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2012-01-29T14:51:00.001+05:30

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US Patent Reform made easy - What's in it for you!

2011-09-16T20:18:00.000+05:30

Introduction:

This article is for the people who are in the technological world and their profession either involve patents or affected by patents and intellectual property. This article is a time saving guide and provide prospective of the recently passed Leahy-Smith America Invents Act 2011.

" Yes! we can"

On Sept 8, 2011 the Leahy-Smith America Invents Act bill passed by both houses of the U.S. Congress and finally Mr. Obama signs it today (16th Sept,2011) to make it as a part of US patent Law.

This is the fourth attempt to introduce significant changes in U.S. patent law, and closely resembles previously proposed legislation in the Senate in its previous session (S. 515, see the Patent Reform Act of 2009). In this bill the most significant aspect is the transition from a "first to invent" to a "first to file" system. It has been referred as the first significant change to the U.S. patent system since 1952.

What is US Patent reforms Act?

Patent law reform, as with other law reforms, is the process of examining existing laws, and advocating and implementing changes in a legal system, usually with the aim of enhancing justice or efficiency.

Why so much Noise recently?

1. This reform is a landmark in American patent history as it shifts from first to invent to first to file. This harmonizes with the rest of the world. The apprehension is that changing the tenet that put the United States as the topmost innovative nation in the world might not be to its advantage.

2. Fees diversion: There is still a lot of noise on this issue, the fees that innovators pay is diverted by the government into other channels and is

looked upon as a tax on innovation.

3. It took long to overhaul the patent law and Finally its happened!

What are key provisions on this reform? How it will affect the patent laws in US? What does it entail?

1. First-to-file system
2. limits on patent marking ”trolls
3. Post-grant review
4. Courts have made it harder to get a patent invalidated by alleging that someone misled the patent office
5. The bar is now higher for what is patentable.

Following Map outlines most important provisions of the US Patent reform act.

Image content not readable? Just CLICK HERE to open in a new window for better readability.

US Patent Reform - Simplified

How it may affect the industry?

According to USPTO, the cost of proving who was first to invent, under the current system, is an average of $400,000 to $500,000 in legal fees to engage in interference proceedings. Those costs can double if a case is appealed. By contrast, under the legislation, a $110 provisional application will establish effective rights to an invention, securing first-inventor-to-file status with no risk of subsequent disputes. The USPTO believes that the near- and long-term effects of certainty, predictability and reduced costs of the first-inventor-to-file system will benefit all stakeholders, both small and large entities, regardless of the area of technology.

Concluding Remarks

Law will take it course, this common one liner fits well with this reform act as well. "Yin" and "Yang" discussions around this reform has started happening but How it will change patent world is yet to be seen. All we can do is to start accepting this as a way of life and start working towards incorporating it in practice. Lets all hope for the best for invention, inventor, and industry!

By: Dr. Sarasija Padmanabhan & Govind Kedia

Please feel free to share insights, thoughts, and additional information on this subject.
If you liked it, share it!
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The article has been jointly written with Dr. Sarasija Padmanabhan, who is registered patent agent at Indian Patent office. Please note that the information by no means is complete and may need further research. Writers are not responsible for any error in the presented data . This article does not represents writers' employer position on the subject .
Please do not copy/reproduce mind-map for commercial use without permission. Its against copyright Law!

Is you daily newspaper informing you about what's happening in the Patent world? - Coverage of patent related issues in Indian News media

2011-09-07T19:26:00.000+05:30

Analysis of frequency, coverage trend, coverage topic of patent related stories in past 1.5 years in Indian News Media.

Building the Base:

It was same lazy morning with sleepy eyes on 31st August with newspaper in my one hand and toothbrush in the other. The reaction after seeing the newspaper was the same “same old political crap, what the hell!” but then as I unfolded the paper, I saw a rather unusual head line on the lower part of front page, a headline “Pollution board chief cashed in on own patent”. Well it was surprising to see patent angle in wide spread corruption in the country. After reading the article, I asked myself, Is Indian media catching up with western media and giving importance to patents and Intellectual property?

Setting the Stage

I thought let me check this out by analyzing news publication of the premier of Indian media sources. So, I decided to utilize Google News and its advanced feature to copy all the articles which mentioned “patent” in the text of the article from January 1, 2010 till date 6 Sept, 2011.

I copied the results from Google for each news source and dumped into an Excel spreadsheet. After cleaning the data it was easy to find useful insights. If anyone wants to take a look at the collated data, please follow this link to DOWNLOAD the spreadsheet.

Lifting the Weight
I have considered following source for collating the news articles.

· Reuters India
· Deccan Herald
· Economic Times
· Hindustan Times
· Times of India
· InformationWeek
· The Hindu
· Livemint (The Mint)
· IBNLive.com
· NDTV.com
· Business Standard
· Financial Express
· Indian Express
I am sure you will find your favorite newspaper! If not, then maybe you can decide to switch to any of these after seeing the results.

Here are some fascinating statistics & analysis based on the collected data:

Reuters, may be due to its Global nature covered more stories on patents or stories involving any patent angle. Leading Indian daily newspaper such as Deccan, Times of India, Economic Times, and Hindustan Times were almost at a same level.

In my view, it is still less! Our Media should cover this area more proactively.

Now the next intriguing question was, if this trend varied during the past 1.5 years. For that, the publication dates were normalized by Quarter. Here is the outcome of that:

It was comforting to see that Indian Media has started taking the issue seriously. The moving average trend lines of various sources are in the upward direction.

Yes! our media is waking up to the IP issues.

Now you will ask what they are actually covering, to do that I used a widely known Text tool Wordle to create a word map. This analysis is based on the titles of the news item retrieved above. Please note that the larger the text the more they appeared in the title of the news.

Looks like we are being informed on important developments by our responsible media!

And Finally.....:

Let’s see, what we can conclude here:

1. Indian Print and Online media has started taking Patent issues seriously.
2. International issues and news form headline and covered by most of the Indian Press.
3. The inclination towards patent related news has increased in past quarter and it may rise further.
4. Apple, Google, Microsoft, Samsung and Motorola were top international companies covered by Indian media
5. Ranbaxy and Dr. Reddy’s, Glennmark were top Indian companies who were quoted in different sources.
6. Important international patent disputes such as Android, HTC-Microsoft, and Apple-Samsung got their due place in News.

I hope you have found the article interesting. That’s why you are here!
Please feel free to write back to me via email or post your comments on the blog.
Please do not think of suing me if you think I made any error. I disclaim any liability which may occur due to any error in presented data. Also, this article is entirely represents my personal opinion. This is not a official or associate with my employer.

An era of great CEOs has come to an end……for the whole corporate industry

2011-08-30T12:23:00.004+05:30

Steve Jobs------------iResign

Steve Jobs arguably the most successful and most dynamic CEO in the corporate history, on August 24, 2011, hung up his shoes as the CEO of Apple Inc. The man who turned Apple into one of the world's most powerful companies stepped down as CEO. Steve Jobs, a great leader, a motivator, an inventor, a designer, all in all a Genius, is the person behind the innovation of iPhone, iPad, and other magical devices, which make Apple Inc. unique. The person who thinks greatness lies in simplicity.

He has not only revolutionized the computer and the smartphone industry but also inspired his competitors to think out of the box. Jobs is an inventor of 313 patents. Of these, he is the lead inventor of 33. Majority of his patents are design patents. Steve has always followed the philosophy of integrating technology with Arts and Humanities for creating digital gadgets. On Jobs' resignation, the WSJ’s principal technology columnist, Walter S. Mossberg very rightly said “Most people are lucky if they can change the world in one important way, but Jobs, in multiple stages of his business career, changed global technology and media in multiple ways on multiple occasions. Jobs, the man with incredible vision and the extraordinary talent, zeal and drive."

Despite, bitter rivalry between Apple and Google in the recent years, Google Chairman Eric Schmidt could not refrain himself from praising Steve Jobs. Eric said in a statement that Jobs “is the most successful CEO in the U.S. of the last 25 years.” He added that Jobs “uniquely combined an artist’s touch and an engineer’s vision to build an extraordinary company, one of the greatest American leaders in history.” Leaders like Steve are born once in a century.

But, after Jobs resignation, Tim Cook the COO of Apple has taken over as CEO of Apple. We all know that Tim Cook is widely regarded as Operational Genius, the person who has been greatly inspired by Jobs and under the able leadership of Jobs has got some part of his DNA.

Still the biggest question looming over Apple and its investors is whether Tim will be able to provide the face for Global brand and identity just like Jobs. Because Jobs has become synonymous to Apple and Apple to Jobs, will Tim be able to create his own fan club as Jobs did? The falling of Apple’s share price by 5.4 % on the day Jobs announced his stepping down is a good enough indicator to show the sentiments of people attached with the great man. Will Tim have the same vision and holistic approach as Jobs? Whenever Tim will launch a new innovative product, he must ask himself “Have I made it large”.

We all know Jobs drove innovation at Apple. Will his departure cause a change in the company's strategy, direction and alter its mentality and mindset? Will this event provide the opportunity to Apple’s competitors they were looking for? These are the questions which still needs to be answered and only time will tell. It will be interesting to witness how Cook starts to put his stamp on the company. But, having said that it’s Jobs himself who has passed the torch to the man he trusted the most, Tim. Tim must always remember what Steve once said to a Stanford graduating class in 2005 “Stay hungry, stay foolish”.

Cook addressed the Apple team as CEO in the email saying

"Team:

I am looking forward to the amazing opportunity of serving as CEO of the most innovative company in the world. Joining Apple was the best decision I’ve ever made and it’s been the privilege of a lifetime to work for Apple and Steve for over 13 years. I share Steve’s optimism for Apple’s bright future.

Steve has been an incredible leader and mentor to me, as well as to the entire executive team and our amazing employees. We are really looking forward to Steve’s ongoing guidance and inspiration as our Chairman.

I want you to be confident that Apple is not going to change. I cherish and celebrate Apple’s unique principles and values. Steve built a company and culture that is unlike any other in the world and we are going to stay true to that—it is in our DNA. We are going to continue to make the best products in the world that delight our customers and make our employees incredibly proud of what they do.

I love Apple and I am looking forward to diving into my new role. All of the incredible support from the Board, the executive team and many of you has been inspiring. I am confident our best years lie ahead of us and that together we will continue to make Apple the magical place that it is.

Tim"

I hope that under the leadership of Tim and Jobs still as the Chairman of the Board, the Apple continues to innovate and create new dimensions in the field of technology. Let us all be thankful to Steve Jobs for his unparalleled contributions to technology. Steve Jobs has sowed the seeds of innovation and creativity that we'll see in years ahead. I think Jobs is right in saying: Apple's best days lie ahead.

Curious Case of USPTO data

2011-06-02T16:28:00.000+05:30

We assume USPTO bibliographic data to be reliable, but in the case below, there is an ambiguity in Inventor between USPTO patft and USPTO assignment.

I have encountered many instances where assignments data is dubious. For critical information projects one must be very careful in relying on such data.

Publication number - US6525513

Snapshot from Assignment Data

Snapshot from PatFT

USPTO has done commendable job in providing data in usable format. However, analysts must be careful in blindly relying on the data provided by USPTO and other database sources.

No matter how sophisticated analytics system become, there is and will be no replacement of human intelligence.

Arriving at the Rubrics of the Indian Pharmaceutical Patent Rejections

2011-01-28T15:16:00.003+05:30

This article briefly explorers recent pharma patent rejections from Indian Patent office. It tries to calibrate information focusing on rejections from the Indian patent office to arrive at a matrix which can serve as a reference tool for pharmaceutical patent prosecution. It outlines the available information to understand the coordinates based on which pharma patents are rejected from the Indian patent office.

Following table lists recently reported cases:

Please download complete list (Link) with other field of information such as :
Application Number, Date filed, Date of decision, and Basis of Rejection

It seems that majority of the rejections can be related to the sections 2(1)j,3b, 3d and 3e of the Indian patent law. Also, that any application that jeopardizes the position of a generic drug in India would face opposition.

However, the case of Tasigna(Nilotinib) from Novartis (237430 3003/CHENP/2004) was granted despite of all the features of rejected application. This seems to be an exception and it would be interesting to see its prosecution history. A article on (Link) relates to this story.

Does this data show that the Indian patent office is trying to balance ‘Indian Health and Welfare’ and patentability standards?
Is it only the commercially successful drugs that are opposed, rejected or revoked?
Do these stringent patentability standards raise the quality of patents/innovation?

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This information is provided by Dr. Sarasija Padmanabhan (Profile) who is registered patent agent at Indian Patent office. She is the lead writer of this report. Please note that the information by no means is complete and needs to be updated regularly. Writers are not responsible for any error in the presented data . This article does not represents writers' employer position on the subject .

Overpowering Perception - Choosing the Red Pill

2010-12-20T11:24:00.003+05:30

All that glitters is not gold. All that’s dull is not cold. And recently, all that glitters is not sold. Well, at least, in the dynamic unpredictable world of patents.

How many times has it occurred to you that you should have retained a share in the stock market when you were bullied down by a force of public perception to eventually kill a streak of hope within you? When was the last time you realized that a number of gems go uncut to remain in the rubble of filth? I’m sure there are plenty of moments when you are subjected to a pressure of perception – one that is not your own.

With the advent and rise of Non Practicing Entities (NPEs) and a recent shift in the dynamics of their revenue-hungry-underbelly to execute the last phase of their business model, the need for assessing the worth of a patent portfolio has been on the rise. Patent Acquisition is a risky proposition considering the complexities involved in generating revenue out of it. One may be driven away by the technologies which have a huge internet presence – or should I say a better perception in the market. However, owing to the critical aspect of how well the claims are drafted, such technologies may fail to prove any infringements leading to a complete waste of revenue on acquiring such assets.

Much has been written and talked about on Patent Infringement and Patent Scoring. A number of platforms with lucrative algorithms have been suggested to judge the quality of a patent - one that may lead you to assess the monetary value of a patent. Patent Valuation indeed comes up later in the process but the process of Patent Scoring may sometimes build a perception of quality for the patent portfolio. However, the most that patent scoring may help in patent acquisition is to choose the best heap of hay from the farm. There’s still a possibility of rotten twigs in the chosen heap.

Amidst the all hazy cloud of perceptions, the only breath of fresh air is pumped in by the amalgamation of Patent Scoring with Evidence of Use (EoU) Analysis. A unique blend of identifying revenue-churning assets using a validated statistical algorithm based Patent Scoring model and an extensive research for available documentation based EoU analysis to prove infringement for the residual assets is the need of the hour. While the validation of the statistical model will ensure low risk in identifying high potential assets, the extensive research may take care of the junk thrown out by the model. Among a gamut of techniques, the validation may come from scoring patents which have been involved and have generated revenue in litigation cases.

The opportunity of patent acquisition is galore. The eye for gaining the most out of it is inherent in a few. For the rest, the motivation to struggle and emerge from the purview of perception to view at it from a unique viewpoint may be generated from a carefully drafted strategy. An amalgamated combination of Patent Scoring and Infringement Analysis is the Red Pill to get you out of the Matrix of perception.

Envisage to Optimize – The recipe to Monetize

2010-09-27T08:40:00.002+05:30

When was the last time you thought of an idea and kept it at just that – an idea. May be last summer, last second or may be you are thinking of one as you read this. A few smart chaps go for the legal way and register their innovation as a patent. An innovation which can be claimed as their own and have an exclusive right on it. However unfortunate it may seem, there is a cost required to maintain this exclusivity of your innovation. Here comes the trade off, the question of to be, or not to be. Why should I spend my money on a piece of document just for the sake of having an exclusive right. Well, when you envisage the potential of your innovation is when you can realize the power of optimization of your patent portfolio.

With the advent of hugely advertised upcoming technologies that we may see in the market, we often ignore the innovations which are omnipresent. US patent 5,836,038 is a patent assigned to an individual inventor. The patent describes a magnet coupled eraser which may be used with a white board. The patent expired due to non payment of fees in 2002. Though the due diligence of the patent before considering it for expiration cannot be commented upon, however, let’s try to envisage the widespread use of the innovation.

Let us use approximation on a sample set for analyzing the worth of the invention. If we consider the number of whiteboard eraser manufacturers spread across the United States to be around 1000, each manufacturer may produce around 1 million whiteboard eraser units every year. Of these, let us assume that 50% are magnet coupled erasers which calculates to 500 million whiteboard erasers. Considering the cost of the whiteboard eraser to be $2 - $5, the cost associated with this innovation becomes $1 - $2.5 billion. Had the patent been active in US alone, imagine the licensing revenue it may have generated. Considering the fact that China is also an emerging market for such stationary items, had the patent covered other jurisdictions, the kind of patent monetization is immensely huge.

The Intellectual Property universe has witnessed the growth of the Non-Practicing Entities or the patent aggregators. The business models and the operational behavior of these entities are frequently debated and people have diverse sets of opinions on their ethics. However, if we zoom into the sector of small yet powerful innovations, these entities have set an example of nurturing the saplings to turn them to fruit laden trees. The differentiator has been the realization of the power of innovations and supporting them to exist. There has also been a significant streak of success with the patent interdealer brokers. These entities have also been a great supporter in nurturing the innovations by facilitating the monetization of patents. Well, in some cases, it also promotes the mantra of – A burden to one is a gain to some.

Innovation will never cease to exist. One has to envisage the potential of the innovation and optimize the cost associated with it. That’s the recipe which will stir up the aroma from your latent patent portfolio – the recipe of Patent Monetization.

A guide to Patent & Innovation Benchmarking

2010-09-16T22:55:00.005+05:30

In this article, I am trying to outline some ideas and thoughts that should be kept in mind while conducting benchmarking studies. It is very common in corporations to benchmark themselves against their peers in the industry. It could be for variety of reasons for example, measure R&D effectiveness, cost control, find strategic insights etc.

Before jumping on practical challenges, there are some basic concepts that should be kept in mind before conducting these studies.

1. What kind of benchmarking you are going to conduct?

There are two types of benchmarking

A. Internal benchmarking: These types of benchmarking studies are conducted to see how various divisions are doing in terms of protecting their products, utilizing budgets, etc. There could be variety of parameters on which divisions can be benchmarked and companies may seek to find best practice within each division.

B. Competitive benchmarking: These types of benchmarking studies are conducted to see how company is performing in its task environment. These studies may provide valuable insights if conducted accurately. These studies could reveal pattern, best practice employed by other players in the industry, impact of patents filed by the company etc.

2. What is objective of the study?
For any benchmarking study, analyst must freeze the objective of his/her study. Who is going to be seeing the report? What is it that you want to find out? What you want to show to your end customer? And finally what is scope of the study?

I found following practical challenges pertaining to these studies:

Availability & accuracy of data: One of the biggest challenges in conducting benchmarking studies is availability of sanitized patent data. It is very important to clean the data before putting in a nice fancy presentation. For example, in the end result one wants to benchmark two companies in a certain country say the UK. Though, the problem statement looks very generic but it does not have a straight forward solution. One must look very deep into the data to get exact figures. Analyst will face challenges in getting EP granted patents designated in the UK or granted but lapsed, add acquired assets, discount divested assets, check correct assignee of publication, remove duplicates, and so forth. Unfortunately none of the commercial database to my knowledge gives error free data. Only solution to this problem is manual analysis!

Lack of understanding: In some cases a superficial understanding of the parameter, nature of task environment, and legal intricacies could also lead to unfruitful study. A researcher should make a thorough understanding of key variables involved in the study.

Overlooking other factors & misinterpretation: Analyst should not Oversell patents! It is undisputed fact that patents play a major role in business. However, that’s not all. It is not recommended to credit or discredit patent benchmarks for organization performance. Conclusion from benchmarking should be derived after looking at market, regulatory, legal and other business factors.

Too much statistics: It’s always good to have statistical validation of benchmarking. However, researcher must not throw statistical jargons to make things look sane. Follow the KISS! Keep it simple and sober.

Handy Skills:

In my view these skills could add value in the analysis and somewhat important for conducting these studies (in no particular order)
1. Strong Business Research & Understanding of business

2. Understanding of Patent laws & Data
3. Advanced Microsoft Excel
4. Visualization techniques
5. Understanding of Managerial Issues

Possible Audience & Possible applications

Patent and innovation benchmarking could have wide variety of audience and it is important to customize the result based on audience. Strategic thinkers, lawyer, R&D heads, marketing could derive endless benefit from such exercise.

Note: It would be great if readers could also leave their comments and share best practices and make this write up more interesting.

A report on - Where is Pakistan in the Patent World

2010-08-12T14:47:00.006+05:30

Setting the Context:

For some of us who decided to read this report (esp my countrymen) this may shock you

“Yes, Pakistan has patent office and it promises to protect patents and other IP in the country!”.

Being a patent knowledge explorer, I came across to a link on WIPO academy on Global Network on Intellectual Property (IP) Academies which has been launched in order to support the work and sharing of resources, including training programs, of the Global Network of IP Academies and to provide an effective forum for exchanging of views and experiences among the members of the network. India does not seem to be part of this program.

On this page I learned that Pakistan has its own patent law system and does promise innovators to protect their patents in the country.

Scope & Safe statements:

This report is exploratory in nature and does not represent my employer’s opinion. The analysis presented in this article is based on data provided by Pakistan IPO website. I do not guarantee the accuracy of data & analysis presented here. Please free to post your comments and suggestions. I hope you will enjoy this report.

Genesis of Patents in Pakistan

Patent Act in Pakistan evolved from the original (Indian) Patents and Designs Act, 1911 and was amended as Patents Ordinance 2002 & Designs Ordinance, 2000. Intellectual Property Organization is under a Cabinet Division of Pakistani Government. However, I am not sure which ministry owns the responsibility of enforcement and protecting the rights conferred by the state. The website of the Patent office seems to be well organized and easy to navigate.

The basic premise of patentability is standard and is same as Indian law i.e. The invention should be new, involves an inventive step, capable of industrial application, and should not be contrary to law or morality. However, PTO is not much concerned about industrial application. Software is not patentable in Pakistan.

The prosecution procedure also seems to be standard viz. filing the “application”, examination and acceptance of application by the patent office, overcoming opposition, grant of patent, and sealing the patent.

Patent Statistics:

Pakistan patent office website provides data of patents granted from year 2005 till February 2010. They have used varying format for providing the data. This section is a “bird’s eye view” of granted patents in Pakistan.

Patent Grants from Year 2005 to February 2010 in Pakistan

There are around 1064 patent grants in the past five years. The patent grant in Pakistan has witnessed a steep decline. There may be multiple reasons for this. It may be due to backlog of black/mail box application relating to chemical products intended for use in agriculture and medicines. The application will be kept dormant until 31^st December 2004. Also, the political instability of the state seems to have affected the patents in the country very hard.

The data provided by the PTO is not consistent and have limited information. Filing date was provided for only 424 patents. Based on this data the average grant period is around 4 years. However, some pharmaceutical patents took more than 10 years in grant process.

My further analysis point was the “brave J” applicants who are filings patents in the state. I have noticed an obvious trend of Pharmaceutical and Chemical companies monopolizing the patent filings in underdeveloped economies. Information & Communication Technology (ICT) companies choose to stay away as Pakistan has pretty much open borders with China (politically)!

Following figure segments applicants in broad industry areas.

Patent Grants by Industry

There were three Indian companies and one individual inventor who filed patents in Pakistan. These are:

CSIR India, Godfrey Philips India Ltd,India, Cipla,Ltd,and Dr.Adhijit De

There has been a very small portion of the total filings filed by Local companies and inventors. Local sports equipment manufacturer showed trust on the national patent office and filed patents seeking protection on football, cricket bat and balls etc.

Top Applicants in each category are:

A compiled patent data could be downloaded from this link.

During the quick scanning of the data, I have seen some interesting patents. Some of them are:

A patent on credit card rewards system filed by Citi Financial Corporation.
Recording and /or playback device comprising means for writing and /or reading information blocks in an information tract filed jointly by Philips Electronics & Sony Corporation
A simulated smoking article filed by British American Tobacco (Investments) Ltd,Uk
Genes and polypeptides relating to human colon cancers filed by Oncotherapy Science
A mousetrap for trapping and /or killing mice filed by Reckitt Benckiser Healthcare
Creation method for characters/Words and the information and communication service method thereby filed by Neopad Inc.Korea.
Solid Fuel Stove filed by and ex. Pakistani army man Lt. Col. (R) Mahmud Shah
A cricket pitch filed by Lourens Steyn Australia

Conclusion:
As WIPO member Pakistan seems to be working towards the protection of IP in the country. The PTO did a fairly good job in putting up a website. However, due to Pakistan’s current Socio political environment, there has been a steep decline in the patent filings and grant in the country.

Current political environment force me to think that the government of Pakistan (don’t know who!) should be protecting the innovators first than the innovation in the company. Pakistani economy and innovation seems to be surviving only due to the foreign government and companies.

I apologize for any of my comment which may have hurt the sentiments of anyone.

Apple Sourcing Technology for ipod from outside!

2010-08-03T19:08:00.007+05:30

Foxconn Technology Group recently sold 5 patents to Apple inc. which are related to electrical connector of the ipod. These connectors are used for power transmission and improved strain resistance.

Following drawings are taken from the patents which may indicate future/present ipod (or other Apple device) connectors in the market.

Apple bought these patents in January this year and these were formally recorded at USPTO in April.

US7632134 Electrical Connector Having Protective Member
US7654856 Cable Connector Assembly Having Strain Relief Member For Cable
US20090298322 Cable Connector Assembly Having Strain Relief Member For Cable
US20090298339 Cable Connector Assembly Having Strain Relief Member For Cable
US20100120290 Cable Connector Assembly With Sticky Film

As the world is getting smaller by technology, companies operating in any domain must look beyond internal R&D outputs. More companies are adopting "Proudly Found Elsewhere" culture and maintaining a competitive edge in the market. Companies must overcome "Not Invented Here" syndrome and start using or buying already existing products, research or knowledge (but by buying or licensing not stealing).

Patent Data Application – Series I

2010-07-20T22:57:00.002+05:30

Law Practice planning through patent data analysis

This new series aims to find possible role of patents in decision support and business development. In this post, I am trying to list some possible applications of patent data in business planning for small and medium sized law firms.

Law firms are like any commercial entity which need cash, clients, Intangible assets, competitive edge and right business planning to stay profitable. Patent data are wealth of information that could be leveraged to find invisibles and data for strategic decision.

In my view, the patent data can be used for:

Business Planning:

Practice location planning: Many PTOs around the world provide bibliographic data which could be used to map inventor, assignee, technology area, etc. A law firm expanding their practice and planning new offices in a country could use these data to plan offices, resources, and predict financial benefits based on past filings.

Resource Planning: Patents are indicators of technological advancements. An emerging law firm may want to plan its resource based on market demands and technological advancements in certain geographic region. A patent based trend analysis can provide interesting insights towards legal and technical resource requirements in foreseeable future.

Business Development:

Targeting New Clients: Patent data could give valuable insights about target companies. It may help the BD officers to target right in-house attorneys, assess technical areas of filings, profile target company, etc.

Finding Share of Wallet: Data analysis could help medium sized law firms in analyzing whether the top clients are using competitor law firms for their filings. This could help in gauging effectiveness of service, client loyalty, and possible business negotiation areas.

Building new partnerships: Companies file patents at various geographies. Patent data could help small and medium sized law firms find possible overseas partners who can cross refer each other in case of patent family extensions. This analysis could be done looking at various angles.

Competitive Benchmarking & Intelligence

Benchmarking Pendency: This analysis could help a law firm in making a better business pitch. A law firm with lower pendency may help in winning more accounts. Also, this analysis could be extended to see if patent filed by competition have seen significant change in claims during prosecution.

Claim Strength analysis: A semi-automated analysis to benchmark competition on claim strength. There are various proven scoring mechanisms that could also be used to make better business case.

Resource mapping: Various countries allow law firms to put information about their practice areas and resources or various patent offices provide attorney data. This data could valuable source of information in order to map resources and law firms. This analysis is best done when complemented with primary and secondary research data.

Effective Prosecution:

Examiner relationship network: Law firms can conduct examiner relationship network to understand how examiners world together in various technology areas. Also, a technology specific network may also provide leads to HR department.

Technology area and type of rejections: A law firm specializing in niche areas or emerging technology areas may want to understand common prosecution hurdles. This may help them in better planning while drafting applications. This analysis could be combined with examiner analysis to identify any pattern.

Patent application scoring: Law firms handling clients with large volume of pending application can use proven techniques to prioritize efforts. The scoring can be done on various parameters.

Challenges:

Underlying Data: The above mentioned analyses are data intensive and require correct data for any meaningful result.

Automation: Based on my experiences with PTO data, I think data provided by patent offices around the world require lot of normalization. They are in no way ready to use for such data intensive analysis. Automation is essential for such analysis. Automation can be used for range of activities such as pulling right data from websites, normalizing & cleaning crude data.

Data handling: These analyses may involve data which may run in hundreds of thousands of records. These analyses also require correct understanding of the data. A single data handling mistake can change the face of entire analysis.

Risk of misinterpretation: “Little knowledge could be dangerous” this is true for these kinds of analysis. The end user and analyst must question the output and check the sanity of the results.

Conclusion:

These are only some ideas on patents and its application in this context. These are based on my experiences and similar consulting projects. There could be other numerous applications of patent data that could help law firms.

These analyses are certainly worth spending time and money. These analyses could help a law firm in not only expanding its practice but also for regular health check. However, with a caveat that external factor should be considered while taking any action. These analyses can provide actionable intelligence but cannot replace human judgment and creativity.

Patent Landscapes: Myth Series – II

2010-07-06T21:26:00.001+05:30

How to create patent landscapes intelligently

In my previous posts in this series, I tried to expose the myths related to the usage of patent landscape studies. In this post, I will explore prevalent myths related to the execution of landscape studies. This post can be useful to analysts and managers with responsibilities to conduct and/or commission patent landscape studies.

Download entire Article (Click Here)

Please download entire article from above link. The article discusses realities and action steps on below mentioned Myths.

Myth 6: Any patent analysis with charts is landscaping

Reality: Contrary to popular belief, any patent analysis with charts does not constitute a patent landscape. One chart can speak a thousand words, but mere inclusion of charts does not suffice a thorough analysis. A chart is a nice way of representation of the analysis; however, mere inclusion of chart without any specific objective may not qualify a study for a landscape. Unlike other patent analysis studies, patent landscapes have broader business perspectives and can be used by a diverse set of audience. A competitive patent intelligence cannot be deemed to be complete if it does not relate hard market facts with patent trends. There is a very thin line demarcating patent intelligence and patent mining from patent landscape projects.

Action Step: Landscape insights can cater to a vast and diverse set of audiences, such as strategists, technology managers, and attorneys. On the other hand, other patent analysis studies such as FTO and Patentability assessment have very narrow and specific objectives and are often targeted to a particular set of audience. Such analysis with very specific objective and directed to a particular set of audience cannot be termed as landscape report. Patent landscapes should be created with broad strategic objectives in mind. To create a high impact patent landscape report, analysts should look into ancillary data to complement the patent analysis. Landscape charts should complement the study by representing the analysis and the findings of the study

Myth7: An endless presentation with lots charts will please the end user

Reality: Bibliographic data of subject patents is the key to understand technology trends. There are more than thirty quantitative parameters that could be used to address a wide variety of business objectives. These parameters could then be co-related to create an endless list of analysis charts. However, one must evaluate the relevance of each and every chart presented in the analysis.

Action Step: Each chart should address at least one predefined objective of the study. One chart with an insightful message is better than a hundred charts without any objectives. It may not be useful or even feasible for the end user to go through hundreds of charts to find answers to his key questions. The analysis should be concise and solution oriented. An endless presentation with lots of useless charts can ultimately confuse the end user

Myth8: Automated patent analysis can provide usable insights

Reality:There are lots of automated and “cool” patent analytics tool available in the market. In my view, they are really useful when the researcher is looking for a general overview on a certain technology. However, they may not be equally suitable for making key strategic moves

Action Step:Normally, automated tools rely on artificial intelligence to explore the area of interest. They may provide useful insights on the subject field. However, artificial intelligence, no matter how precise it claims to be, cannot replace human judgment and intelligence in presenting a meaningful analysis.

Myth 9: Organization of underlying data is not important

Reality: Landscapes do not provide magical answers to the questions instantly and definitively. Organization of data and in-depth analysis of extracted data is the key to conduct a meaningful landscape study. In certain cases, the underlying data is overlooked and not organized properly, leading to flawed inferences. For effective usage of landscape reports, it is essential that end users refer to the underlying data to validate the findings.

Action Step: A landscape report should be accompanied with user friendly and well organized reference data. End users must thoroughly understand the criteria and/or assumptions for data organization and data analysis. If patents were categorized in certain categories, tandem to address the objective, it must be understood clearly. It is also important to understand the factors considered while normalizing key bibliographic data such as assignee and inventors.

Myth 10: Patent landscape is an hourly based activity

Reality: Patent landscapes are generally planned by estimating the number of effort hours rather than by gauging the overall objective of the study. In certain cases, to fit the study within the time frame of planned hours, efforts in technical analysis are reduced or search criterion is restricted. This approach may be counterproductive for the study and may not provide optimum returns on investments.

Action Step:Landscape studies should be objective driven and must be constantly monitored and questioned to track the progress of the study. Patent landscape studies tend to deviate by size of data or by complexity of the technology. However, an adept analyst should be careful and aware of such deviations and situations while planning and executing a landscape study

I hope you will like the article. Please feel free to post your comments and views on these myths.

Patently Poem - Hope is a strange invention

2010-06-21T23:17:00.002+05:30

Hope is a strange invention --
A Patent of the Heart --
In unremitting action
Yet never wearing out --

Of this electric Adjunct
Not anything is known
But its unique momentum
Embellish all we own --

by Emily Dickinson

Movies With an IP (ish) theme - Updated

2010-06-20T20:23:00.017+05:30

I have always been a movie buff! It always get excited when importance of patents and IP are emphasized in events of any movie. In this series I am trying to list movies in which patents were central theme or important in the overall movie plot.

The First movie comes to my mind is "Flash of Genius"
Tagline: Corporations have time, money, and power on their side. All Bob Kearns had was the truth. They had the power. He had the truth.
Plot: Based on the true story of college professor and part-time inventor Robert Kearns' long battle with the U.S. automobile industry, Flash of Genius tells the tale of one man whose fight to receive recognition for his ingenuity would come at a heavy price. But this determined engineer refused to be silenced, and he took on the corporate titans in a battle that nobody thought he could win.

A must watch movie for all "Patent - Guys &Gals". An interesting related post on Patent Baristas

Next is
"The Man in the White Suit"
This is a 1951 movie in which Boffin Alec Guinness threatens the future of manufacturing by inventing an indestructible material.

Another one
The Water Engine

An inventor comes up with the solution to human energy needs but encounters ruthless opposition from vested business interest.
Plot: In the 1930s, Charles Lang invents an engine that runs using water for fuel. But when he tries to get it patented, he is first offered a ridiculously low amount. When he refuses, he is suddenly several people are pressuring him to sell. The big oil companies don't want the competition. Now he has to try and keep them from getting his idea, and somehow get it published.

Some more:

The Patent Clerk
After a long, arduous shift in the Swiss Patent Office, a young clerk with dreams beyond his workaday drudgery makes his way home and discovers that when you look closely, nothing is as it seems and everything truly is relative.

This movie seems to be inspired from life of the great Einstein.

Dark Mind
Paul, an optimistic inventor, turns into a recluse after facing a brutal betrayal. Convinced that Russians are spying on him, he struggles to protect his greatest invention: The Cube. When an accident thrusts him into the spotlight, his sense of reality is threatened and his world becomes twisted beyond recognition.

This movie was originally titled as Intellectual Property.

The Rag Man

In "New York, a world within a city, where anything might happen," Irish Catholic lower East Side kid Jackie Coogan (as Timothy Kelly) survives a fire at St. John's Orphanage fire, and takes to the streets. Ten-year-old Coogan meets Jewish junk dealer Max Davidson (as Max Ginsberg); and, after Coogan returns Mr. Davidson's dropped wallet, he moves in with the rheumatic old man. The two become business partners "Ginsberg and Kelly", after Coogan proves his "Rag Man" mettle by filling Davidson's junk truck with four dollars worth of merchandise. Along the way, Coogan helps right and old wrong; he tracks down thieving Robert Edeson (as Mr. Bernard aka Mr. Bishop), who robbed Davidson of a patent fortune.

The last which comes to my mind is
Men In Back

Yes seriously!
Isn't the movie is about Will smith and Tommy lee jones who are alien chasers, working for a secretive and immensely wealthy NGO ?
But, the organisation gets its money from patents for microwave ovens, Velcro and liposuction machines, which Jones reveals were confiscated from extraterrestrial invaders. :-)

I hope you have enjoyed this post and now go to look for these movies. (probably use torrents and do a copyright violation :-))

Following movies are shared by the readers:

Shared by Mr. John Cooper
The Man Who Fell to Earth
David Bowie's character - the alien, Newton - makes a fortune by patenting and licensing alien technologies, to fund his efforts to return to and save his home planet

Twin Peaks: A minor sub-plot in which a character tries to patent an improved curtain rail to eliminate that annoying swishing sound.

Shared by Mr. Satyendra Singh

Young Einstein (Looks interesting, Its a Comedy!)

Plot: Albert Einstein is the son of a Tasmanian apple farmer, who discovers the secret of splitting the beer atom to put the bubbles back into beer. When Albert travels to Sydney to patent his invention he meets beatuiful French scientist Marie Curie, as well as several unscrupulous types who try to take advantage of the naive genius and his invention

The Great Spy Chase (Another Comedy!)

Plot:A cold-war spy parody. After the death of an armaments manufacturer, an international group of spies is drawn into a high-stakes battle of wits to obtain the valuable military patents which have been inherited by the lovely widow.

The Great Moment

Plot: The story flashes back 20 years to find Morton being wildly acclaimed by medical students as the man whose discovery of "letheon" had forever ended pain as, before that day, even amputations were performed with the patient fully conscious. "Letheron", unknown to everybody but Morton and Elizabeth, is simply highly rectified sulfuric ether - cleaning fluid - easily obtainable at a pharmacy. By keeping the secret, Dr. Morton could be rich, but he had rather be poor than see a girl strapped to an operating table under the knife of Dr. Warren, and he reveals his secret to a group of surgeons in the hospital operating theatre. With his secret out, and all hope of personal reward gone, with the possible exception of proceeds from his glass inhaler, he gets the news that Congress has voted him a reward of $100,000, and also learns that the patent on his inhaler has been infringed.

Killing Cars

Plot: In a complex story of automotive intrigue, oil barons, corporate finance, and international villainy, the inventor of an environmentally friendly car powered by energy cells becomes the target of killers. After Ralph Korda has given his patented worldcar to a German automaker for testing, he is confronted by ominous men, eager to get their hands on his patent. Evil Arab petroleum lords also want to stop this threat to the gasoline market any way they can.

Mr. Dodd Takes the Air

Plot: an electrician from a tiny town impresses a New York radio sponsor with his booming baritone singing voice. He immediately contracts the worker to come to the Big Apple. Unfortunately, he suffers from bronchitis that changes him into a tenor. He still goes on the air, but everyone calls him a fake. Fortunately, the audience loved him. His manager then forbids him to appear publicly so he spends his spare time inventing a gadget that restores old radio sets. When it looks as though his clever invention will be stolen a beautiful woman gets it patented and then marries him.

Life Triumphs

Plot: In his fight for innovation in a industrial plant, professor Olteanu discovers through lab research a new technique that can be very helpful in turning the iron ore into better steel and other metal products. His experiments don't always give the best results especially when he is "helped" in his endeavors by a conspirator. His wife and his collaborator help to unmask the conspirator and convince the professor to continue his work. In the end the conspirators face harsh punishment and his techniques are given patents and turned into successful industrial processes.

Three Pests in a Mess (Comedy!)

Plot: The stooges are three inventors trying to a get a patent on their preposterous fly catching invention. When they learn they'll have to catch 100,000 flies to earn enough to get a patent, some crooks overhear and think the boys are the $100,000 sweepstakes winners. When the crooks give chase, the stooges hide in a sporting goods store where Curly shoots a dummy, which they mistake for a real person. The boys decide to bury the "body" in a pet cemetery, but the cemetery owner arrives from a costume party with his partners, all dressed as spooks, and they proceed to scare the devil out of the stooges.

Mr.Kirk Damman

The Spanish Prisoner

Premise of the movie is needing to protect an unpublished patent application from theft.

Plot:Joe Ross is a rising star. He's designed a process that will make his company millions. He wants a bonus for this work, but fears his boss will stiff him. He meets a wealthy stranger, Jimmy Dell, and they strike up an off-kilter friendship. When the boss seems to set Ross up to get nothing, he seeks Dell's help. Then he learns Dell is not what he seems, so he contacts an FBI agent through his tightly-wound assistant, Susan Ricci. The FBI asks him to help entrap Dell. He accepts, a sting is arranged, but suddenly it's he who's been conned out of the process and framed for murder. Bewildered and desperate, he enlists Susan's aid to prove his innocence.

Duplicity

The movie is entirely based on theft of trade secrets.

Plot: Ray works for MI6, Claire for the CIA. She burns him in Dubai. Jump ahead five years: he sees her in Grand Central and confronts her. Both now work in industrial security for corporate giants whose CEOs hate each other. Flashbacks fill us in: is it coincidence that he sees her in Grand Central? In about a week, one of the firms is going to announce a revolutionary product. Under the guise of helping that corporation's rival, can Ray and Claire work their own theft and find an independent buyer? To work together, using the corporate rivalry to their advantage, they would have to trust one another - difficult, if not impossible. Or, is one playing the other?

Mr.Jonathan Jensen

Extraordinary Measures
Plot: A Portland couple have two children with Pompe disease, a genetic anomaly that kills before a child's tenth birthday. The husband, John, who's in advertising, contacts Robert Stonehill, a researcher who has a theory on an enzyme treatment. He has little money to pursue his research, and a thorny personality that drives away colleagues and funders. John and his wife Aileen raise money for to get Stonehill going, then John takes on the task full time, working with venture capitalists and then a rival team of researchers. Time is passing, Stonehill's antics get in the way, and the profit motive may upend John's hopes. Can the researchers succeed in time for the Crowley's.

HAMILTON BROOK SMITH REYNOLDS OBTAINED PATENT LINKED TO THIS FILM (Click to read more)

Other Movies and videos shared by readers:

Mr. Edward Humphrey-Evans

A British children's weekly comic "The Beano" was used as a novelty citation by a UKIPO examiner when someone filed a patent application relating to a cat flap which opened only when a cat wearing a specified cat collar with ir sensor or similar was in the vicinity of the cat flap.
Apparently, there was one edition of "The Beano" where a cartoon character "Dennis the Menace" developed a similar cat flap for a cat, the edition of the Beano having been prior published.

Mr.Manish Kumar
3Idiots: A hit hindi movie. The lead character (Amir khan) had 400 patents.

Mr. Ron Vaisbort

Not a movie, but the "Flaming Moe's" episode of The Simpsons (3rd season, 10th episode) is a classic where Homer has his proprietary cocktail recipe ripped off by his bartender friend.

Ron shared that he used show this to his clients to teach about non-disclosure agreements. In his view this is one of the best Simpsons ever and this episode features Aerosmith.

Please keep sharing more movies in comments.

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Patent Landscapes: Myth Series – I

2010-06-10T22:34:00.010+05:30

How to use patent landscapes strategically

Download entire Article (Click Here)

In my previous write-ups, I tried to discuss the theoretical importance of patents in the corporate environment. I agree that this is easier said than done. In this myth series, I will explore common pitfalls in landscape studies. This will be useful for managers with responsibilities to create and organize landscape studies and take strategic decisions based upon them.

Please download entire article from above link. The article discusses realities and action steps on below mentioned Myths

Myth 1: A single Patent landscape can address multiple business objectives

Reality: Patent landscapes are highly specialized studies which should address single or limited business objectives. A landscape is a knowledge intensive document. Looking at the knowledge management framework, it is a fact that knowledge evolves from information which comes from data. Data is a raw material for information and adding context to information makes it usable knowledge.

Action Step:Information derived from patent data used in a landscape needs a meaningful objective. Just as it is impossible to shoot multiple targets using a single arrow, a landscape should not be used for addressing multiple business objectives. A well considered landscape report should be prepared in light of a certain business objective. Information should be analyzed to add context which is directly relevant to that business objective.

Myth 2: Landscaping is just about interpreting charts based on patents

Reality: High value patents are important assets & components in any technology business. However, technologies protected by patents are also affected by market, technology acceptance, business environment, and regulatory frameworks.

Action Step:It is important to analyze information in light of trends presented by patents in technology/competitive/other landscapes. A patent strategist should evaluate external factors that may influence effective use of patent landscapes. It is advisable to involve marketing/ commercial personnel or complement the patent trends with thorough business and market intelligence.

Myth 3: Flashy charts make a good patent landscape

Reality:Experts in data visualization, such as Edward Tufte, Stephen Few, etc, have scientifically proven that charts are not about the “Glitz” effect but about the information they present and how easy they are to interpret. A chart with multiple dimensions and 3D effects may not necessarily help in taking business decision. Sure they look great and the presenter may feel proud showing off the charts in boardroom meetings. However, one must see its practical use

Action Step:It is important to use charts, colors and analysis in a practical way rather than like artistic expressions. Sometime the use of tables instead of charts is much more practical. Landscape is all about data in business problem context. Hence, display data as simply and clearly as possible. Use novel representation methods such as Heat maps, bullet graphs, and excel based dashboards while presenting large and complex data.

Myth 4: Patent landscape is a three step process

Reality:It is a common misconception that landscape is all about Searching > Sorting > Charting. A good landscape always starts with a concrete problem statement based on which a thorough analysis is performed. Patent Landscapes must consider all the facets of business as discussed above.

Action Step: A good patent landscape involves multiple steps with a thorough analysis at the end of each milestone. A single mistake can change the face of an entire study. A landscape is about 80% planning and 20% execution. A patent landscape is about finding information that is not visible and apparent from plain charts. For example, a top assignee chart may tell who owns the most patents. However, it may be interesting to see if there is a player somewhere further down the list who out performs in the quality of innovation. Landscape is all about seeing the invisibles.

Myth 5: A landscape can solve complex business issues

Reality: A landscape is not going to solve your entire problem. It is just a map to cross the often bewildering patent minefield. A manager with only a map may not always be able to solve an IP issue or take strategic decisions. It will show some areas that should be analyzed more deeply or companies who need to be monitored at regular intervals. Analysis without context and deep analysis may not help in finding strategic solutions.

Action Step: A landscape study must be followed by a more in-depth study of the underlying data and spinoff more focused studies which provide a definite fact. Patent claims must be analyzed to see what they protect and what is there in the patent minefield. Underlying data must be questioned and analyzed before any strategic step.

Comments & Suggestions invited. These are my personal opinions not my employer’s

LIFE SCIENCES: Industry cutbacks due to global economic crisis - Business & Finance

2010-06-07T15:37:00.001+05:30

LIFE SCIENCES: Industry cutbacks due to global economic crisis - Business & Finance

(Reuters) - Europe's economic jitters will clean out the health-science industry, leaving global generic as well as innovative drugmakers among the survivors, the head of Swiss drugmaker Roche predicted on Wednesday.

Fresh healthcare spending cuts in several European countries following the debt crisis triggered by Greece are expected to hurt the pharmaceutical sector.

"We will see dramatic changes in the industry," Chief Executive Severin Schwan said at a news conference. "If pressure increases you will have suddenly winners and losers and you have a lot of enterprises that will be squeezed out."

Survivors would be generic drugmakers with economies of scale needed to handle the volumes of the cheaper copies of branded drugs, as well as drugmakers that find medicines with improved outcomes compared with available drugs.

Those in the middle, with little differentiation, would be wiped out. "I'm sure of that," Schwan said.

The economic crisis has only strengthened the conviction of the world's largest maker of cancer drugs to stick to its guns, said Schwan.

Roche is focused on drugs that can prolong and improve the quality of lives to such an extent that governments and patients will be prepared to pay for them, he said.

Among Roche's innovative drugs is trastuzumab-DM1 which showed such promising mid-stage Phase II trial results on women with advanced breast cancer that the U.S. Food and Drug Administration (FDA) encouraged Roche to submit it for approval.

"It is imminent," Schwan said about the U.S. filing, adding the drug's launch could take place in the beginning of 2011, if approved. Roche will still need to conduct Phase III studies. Drugmakers usually file for approval after final trial outcomes.

BIOSIMILARS A DIFFERENT BALL GAME

Some of Roche's rivals, like French peer Sanofi-Aventis, have diversified their business by expanding in areas like over-the-counter drugs or generics, or, as some are looking at, into biosimilar drugs -- generic versions of biotech drugs.

Merck & Co has created a biosimilars unit and AstraZeneca has said it would be in the field to some degree.. Generic drugmaker Sandoz, part of Novartis has three biosimilars on sale in Europe.

Schwan acknowledged that the arrival of biosimilars posed a challenge but said it would be one that would be easier to handle than traditional generics because the threshold for launching a biosimilar was much higher.

Traditional generic drugs are copies of chemical entities while biosimilars can never be true copies because they are based on living cells.

Generic drugmakers need to run clinical trials to prove their version of a biosimilar is efficient and safe, and will also need to create their own sales force to address physicians who will not easily switch patients from the original version.

"It's a different ball game and we expect a much lesser penetration of biosimilars," Schwan said.

Israel's Teva Pharmaceuticals and its partner Lonza are working on developing a similar version of Roche's blockbuster antibody drug Rituxan, also called MabThera. The biosimilar could be launched in 2014.

In addition, Roche's blockbusters MabThera and Herceptin could become vulnerable to biosimilars as they lose their patent protection in a several European countries in 2014 and 2015.

Expedited Patent Reviews Proposed - WSJ.com

2010-06-07T15:32:00.001+05:30

Expedited Patent Reviews Proposed - WSJ.com

U.S. Patent and Trademark Office chief David Kappos is proposing a new three-track system for patent applications that would allow applicants to pay an undisclosed amount on top of the standard $1,090 filing fee to jump to the front of the line for expedited reviews.

A New Approach to Patent Searching

2010-06-07T15:31:00.001+05:30

A New Approach to Patent Searching (metrocorpcounsel.com)

A new tool on Westlaw was built to address a key concern with patent information. Claims Locator is a patent search tool with its eye on the whole claim. With Claims Locator, you aren't handcuffed to your search terms. In the appropriate text box, you can type a patent or patent application number or paste a chunk of text from your own patent or application. Claims Locator then retrieves a preliminary result and integrates additional material such as patent and abstract classification numbers into your search. You retrieve highly relevant documents, which may be related to your own patent or application on many levels. Your result list, which may contain up to 100 documents, is ranked by relevance.

Acacia Subsidiary Acquires Rights to Patents for Lighting Control Technology

2010-06-01T20:56:00.001+05:30

Acacia Subsidiary Acquires Rights to Patents for Lighting Control Technology -

Genzyme sues Sandoz for infringing Hectorol patent | Reuters

2010-05-31T15:32:00.001+05:30

Genzyme sues Sandoz for infringing Hectorol patent | Reuters

Road to Patent Acquisition & Portfolio Enhancement

2010-05-29T20:28:00.002+05:30

In this writeup, I tried to discuss the real issues and process of patent led technology acquisitions in various industry verticals. How/Why patent led technology acquisition takes place and what are the factors that are crucial in this process. It is based on my observations, learnings and experience in this field. This discussion is more focused towards Intellectual property aspect of a technology and how patented technology and portfolio is managed.

Introduction:

Management always confronts new challenges. Technology and Patent asset creation and exploitation are key to success to any company operating in any area of technology. Economic historians have emphasized the role of technology and organization in economic development.

Intellectual property is an aspect of property rights which augments the importance of know-how assets. Intellectual property is not just important in the new industries such as microelectronics and biotechnology. It is of importance to more mature & tangible asset based industries such as petroleum and steel.

Patents are increasingly becoming as commodity which are used, valued, and exploited as tangible assets. New business models pertaining to IP has changed the way a global company plan its business and technology strategy. Increase threats of Non practicing entities, law suits & increased pressure of acquiring new technology in short time have hugely impacted the company’s technology strategy.

Identification of Need of Patents/technology:

It is obvious that technology is needed to increase operational efficiency, or competitive advantage.

However, a new kind of model in IP world is changing the the ways how companies look at intangible assets. There have been increased threats by Non - practicing entities (NPEs) which includes small businesses, universities and independent inventors holding patents but do not engage in product sales, known as patent speculators or “ trolls”.

With this radical shift in IP arena, it has been concluded that building a strong offensive patent position ensures that executive and operational staffs are not disrupted by the tedious intricacies of patent litigation. The portfolio should enable personnel to give their full attention to building valuable products.

In certain cases, If a company wants to use patents primarily to prevent others from marketing competing products or even researching alternatives to current products, they employ a “ blocking ” strategy.

Hence as the first step, following analysis is required for assessing need for patents or technology:

1. Acquire Patents/Technology for increasing operational efficiency

2. Acquire Patents/Technology for new competitive product

3. Acquire Patents/Technology for defensive purposes

4. Acquire Patents/Technology for offensive purposes

5. Acquire Patents/Technology for strategic purposes

In this step it is essential to evaluate current technology and patent portfolio of the company and match the objective with the overall business and technology strategy.

Example: A telecom company wants to acquire quality IP assets in “Cloud computing” area. They look forward to enter in this area as well as wanted to acquire assets for defensive purposes.

Patent/ Technology search:

After assessment of the requirement, variety of sources can be referred for acquisition of patents.

1. Patent Literature

2. Identified Inventors

3. Non core asset of other a company working in other domains

4. Patent Brokers

5. Patent Auctions

6. Online Patent Market (a new system started by Ocean Tomo, similar to stock market)

7. Conferences

Example: The said company has many options for technology search and can use any or multiple, as mentioned above

Technology evaluations: This is one of the most important step in patent and technology management. As in the given example, the company looking to buy patents must ensure the following:

1. Ownership of the patents

2. Global Coverage

3. Validity of the patents

4. Claim strength

5. Dependence on other technology

6. Overall package of the patented technology (what is protected system, method, or use)

7.Overall fit in the portfolio, and pursued technology strategy

8. Licensing executives

Price Fixation and Negotiations:

This is probably the most difficult part of patent acquisition. Valuing a technology or patent is the most crucial step. Till date, there are no established and universally accepted models for valuing IP assets.

A lot is dependent on from whom the company is buying the technology. Inventors usually over expect the value of the patent. A broker might inflate price to earn deep profit. The company has to carefully evaluate and fix the price. Some valuation approach can be used for this purpose.

1. Market based 2. Cost based 3. Income based

One of the somewhat accepted methods of royalty assessment is 25% rule. According to this rule 25% of operating margin is given back to the inventor.

At this company also need to decide whether it wants to purchase the technology as outright sale, licensing it, or lease it.

On the negotiation table, company need to put its tradable and must ensure that clear right is provided to the company. Price, exclusivity, incremental inventions & training are some key issues while negotiating the deal.

In the example, the company may just want to license the technology due to its high cost.

Technology Contract :

After rounds of negotiations, a definitive contract is drafted that incorporate the terms and conditions for final deal. It is very important for the company to consider following points while drafting final agreement:

1. Coverage of patents

2. Territory in which patents are assigned/licensed

3. Exclusivity

4. Language

5. Terms of Payments

6. Confidentiality

7. Ownership of improvements

In this case of Cloud computing, in case company decides to license the patents. It must ensure the above mentioned points in the contract.

Absorption, performance evaluation:

Generally companies operating in highly dynamic technology area such as computing, communication. Technology is absorbed and launched in the market very fast. In most of the cases, alternatives are ready even before the launch of the basic products.

The absorption of the technology is ensured by the companies by some time bundling technical support from the seller. The performance evaluation is generally done by $ earned by deployment of the technology or number of patents acquired/total revenues.

Conclusion:

The patent monetization as an area is still in juvenile phase. Developed economies such as the US has witnessed a sea change in the way patents and technology are exploited in the industry. At many occasions, a patent related dispute almost finished the flourishing company. Hence, companies are proactively seeking to acquire new assets.

It is recommended that companies must investigate its own portfolio while deciding the need of a technology. In couple of occasions, a exchange of technology proved to economical and mutually beneficial.

In high tech areas, a new concept of patent pool is emerging where companies pool their assets and cross license to save time and effort. In the above example, apart from buying assets, company could also seek participation in patent pools.(Some successful patent pools are MPEG-LA which license key patents related to MPEG-2/4)

Technology management and Organisational strategy

2010-05-28T22:33:00.001+05:30

This discussion outlines important factors in defining technology strategy and steps to be followed in implementation of defined strategy. A focused approach on IP management is outlined in later sections of this.

Technology in the organization should be managed as an important asset to the company. Some of the important steps in management are

Define organizational goal
Taking account of what is being used
Define a clear ownership (role of CTO)
Continual improvement and assessment of technology
Adequate measures for protection of data

In the organization, generally these steps can be used for defining its technology strategy

Step1: Define group strategy or analyze business strategy. In this focus should also be on the line of businesses and its strategies. This strategy is generally developed by taking internal as well as external factors into account. This strategy really define course of the business.

Step2: It is also important to freeze strategic goals, operating model and define key business capabilities.

Step 3: In this step an assessment of current State of technology within the organization is done. In this step a thorough assessment of document and current architecture is conducted.

Step 4: In this step organization aims to confirm its strategic technology goals & principles. This involves Gap analysis, requirement analysis, and current trend in the technology.

Step 5: In this step an exhaustive definition of technology capabilities are defined. A detailed technology architecture and roadmap is defined that directly impact on business strategy and help the company achieve its vision.

Step 6: An exhaustive search on new technology is done to identify technology that could potentially fit in the organization and address requirement. In the step determine if technology needs to be developed in house of to be outsourced from somewhere else. In this step identify & agree on key technology programmes. The buy decision should be taken by taking various factors into account such as: Cost, Risk, challenges, and IP protection. Also, it is very important to define financial sources for development of acquisition of the technology. Depending on the risk and type of technology, various innovative methods can be employed to arrange and pay for technology. For example, in pharmaceuticals technology option are very frequently used. Another example could be Milestone payment methods.

Step 7: Follow best practice while taking technology from outside and define and document technology. Also, develop detailed programmes for training and implementation of the technology in the organization.

Step8: Update technology documentation and Measure effectiveness of the new technology.

In the end it is very important in the process of strategy formulation, organizations adopt an unspoken high-level thinking strategy that should guide their approach to strategy formulation. Individuals should inherently follow set logic, and it drives a natural sequence of activities that most organizations follow when attempting to formulate a strategy. This logic is based on natural tendencies and instincts, and is often executed without question.

References:

Some thoughts presented here are borrowed from public presentations made by prominent speakers and writers.

Thanks for overlooking the typos!

Intellectual Property and Knowledge Management

2010-05-27T22:20:00.001+05:30

Objective:

In this case study, focus in on how knowledge management can be applied in the area of IP management and promoting innovation in the organization. I am trying to asses this based on my experiences with real world IP projects that aimed to manage patent knowledge and incite innovation in the company.

Background:

According to various business journals, there are 4 important pillars for a business viz. Working Capital, Fixed Assets, Intangible assets (IA) and Intellectual Property. Intangible assets include contracts, know – how, customer lists etc. Intellectual Property includes copyrights, trademarks, patents and industrial designs.

In last three decades world has witnessed an economic inversion in the importance of these four components in the business. It has been empirically proven that during 70’s a company’s 80% value was associated with its tangible assets viz. working capital, fixed assets etc and only 20% in its IA and IP. In present scenario, a company’s 80% value is associated with its IA and IP and only 20% in tangible assets. Businesses across the world are now operating in a knowledge based economy.

For knowledge based companies operating in dynamic space such as Pharma, Telecom need to actively protect their interest by securing patents on innovating technologies. Inventors and start up need to understand the dynamics of IP and finance to effectively plan success of their ventures. Educational institutes also play important role in advancement of technology and need to plan effective strategies to ensure utilization of their resource at full potential while staying economically viable.

Companies such as Xerox, Dell, Dow Chemical and Gillette, effective exploitation of IP rights has moved to the top of the corporate world. IBM, one of the ‘poster boy’ for all the companies aiming to adopt an aggressive IP "milking" strategy. Company saw its annual patent licensing revenue increase from approximately USD 30 million in 1990 to well in excess of USD 1 billion by 2001.

As a consequence of these developments, modern standards of corporate governance require that a company's IP assets are effectively managed and exploited. Effective management of IP and particularly patents requires some form of knowledge management system. The extent and sophistication of the knowledge management tools employed by a business will largely be dictated by the nature of the business. A global technology company will have a greater imperative for sophisticated systems, but even a small start up should adopt some form of knowledge management as IP may be its most significant asset in terms of attracting investment and building a market, and for developing innovation strategy.

Why Knowledge Management and Patents?

Depending on the organization, there could be various objectives for managing patent knowledge or apply patent in knowledge management. However, broadly there could be following objectives:

Innovation Capture: Patent knowledge management systems enable a business to effectively identify and capture innovation. This ensures that innovations are identified from the time they are developed at R&D level and are then tracked through the development cycle to enable informed decisions about patent registration strategy. Knowledge management systems should have appropriate safeguards are in place to maintain confidentiality.

At the less sophisticated end, such systems involve implementing non-technical management processes. These include record keeping and reporting protocols for R&D, appointing IP gatekeepers to manage innovations, work with professional advisers and report to senior management, and maintaining detailed IP registers.

Promotion of Innovation culture and inciting ideas: Patent knowledge management systems can also enable idea generation. Companies developing certain technology/product use patent to track latest innovations happening the space. This helps the researches to not only generate new ideas it also helps them in finding creative solution to real world problems. This can help companies to increase their product line or improve existing.

Patent Portfolio Management: Taking into account ‘What you own’.

Knowledge management systems are critical for companies who manage an existing patent portfolio. These systems could also help in managing annuity deadline as if the patent is a potential 'blockbuster', missing one of these deadlines can mean the loss of substantial revenue. Various companies offers such software to manage patent portfolio etc.

In this it is also important to technically classify patent by technology, business unit, product etc. This can help R&D staff from ‘reinvention of wheel’ and effectively integrate existing knowledge.

Competitive Intelligence: Another useful application of a patent knowledge management system is assessing the scope, extent and direction of competitors' patents. A key aspect of the patent system is that complete details of patents and the innovations they encompass are publicly available. Businesses are increasingly implementing patent mapping strategies and knowledge management systems to gather intelligence on their competitors' technology. This enables a business to track competitors' innovations, anticipate their future direction and in some cases beat them to a solution. Critically, it also enables businesses to "design around" their competitors' patents, thereby avoiding or reducing the risk of costly patent infringement actions.

Source: EPO conference of Patent system

How can this system benefit and give tangible results?

The business world and capital markets have recognized that intangible assets such as IP and in particular patents can have substantial value if they are effectively managed. It is becoming a corporate imperative to efficiently identify, protect and exploit this IP and a range of new technologies and solutions are emerging to provide IP knowledge management systems. A number of businesses ranging from global giants to small technology startups have recently demonstrated that combining an IP strategy with an efficient knowledge management system can produce a powerful competitive advantage and promoting innovation in the organization.

How the system can be implemented? What should be its Architecture?

Source: 129109391053281250-KM_Lec_20Feb2010

The architecture of the system of this system can be similar to the shown above. Since patent are complex to classify and mine. A manual or semi-automated approach can be used as engine to data mining. Various companies (including CPA) offers such services where vendor provides data to the companies who then deploy using web interfaces or as standalone database (excel/access).

It is very important to link this data with market sales of product such that researchers can identify its effort, objective and impact of the patent knowledge management system.

How to measure effectiveness?

So far, there have been no clear evaluation criteria for such system. However, some research institutes propose certain models to evaluate companies strategy on patent management.

Success Stories:

There are various companies who are presently on top in the world and generating high revenue partly due to their state of art patent knowledge management practices.

Some such companies are:
Qualcomm, Interdigital, Dow chemical, IBM, BT, DSM, P&G, Intel, and many others....

References:

Some thoughts presented here are borrowed from public presentations made by prominent speakers and writers.

Thanks for overlooking the typos!
Glad you reached at this point :-)