting the results of the patent landscape analysis
• Strategy and plan going forward
• Opportunity – identification of potential partners
• Continuous monitoring
3
What Is Patent Landscaping?
• Identify patents and applications relating to a specific concept/product
• Identify competitors and scope of patent coverage
• Identify potential partners
4
A “Case” Study
• Cell phone case with detachable solar charger
Solar Panel
Case
5
A “Case Study”
• Solar panel is detachable
• As improved panels are developed they can be used with case
• Separate case allows you to use with a variety of different phone types can modify the case if a phone changes in size/shape
6
Gather the Facts about the Product
• What is the product?• How do you make it from start to finish?
- Manufacturing Process• Parts• Assembly
- Final Product- Methods of Use- What are the goals of your business?
• Do you have patents/applications?• What aspect of the product do your patents/applications cover?
- Where will you make it?- Where will you sell it?
7
Think About How to Search the Patent Databases
• Search words
- Mobile phone case
- Cell phone case
• Solar powered
- Attachment of solar panel
• Search terms may evolve
- Patent classification groups
• Patent office has broken technology down into subgroups
• Locate patent in this technical area and look at the groups
8
Classifications
CLASS 320 ELECTRICITY: BATTERY OR CAPACITOR CHARGING OR DISCHARGING
100 PRIMARY CELL DEPOLARIZATION
101 WIND, SOLAR, THERMAL, OR FUEL-CELL SOURCE
102 . With shuntless charging source control
103 ONE CELL OR BATTERY CHARGES ANOTHER
104 . Vehicle battery charging
105 .. Employing “jumper” cable
106 MEANS TO IDENTIFY CELL OR BATTERY TYPE
107 CELL OR BATTERY CHARGER STRUCTURE
108 . Charger inductively coupled to cell or battery
109 . Charger station for electrically powered vehicle
110 . For diverse sizes of cells, batteries, or battery packs
111 . Having plug for A-C receptacle
112 . For battery pack
113 .. With charger stand or base adapted to hold battery pack
114 . For handheld device
115 .. With charger stand or base
9
Search - Who Will Do the Search?
• The importance of technical competence
• You
• Patent counsel
- Professional searcher
10
Search – Scope of the Search
• Search
- May consider patentability of your applications
- Validity of your patents
• What is in the literature – will help determine patentability/validity
• What do others have
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Search – Scope of the Search
• Patents
- US
- International
• Applications
- US
- International
12
Managing Risk
• Avoid infringement
• Avoid need for a large number of licenses
• Discover if field is full of competitors globally/locally
13
Managing Risk
1. Identify which companies own relevant patents
2. Identify who owns the most patents
3. Identify who owns the most important patents
4. Identify collaborations between companies
5. Identify prolific inventors
6. Identify important inventors
7. Which academic institutions have the most inventors working in the technology
8. Which geographical areas are the most prolific - US by state, World by country
14
Presenting the Results of Patent Landscape Analysis
• Product Description at time search was done and identify subsequent modifications that might require additional search
• Search Terms
• Search Results
- Patents
• By relevance – Red, Yellow, Green
• By Assignee
• By Inventor
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Total Number of Patents Awarded
16
1990
1991
1992
1993
1994
1995
1996
1997
1998
1999
2000
2001
2002
2003
2004
2005
2006
2007
2008
2009
0
5
10
15
20
25
Number of Patents Filed per Year
17
48, 29%
32, 19%
16, 10%
13, 8%
11, 7%
10, 6%
9, 5%
7, 4%
6, 4%
6, 4%
3, 2%3, 2%
Market Leaders
ENORMOUS CO.
GIANT CO.
HUGE CO.
BIG CO.
INVENTIVE INC.
INNOVATIVE INC.
INGENIOUS CO.
CREATIVE INC.
ADROIT CO.
DEMIURGIC INC.
PRODUCTIVE CO.
INSPIRING INC.
18
0
5
10
15
20
25
30
35
40
45
50
Market Leaders
ENORMOUS CO.
GIANT CO.
HUGE CO.
BIG CO.
INVENTIVE INC.
INNOVATIVE INC.
INGENIOUS CO.
CREATIVE INC.
ADROIT CO.
DEMIURGIC INC.
PRODUCTIVE CO.
INSPIRING INC.
19
Initial Review of Search
• Patents
- US• Claims that have issued• Patent term remaining for patents identified
- Normal term- Extended term
• FDA• Patent Office delays
- Shortened term• Terminal disclaimer
- International• General Timelines – your product launch versus patent expirations
20
Initial Review of Search
• Applications
- US
• Pending Claims – PAIR system - current status of the claims
- International
• Pending Claims – likelihood of issue
21
Initial Review of Search
GREEN
• Can distinguish over the claims
• Not considered to be a problem
22
Initial Review of Search
YELLOW
• May be a problem
• Look at the prosecution history of the patent or the application
23
Initial Review of Search
RED
• Review prosecution history to see if claims can be interpreted in a way that helps you
• Is it paid up and in force
• Is it valid?
24
Strategy and Plan Going Forward
• No issues- Ongoing monitoring system
- Delay in publishing of applications
• Issues- Patent license
• Royalties or lump sum
- Patent litigation
• Very Expensive
- Modify product – Find a way to design around competitor’s product
25
Opportunity – Identification of Potential Partners
• Based on patents that may require a license, is there a way to partner?
- Solar panel maker looking for markets
- Plastic manufacturer looking to sell materials for cases
26
Options
• Purchase the patent – patent is assigned to you
• License
• Cross-license
- Patent pools
• Design around
27
Continuous Monitoring
• As product develops may need to do new searches
• If product changes-search terms should also evolve
• Set up a system of continuous monitoring.
- Regular search updates
- Alerts
28
THANK YOU
Patrick J. Kelly, Ph.D., J.D.
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