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.

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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

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What Is Patent Landscaping?

• Identify patents and applications relating to a specific concept/product

• Identify competitors and scope of patent coverage

• Identify potential partners

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A “Case” Study

• Cell phone case with detachable solar charger

Solar Panel

Case

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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

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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?

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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

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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

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Search - Who Will Do the Search?

• The importance of technical competence

• You

• Patent counsel

- Professional searcher

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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

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Managing Risk

• Avoid infringement

• Avoid need for a large number of licenses

• Discover if field is full of competitors globally/locally

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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

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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

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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.

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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.

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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

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Initial Review of Search

• Applications

- US

• Pending Claims – PAIR system - current status of the claims

- International

• Pending Claims – likelihood of issue

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Initial Review of Search

GREEN

• Can distinguish over the claims

• Not considered to be a problem

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Initial Review of Search

YELLOW

• May be a problem

• Look at the prosecution history of the patent or the application

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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?

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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

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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

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Options

• Purchase the patent – patent is assigned to you

• License

• Cross-license

- Patent pools

• Design around

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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

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THANK YOU

Patrick J. Kelly, Ph.D., J.D.