(c) maigister ltd, february 1998 the business information toolkit patents as a source of business...

(c) Maigister Ltd, February 1998

The Business Information toolkit

Patents as a source of business and technical information.


Stephen Adams

Magister Ltd.

Patents documentation consultancy and training services.


Patents information

• What is “intellectual property” ?

• Patenting is not for everyone - but vital to some.

• The IP portfolio - what use is a patent ?

• What patents can tell us - and what they can’t.

• The basics of the patenting process.

• Where and how to look for them.


What is “intellectual property” ?

• IP is part of the assets of an organisation.

• Certain rights (intellectual property rights, or IPR) are associated with those assets.

• IP consists of two distinct areas:– industrial property– copyright and neighbouring rights

• Different industries utilise different rights.


Patenting is not for everyone

• Industrial property rights includes patents, trade marks and industrial designs.– these rights are typically used in

manufacturing industry, and relate to “inventions”.

• Copyright includes written and artistic works, performing and broadcasting.– these rights are typically used by writers,

artists, sculptors, musicians, singers etc.


Patenting is not for everyone

• Elsevier sale of IPC Magazines– the asset value lies in the goodwill and

reputation of the titles and the income derived from their sales

– copyright, rather than patents, is important.

• Laura Ashley - ripe for take-over ?– asset value principally lies in copyright in

their fabric designs ; patents would not figure much.


Patenting is vital for others

• Chemical, electrical and mechanical industries protect their inventions by patents.– Research-intensive industries can be made or

broken by the grant of a patent.– A granted patent is as much a part of a

company’s assets as its facilities or staff.

• Some industries (IT, software, horticulture, biotechnology) use special forms of rights.


The IP portfolio

• A given “idea” can be protected by a wide-ranging portfolio of IP rights ;

• e.g. Tetley pyramidal tea-bags ;– patent -- bags and the machine for making

them– registered design -- their physical appearance– trade mark -- Tetley ®, ‘More room to move’

® – copyright -- packaging, “Sidney” characters– performing rights -- the chimps ?


What use is a patent ?

• Definition :– “a grant of exclusive rights by the state for a

limited time in respect of a new and useful invention”

• The patenting process achieves two results :– inventors get the chance to recoup their

investment whilst their patent is in force– publication of the invention stimulates further

research and competition



• A patent is essentially a negative right.

• It entitles the patent holder to prevent other people from– making– using– or selling

the invention whilst the patent is in force.



• Just as with the tangible assets of a company, a patent monopoly can be– used by the owners (“worked”)– bought or sold (“assigned”)– leased out or rented in (“licenced”)– stolen (“infringed”)



• If the patent holder decides to work the invention, they only have a finite monopoly period (typically about 20 years).– The aim of working the invention is to

establish a market niche for the product which lasts at least as long as the patent, because….

– once the patent expires, the competition can also work the invention, free of charge.



• A successful patent monopoly will establish the product or process so strongly that sales will hold up even after the patent expires :– “Aero ®” chocolate process - 1930’s patent– “Paraquat ®” weed-killer - 1950’s patent

• Products “off-patent” can still be market leaders :– “much imitated, never surpassed”


What patents can tell us about a company -

• Major fields of industrial activity

• Target geographical markets, for each product

• Trends in research ; growing or receding emphases

• Key personnel and addresses

• Research collaborators

• Forthcoming products


- and what they can’t (directly)

• Licenced-in technology

• Revenue streams – derived from own working – derived from licence fees

• Related IP rights– not usually a direct link from patent to/from

trade mark

• Secret processes


The patenting process - choice of protection strategy

Objective Mechanism Advantage/disadvantage

Freedom of use

Protection




Freedom of use

Protection

Apply for a patent

Publish it

Keep itsecret




Freedom of use

Protection

Apply for a patent

Publish it

Keep itsecret

+ cheap- competitor can use it

+ monopoly rights- costs more- competitor informed

+ cheapest (if kept !)- independent discovery by competitor can jeopardise your own use.


Patent databases

• Record structures in patent databases are often quite different from other bibliographic databases.

• At best, they provide a “snapshot” which needs to be interpreted alongside other data.

• Understanding the patenting process will aid your interpretation.


Outline of the basic patenting process

PUBLIC

SECRET

t = 0 t = 12

t = 18

Time (in months)

Firstfiling ofinvention

Foreignfiling

Early publication- laid “OPI”

t = 24

Decision to proceed

Substantiveexamination

t = 36 +

Grant ofpatent


Our definition :–“a grant of exclusive rights by the state for a limited time in respect of a new and useful invention”

there is no such thing as a “world” patent

each invention is represented by a dynamic“family”of patent documents

Different databases will contain different familymembers ; some only contain a single member,others contain more than one per family.


The development of the patent family

t = 0t = 12

t = 18

Time (in months)

Firstfiling ofinvention

CountryA - grantedslowly

CountryB - grantedquickly

CountryC - never granted ?


Sources of patent information

Multi-country,multi-technology

Single country,multi-technology

Multi-country,single technology

Single country,single technology

probably the most useful type - if available

2nd.choice



Multi-country,multi-technology


Chemical Abstracts - chemistryAPIPAT - petroluem industryFSTA - limited countriesCAB - limited countriesINSPEC - not currentPharm - pharmaceuticals




Derwent WPIINPADOCEDOC







CLAIMS (US)PATDPA, PATOS-DE (DE)FPAT (FR)EPAT, PATOS-EP (EP)PCTPAT , PATOS-WO (WO)JAPIO, PATOLIS (JP)CHINAPATS (CN), etc.






CLAIMS (US)PATDPA, PATOS-DE (DE)FPAT (FR)EPAT, PATOS-EP (EP)PCTPAT , PATOS-WO (WO)JAPIO, PATOLIS (JP)CHINAPATS (CN), etc.


BioBusiness (US)


The legal aspect of patents

• All patents expire eventually.

• Sometimes, they are allowed to expire by their owners before normal date (“lapse”).

• Depending upon the purpose of your survey, you may need to consider how to locate this information (“legal status”) as well as the basic subject search.


The discovery process

• Identify the type of question– patent portfolio (“companies”)

• Q : What is company X doing in this field ?

– technology survey (“subjects”)• Q : Who are the major companies in this area ?

– personnel (“people”)• Q : Who are the key people ?

• The sources to use will depend upon the question


Key bibliographic sources

• Derwent World Patent Index (WPI)– covers about 40 countries, most technology– provides English abstracts for many records

• INPADOC– covers over 60 countries– no abstracts ; basic bibliographic details only– short time-lag, therefore very up-to-date for

major countries


Key family & legal status sources

• INPADOC / LEGSTAT sub-file– covers about 20 countries

• EDOC– about 25 countries, but includes some which

are not in WPI ; useful for getting a complete family

• CLAIMS / RRX– very detailed but for US patents only



Question Need Use

Portfolioreview

Standardisedcompany namefields

WPI + “Who Own’sWhom” data

TechnologysurveyPersonnel



Question Need Use

Portfolioreview



Technologysurvey

Good subjectindexing

(a) subject subsetdatabase OR

(b) WPI

Personnel



Question Need Use

Portfolioreview



Technologysurvey

Good subjectindexing

(a) subject subsetdatabase OR

(b) WPI

Personnel Complete datafields

Usually INPADOC +WPI together ; othersources often needed


The patent portfolio reviewA successful portfolio search requires good knowledge of thecurrent company structure and its historical roots :e.g.

Fisons

Boots

Astra A.B.

F.B.C. ScheringA.G.

HoechstA.G.

AgrEvo

ScheringA.G.

Astra Charnwood Ltd.


The patent portfolio review

•Choose your source in order to minimise the problem of company name variations : e.g.

Nippon NoyakuNippon NohyakuNihon NoyakuNihon Nohyaku

are all the same company = Japan Agrochemical Co. Ltd. !

•All under Derwent company code NIPN



• Standard Derwent company codes can also help with subsidiaries, but are not 100 % reliable - you should supplement with data from other sources :

– Warner-Lambert Pharmaceuticals also operates under the name of Parke-Davis in the US ; both coded WARN.

– Tioxide was a subsidiary of ICI (code ICIL), but it had its own company code.

• An important “by-product” of the portfolio review is the identification of research collaborators (co-assignees)



• Another hidden danger is multi-national company structures e.g.– the newspaper adverts for the Vauxhall

Vectra cited a number of patents for new car technology.

– at least one of the patents was in the name of Opel A.G., and was filed in Germany.

– Both Vauxhall and Opel are part of G.M.


The technology survey

• The biggest challenge is defining the field of search ; what’s “in” and what’s “out”

• e.g. - “Provide an overview of the major players in the U.K. paints industry”– decorative, automotive or artistic ?– researchers, producers, wholesalers or retailer

?– U.K.-based, selling in the U.K. or both ?



• It may be possible to short-cut the technology selection process by using an industry-specific database e.g. Pharm.

• This also helps with the problem of ambiguous terminology :– e.g. RAM

• Random Access Memory ?

• hydraulic ram ?

• or the four-legged variety ?



• If no suitable technology database exists, you should use one which has– wide subject coverage - to include your area

of interest AND– good subject indexing ; not dependent upon

free text alone.

• This combination of factors usually indicates the choice of WPI



• If your question is slightly more restrictive, you may be able to use one of the single-country, multi-technology sources :

• Q : “Provide a summary of research interests for Chinese biotechnology companies”

• A : could use Chinapats database, optionally in parallel with WPI



• Once you have identified the “bundle” of patents, they can be analysed by– originating country i.e. where is the

technology coming from ?– country of patent protection i.e. where do the

patent owners see their key markets ?– volume vs. time i.e. is this a growing or a

declining technology ?


The personnel search

• The usual target here is to identify key inventors.

• Typical question : “who is working on project X for company Y ?”– actually a 3-stage process ;

• subject search for project X,

• limit to company Y’s patents,

• then analyse the named inventors.



• Simpler searches may be requested :– “what has this person published in the patent

literature before ?”

• This requires a database with complete inventor data.– The most complete source is INPADOC, but

it suffers from being non-standardised data.– It is advisable to supplement this with other

sources.



• Similar techniques can also apply to analysing patent attorneys :– how often has this patent agent worked for

these clients ?– does he represent any other companies ?– how many court cases has he been involved

with ?– how many did he win ?


Summary

• Patent analyses are more appropriate to some industries than others

• Portfolio reviews can yield useful data on trends in a single company’s research and collaboration

• Technology reviews help to identify which companies are the “leaders” in a field


Summary

• Personnel reviews can give information on key inventors and others

• In some cases, these reviews may need to be supplemented by legal status data, from additional sources

• Patents can be FUN !

(c) maigister ltd, february 1998 the business information toolkit patents as a source of business...

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