Intellectual Property Strategy

The Best Approach to Launching a Development Monitoring Strategy

Intellectual Property Strategy

Not the Time to Stretch Resources

In an economic climate where the battle cry is to, “Do more with less!” it might be tempting, even seem logical, to ask your solution developers to pull double-duty. While they are working on a new invention, couldn’t they quickly check to make sure no one else is doing the same thing? They have all the information they need to do that, right? There are plenty of search applications online, and you trained them on that in-house search tool just a few months ago…

Stop. You are going to get hurt on the frontlines or blind-sided from the back of the innovation field because your vision is narrow and your resources are spread too thin.

You pay your scientists and engineers to create and innovate, and they deliver. They are your soldiers. You cannot ask them to also be your strategists and reconnaissance specialists. The R&D people are extremely knowledgeable, but they are also wise enough to know that they don’t know everything and are well aware that others in their space are creating and innovating and seeking patent protection at the same (or faster!) pace. And your inside IP counsel is already consumed protecting your existing portfolio. Having either of these groups conduct their own searches distracts them from their true mission and leaves your company vulnerable to falling behind in the market or facing litigation.

Time to Launch a Monitoring Strategy

A long-term strategy to watch the progress of your competitors, target areas for development, and protect your intellectual property (IP) requires consistent and concentrated efforts. Look to your technology transfer office, inside counsel, outside counsel, or R&D leaders to establish an objective for monitoring the IP landscape. You might decide to monitor a certain industry at large or watch some specific companies rather than a technology. This might seem like casting a wide net, but it is actually not too broad at all; monthly or quarterly alerts can be set. With properly executed and managed search strategies, most alerts can produce on-target results with few mis-hits or outliers. A solid return on the alert is somewhere between 10-100 results depending on the technology area and frequency of the update.

One reason to monitor is to get early warning that a competitor is seeking patents that will impact your freedom-to-operate. After detecting a published application that is of interest, you can prepare a competitive response. For instance, laws in some countries allow an opposition period during which evidence may be given to show prior art. Another instance is Prior User rights, wherein evidence of using the technology before the patentee applied for their patent (such as trade secrets) allows someone to continue using the patented technology. It is best to be able to assemble a Use of Evidence report as early as possible.

Time to Employ Some Help

If you are trying to formulate the best business plan based on your developing technologies and are interested in protecting that technology, then use a search service. Any searching that requires in-depth, extended analysis is best left to an expert that has the skills, time, and focus to build and rebuild queries and access a variety of patent and non-patent literature resources. While monitoring, a quality alert has human filtering to help control the settings and produce the most applicable results. An investment in your IP to use an outside service ultimately saves time and money and ensures that you will not miss some relevant art.

A professional in search technologies and analytics starts with some type of retroactive search, perhaps going back one year in time to capture recent patents. This allows the searcher an opportunity to conduct a quality control measure to ensure the strategies going forward will also reveal quality hits on the alerts.

Following are some types of searches for which a professional searcher can establish a monitoring and alert solution:

  • Freedom to Operate (may be known as clearance, freedom to use, right to use): Freedom to Operate (FTO) is the legal ability of a company, organization, or assignee to make, market, license, sell or distribute a product or technology without fear of infringement. FTO reports and analysis are often conducted prior to a company either investing money into a certain technology or in advance of a company partnering or licensing with another company.
  • Patent Validity/Invalidity: An invalidity study is conducted after the issuance of a patent and is meant to challenge the enforceability of a patent by examining art potentially missed by the examiner during the examination process. It’s possible foreign patents and non-patent literature may be of great value for the invalidity study because it may show the publication of the invention prior to the priority date of the application for patent, sales of the invention, prior public knowledge, or prior public use was in existence. For invalidity, the alert may yield a patent in the eyes of the attorney that is frivolous and should not be granted.
  • Patent Landscape: A patent landscape is performed to give a company the lay of the land in a certain technology space. A landscape can be as broad or narrow as needed in terms of the client. The final landscape report includes raw data as well as visualizations to identify potential trends and possible gaps in technology. Some landscapes can be more granular and detailed and include a taxonomy analysis and charting of features.
  • State of the Art: A State of the Art (SoA) search is often done in the same fashion as a Patent Landscape search is done. It gives a large lay-of-the-land view and can be a good starting point to the next step, which is usually an FTO search or an Evidence of Use study (EOU). SoA searches tend to be the broadest of all the searches and give a feel for how a certain technology has evolved over time and potential gaps in that technology.

Success comes in three parts: the right knowledge, the right tools, and the right skills. To successfully monitor an industry and regularly update a study, build an alliance with experts in patent searching and analysis.