Having introduced the topic of patent analysis in my first post, today I would like to discuss a few real-world applications of how patent searchers can add value to their clients through some initial analysis of patent search results. These examples would be particularly relevant to a patent searcher contracted to provide a basic patentability search for a company. The example I use is quite generic, but hopefully you will get a better idea of how a few small additional steps in your searching can potentially translate to a tangible benefit to your client.
Before we get to our example, I wanted to discuss the series in whole. Due to the nature of the Intellogist blog, we will be delving into more high level, business applications of patent analysis, rather than spending a significant amount of time on the specifics of how to perform analysis for different tools (although details will certainly be present where appropriate). We believe in-depth analysis is more appropriate for a long-form scientific paper, rather than a short-form blog post. That being said, we encourage anyone who wishes to provide more detailed information on how to perform analysis using a particular system, with regards to the examples being discussed, to do so in the Comments section of this post or to start a new topic in the Intellogist Discussion Forum. As one of our goals with Intellogist is to create an environment that fosters discussion between various types of IP professionals, the more discussion you create, the more likely we will be able to address specific questions in the future.
You are a patent searcher hired by the medium-sized XYZ Corporation to perform a patentability search on a new Super Widget they have created. XYZ has made no mention of the importance of the Super Widget in their business strategy. During your searching, you come across a widget patented three years ago by inventor John Smith that is nearly identical to XYZ’s Super Widget. You also come across additional prior art that is similar, but not identical to the Super Widget. Typically, your contracted search ends here, where you provide XYZ with your search queries and your best references. What are some scenarios that may occur where delving deeper could uncover useful information?
A quick inventor search on John Smith shows that he is the author of two additional patents granted within the past 5 years. He is also the only assignee for all of his issued patents and did NOT use a patent attorney or agent to apply for the patents. A quick internet search for John Smith and his product reveals nothing within the marketplace, on in anticipation of the product. Using this information, you can gather that John Smith is likely a single inventor who had an idea and thought it might be a good idea to patent it. Since the patent that is a primary reference for the Super Widget is three years old but is not in the market yet, Jon likely could not or did not know how to find someone to manufacture, sell, or license his product. This means that if XYZ Corp. were to contact John, he may be open to a licensing agreement, or even outright selling the rights to his patent to XYZ Corp. By digging deeper into the invention-product relationship, this initial analysis reveals potentially helpful information for evaluating risk and opportunity.
A quick inventor search on John Smith shows that he is the author of four additional patents granted within the past 5 years. He is also the only assignee for all of his issued patents, except for one patent, where Sally Sitwell is a co-inventor and assignee. Since you’ve worked as an expert in this subject area for many years, you happen to know Sally Sitwell as a former co-worker. In addition to the conclusions drawn in Scenario 1, you may be able to offer to get in touch with Sally, who could potentially provide an introduction to John Smith for the XYZ Corporation. Your role as a subject expert provides extra value to the client, as it allowed you to refer them to owners of related intellectual property.
A quick inventor search on John Smith shows that he is the main inventor of over twenty additional patents granted within the past 5 years for ABC Plc, an international competitor of XYZ Corp. Some further research on ABC shows that John Smith’s widget has not appeared in the marketplace, and ABC has given no information to the public regarding the potential availability of Smith’s widget. At this point, you, as the searcher cannot make any additional conclusions, as XYZ’s business strategy is not clear.
XYZ may choose to do, among others, pursue strategic licensing opportunities with ABC, look for markets in countries not protected by ABC’s patent, produce the Super Widget anyway, or try to invalidate the Smith patent. In any case, XYZ’s situation may necessitate the need for you to perform a validity and/or infringement search for them. Your knowledge of the customer’s possible business position allows you to suggest relevant ways to extend their research.
Type of Analysis Performed and Tools used for Analysis
- Inventor search – use the search system that performed the initial search
- Background inventor and company information search – any popular internet search engine should work
- Additional analysis requires no additional cost for tools, only a connection to the internet and your current patent search system
- Additional analysis is quick and easy to perform in a short amount of time
- Looks for additional search opportunities for you
- Solidifies the relationship with the client
- Adds value in a competitive marketplace
- An independent searcher with a large personal network may be able to gather information and connections not available to the typical searcher, creating a competitive advantage
- Companies and/or attorneys may not want your analysis
- Companies and/or attorneys may feel your additional analysis is included in your price, seeking to lower your quote if the information is not valuable
- Clear cut conclusions will not always be available
- Lack of understanding on how to draw conclusions based upon relationships found in the analysis can reflect poorly on the searcher, and the corresponding search (even if it is well performed)
- Searchers with small personal networks may not be able to provide additional introductions or ascertain additional information
The addition of patent analysis to a patent search is fraught with initial pitfalls, but done correctly, can provide many rewards. Searchers should tread gently when introducing an analysis component to their search, stating that the analysis is something you are testing with your clients and is a free component above and beyond your search. You should also ask for a generous amount of feedback related to the value the additional analysis has for the clients. Not only does this provide information on how to improve your analysis, it provides a way to find out if the additional analysis does not generate the response you were hoping for.
Searchers should not underestimate the power a large network, both personal and professional, can have. Besides providing connections for additional business, a large network provides that six degrees of Kevin Bacon phenomenon that can turn a cold introduction into a warm one. For example, I was once introduced to a friend of a friend of a friend who grew up with people I knew in college, in a different state. Rather than having an awkward introduction, there was immediately something in common we had that warmed up the situation. This is especially relevant in the patent searching realm, where you, as a technical expert in an area of prior art, may be able to provide connections for your clients to experts in other technical areas, cementing your relationship with your clients and building your business brand.
This post was contributed by Intellogist Team member Dan Wolka.