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Service 2 - IPR analysis and survey mini-guide
INDEX
Page 2 - What “IPR information retrieval” is?
Page 3 - Use of IPR information for your business
Page 4 - Use of IPR information to find a business strategy
Page 4 - What information can be Extracted from Patents?
Page 4 - What information can be extracted from Trademarks?
Page 5 - What information can be extracted from Industrial Design?
Page 5 - What information can be extracted from Domain Names?
Page 6 - Conclusion
Page 6 – Bibliography
Page 6 - References
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What “IPR information retrieval” is?
Usually we know Intellectual Property Rights as tools for managing enterprises intangible assets,
for example registered trademark or industrial design or technical solution patented1.
But “IPR world” is also a very interesting and powerful source of crucial information to improve our business!
How? Trough IPR information retrieval. To explain what IPR information retrieval is, we can analyze an example: a patent. A patent is a document having at the same time an economical,
technical and legal power2. Indeed, the patent is a form of exchange between the inventor and a
sovereign state: the inventor disclose his invention in exchange for a monopoly which gives him the time to exploit his invention and realise his value but the information regarding the discovery
becomes public and can provide the basis for further research by others1. For this reason it is
possible to reach technical information or knowledge in general which has never been published elsewhere. Patent and trademark literature refers to both granted and published patent or registered trademark and they are available for searching at many of the world’s patent and
trademark authorities1.
IPR information retrieval means searching patents, trademarks, industrial designs, domain names etc. in order to:
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A
NALYZE THE STATE OF THE ARTWhy and When?
To sample each major facet of a broad technology or trademark or design within a recent period. To gain comprehensive overview of a product or technology before any R&D investment
is made or when loocking for a trademark or design or patent license1.
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A
NALYZE EVIDENCES OF USEWhy and When?
To identify literature supporting evidence that a product encompassed by the rights of an active subject patent or trademark or design is being made, used, sold, or distributed within the
jurisdiction or country of origin of the patent1.
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A
NALYZE THE PRE-
FILING PATENTABILITYWhy and When?
To identify prior art pertaining to the core inventive concept for the purpose of drafting a patent
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A
NALYZE THE NOVELTYWhy and When?
To identify prior art pertaining to the core inventive concept of invention or to identify identical/similar trademark or to identify identical/similar registered design that may preclude
the patent/trademark/design being issued1.
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A
NALYZE THE“
FREEDOM TO OPERATE”
OPTIONWhy and When?
To identify any enforceable granted patent or registered trademark/design claiming the subject
matter of a product that is intended to be made, used or sold in a target jurisdiction or country1.
-
A
NALYZEIPR
PORTFOLIO ORIPR
LANDSCAPEWhy and When?
The needs for landscape searches vary widely and are typically business driven to assess gaps of patent or trademark or design protection in an industry or comparing IPR portfolios between two or more competitors.
Use of IPR information to find a business strategy
The exploitation of IP can form the basis for a business strategy. However, it is equally important for businesses to stay abreast of industry and competitor developments, including continuous monitoring of newly published patent documents. Every firm should have in place a Competitive Intelligence program to provide management with the best information and analysis for
executive decisions 4.
The purpose of the state of the art search is to gain comprehensive overview of a product or technology or business strategy: ideally this search is done before any R&D or marketing
strategy investment are made. This kind of search is also useful when locking for a license1.
Analysis of Intellectual Property holdings may reveal a great deal about a competing corporation's technology strategies. Patent and other IP data is widely available publicly from a
variety of free and fee-based sources, and is standardized to a high degree4. Here some common
goals of competitive intelligence5:
− Detecting competitive threats
− Eliminating or lessening surprises
− Enhancing competitive advantage by lessening reaction time
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What strategy should the company adopt?
− Understand strategies adopted by competitors in the market
− Determine strategy to adopt as a reaction and to remain competitive
What determine a successful product in the market? Innovation + Brand + Design
Analysis of Intellectual Property holdings may reveal a great deal about different moves in the industry.
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What information can be Extracted from Patents
4?
Identification of competitors or collaborators:
The results of any subject search can be ranked by assignee or otherwise graphically charted to compare the gross numbers of patent documents held by competing companies. This kind of analysis needs to be weighted in favour of inventions with counterpart fillings in many countries, since such an invention represents more R&D dollars than an invention protected in a single country.
Assessment of human capital by analyzing inventor records for competing companies:
A ranking and time-line review of inventors may reveal a broad based R&D team with low turnover, or a volatile situation in which reputable scientists have fled to other companies. Patent records may reveal jointly held patents with Universities or other research collaborations, indicating strategic use of human resources.
Assessment of competitors' R&D effort and direction:
Graphic mapping of the density and frequency of patent fillings across all technologies for a competitor reveals the focus and intensity of their research efforts. Gaps in their IP portfolio may be discerned, and offer evidence of need to license or partner. Patent family searches (and also trademark searches) indicate the segments of the international market the competitor is targeting. Temporal profiles for patent fillings may show a competitor is abandoning a particular field. Citation searches may reveal competitors "patenting around" a patent portfolio, filling improvements to a rival's product line.
Discover market trends, birth of new technologies:
The US Patent Office makes their data searchable by country of filling, so it is very easy to map technologies by patent classification filled from particular countries and analyze developing markets. A temporal map of patent fillings will reveal accelerated patenting in hot subject areas. Find new employees, consultants, and experts:
A subject search may reveal universities filling patents in an area of interest, revealing an economic way to engage temporary scientific talent, obtain contract research, or license cutting edge technology.
Locate licensees:
A thorough search of a company's area of patented technology may reveal newcomers to the field who should obtain a license to practice their patents.
Acknowledgement about public policy-relevant information : From an analysis of filling trends to be used by policymakers.
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What information can be extracted from Trademarks?
Since trademarks comprise brand names, logos and slogans for existing as well as future products, services and advertising campaigns, taking a look at an organization’s trademark fillings gives you a view into its marketing strategy. Trademark applications not only disclose the
mark, but also describe the goods and services associated with it5.
The main function of a trademark is to enable consumers to identify a product (whether a good or a service) of a particular company so as to distinguish it from other identical or similar
products provided by competitors3. For this reason usually it is advisable to conduct a trademark
search in order to verify that consumers are able to distinguish easily between identical or similar products. Trademark information are also very important if:
- a company can not apply for a trademark because is already registered for similar or
identical products but could be interested in obtain a trademark license;
- a company is interested in acquire information related to a particular product but only the
product commercial name is known;
- a company is interested in competitors IPR portfolio to understand the competitors strategy.
Oh this way Trademark Information is a useful activity because is it possible to reach:
− information about competition;
− information about new marketing trends;
− measurement of commercial activity of a company;
− information about “intent to use” status of a trademark to discover products a competitor
has not yet launched;
− determination of which new geographic markets a competitor is pursuing
− assessment whether a competitor’s efforts in a particular area is increasing or decreasing;
− discover which law firms represent which trademark owners.
What information can be extracted from Industrial Design?
In everyday language, an industrial design generally refers to a product’s overall form and function. For businesses, designing a product generally implies developing the product’s functional and aesthetic features taking into consideration issues such as the product’smarketability, the costs of manufacturing or the ease of transport, storage, repair and disposal3.
Industrial design information are also very important if we want to know5:
− how your competitors customize their products to target a particular customer group;
− how they target a niche market;
− how they strengthen their brand;
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What information can be extracted from domain names?
Domain names have become an important part of a company’s brand5, indeed:
− Use of multiple domain names permits to represent various products and to serve
assorted markets;
− Domain gives access to product and branding strategies;
− Preserve brand integrity and access to information about competitor bad faith, cyber
squatting or other offenses.
− Track industry actors and determine their market strategy by conducting inventory of
domain name assets and compare it to trademark databases.
Conclusion
In the knowledge economy, IP adds value at every stage of the value chain from creative/innovative idea to the market: analyzing IP information of the different actors in the
market is a strategic tool to assess potential risks and opportunities5.
Bibliography
1 –“Current challenges in patent information retrieval” - Editors Mihai Lupu – Katja Mayer – John Tait – Anthony J. Trippe – Springer 2011
2 – “NPL based information retrieval” - Olga Babina – South Ural State University 3 – “Making a Mark” – WIPO 2006
4 – “Using Intellectual Property Data for Competitive Intelligence” - Ron Simmer, Patent Service Librarian, University of British Columbia, Vancouver - Licensing Executive Society USA & Canada Inc. 2001
5 – “Competitive Intelligence – Using Intellectual Property Information” - Marina Sauzet Consultant WIPO SMEs Division – WIPO 2010
