CENSIS white paper: Intellectual Property in Business

Intellectual Property in Business: IP basics, IP management, IP strategy
IP Management during Growth (continued)
9 Identify IP opportunities for
your company – the sources
of information
The more you know about the market and competitors, the
better it is for your business decisions. In order to identify IP
opportunities, you need to add an IP perspective into many
analyses you have been doing already, such as technology
trend analyses or market analyses (for example, on business
models adopted by your competitors). However, some
strictly IP-based searches can deliver significant amounts of
valuable business information.
Prior art search (also known as state-of-the-art search
of patent and non-patent literature) can be a very useful
practice in your company in order to comprehend the
level of development in a particular technical field and
to guide your R&D efforts. You need to be cognisant of
the risks involved in uncovering potential infringements,
especially if you are trading in the USA and China where
patent damages can be increased for ‘wilful infringement’.
However, these risks are balanced against the benefits that
come from knowing the state of the art. (You should get
legal advice on these issues to help you balance the risks.)
The prior art search should be included in the initial
phase of your innovation process, i.e. when you start
thinking about a solution to a particular problem (before
you even invent anything). You should look for so-called
‘white spots’ 23 which refer to areas of missing knowledge;
these in turn can lead you to opportunity areas for
innovation and untapped potential. Through the prior art
search, you can also gain good insights into the patent
activities of your potential competitors. Another moment
for an intensive patent search is during the preparation of
a patent application. A patent attorney will run the search
for the patentability of the proposed solution.
The choice of search terms (combinations, synonyms,
descriptions) is decisive for getting good results from a
patent search. Thus, some level of linguistic creativity
is advisable when doing this. Another search path goes
through patent classifications such as International Patent
Classification or Cooperative Patent Classification. This
search relies on codes provided by a patent examiner for
patented or published solutions based on their technical
characteristics. The codes identify a technology field and
can help you monitor technology trends in a specific field.
You should also monitor and understand the IP practices
of your competitors, and your patent attorney can also
track the IP activities of chosen competitors/companies.
There are software tools designed for this task. If their
patents have been published, read them. Try to understand
what they claim (which features), which applications they
are interested in, and in which countries they are seeking
patent protection. The latter will give you a hint about their
target markets (territories). Written communication with
patent offices is public and can be easily accessed through
patent office databases (e.g., Espacenet from the European
Patent Office). Such official correspondence is a great
source of information: you can see how each patent attains
its ‘final shape’, you can find out examiners’ comments
and objections, read replies from patent attorneys, and
check if the patent is alive or lapsed and its priority date. If a
particular patent application is of concern for your business,
it is worth diving into the procedural aspects and consulting
your patent attorney on possible steps. Be aware that your
competitors may be doing the same!
In addition, analysing your competitors may reveal an
opportunity for cross-licensing (or patent pooling) or
one-way licensing. For example, if there is any overlap
between your solution and your competitor’s solution that
could increase the risk of infringement and litigation, then
a cross-licence might a reasonable option for both parties.
Likewise, if your and your competitor’s IP portfolio cover
different aspects of the same product, a cross-licence (or
a patent pool in case of very complex technologies) might
save you time and money that could otherwise be invested
in further development (a workaround solution). A crosslicence
might be royalty-based but also royalty-free.
This depends on the circumstances and negotiation
positions of the parties involved.
Another source of information is primary sources, such as
direct interviews with your customers, for example, on their
acceptance level of ‘closed’ IP practices. It may be the case
that the targeted customer group is reluctant to purchase
the products of companies practising ‘closed’ IP models.
This information should not prevent you from developing
an IP portfolio but should be utilised when framing the
business model (pricing and revenue streams).
Take-home message: IP-based searches, in particular
patent searches, can deliver priceless input for your
business decisions. Consult your IP attorney on the types
and scope of patent searches, and they can advise what
will work best for you.
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The term is also used in patent jargon; a white spot analysis describes a special type of patent mapping.
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