Patent analysis is an all-encompassing term that covers all aspects of evaluating a patent or a portfolio of patents from any and all technical, competitive, and/or economic perspectives.
For a single patent, the analysis focuses on the technical and competitive merits, its potential validity, and its potential use/infringement. Activities relating to claim construction, prior art research, market analysis and research, claim charting, and reverse engineering are all activities that we perform in general to support an inquiry of whether the patent is valid, valuable, and/or infringed.
Patent portfolio analysis, on the other hand, tries to provide imperative information regarding the competitive landscape of patented technology through research, review and valuation. IP professionals understand that portfolios of patents are commonplace and they require detailed examination of competitors, acquisition targets, and internal assets. The primary purposes of most portfolio analyses include: gap and whitespace identification, potential infringements, and portfolio optimization and diversity.
Patent & Portfolio Services
The following 5 types of analysis are the most common services we provide:
Patent Portfolio Mining
Customized, systematic, and cost-effective review of patent portfolios to quickly identify the most potentially valuable assets contained therein.
At GHB Intellect, we provide patent mining services by dividing the portfolio into different segments based upon the specific knowledge required by a subject matter expert to provide the appropriate review of the portfolio. Then, we assign each divided segment to the respective expert. Our experts are adept at reviewing large sets of patents and quickly providing a ranked assessment.
Because we only source deeply specialized experts for each division of the portfolio, any portfolio is cost-effectively filtered down to its gems by spending only minutes on each patent. We believe that transparency is an important element driving the quality of our services and we provide a documented report of the basis for all patent rankings. This allows our clients to inspect and find comfort in every aspect of our strategic approach and final results.
Systematic, multi-phased approach to detecting potential infringement and analysis of detection success probability.
Our validated process for identifying potential infringement analysis permits our highly specialized experts to remain consistent in their performance. Our experts analyze patents against potentially infringing products and produce claim charts, or Evidence-of-Use (EoU) charts. The claim charting process includes a meticulously detailed mapping of one or more patent claims, element by element, to a potentially infringing product or standard. Our experts do their utmost to complete such charts using publicly available documentary evidence.
Because they are experts in their industry, they typically know where to look for such evidence. They meticulously examine every element of a particular claim to determine the evidence required to satisfy the mapping between the claimed invention and the suspected product. However, sometimes it is not possible to close all gaps in the chart. In such cases, they provide all the insight they can provide based on their experiences and the inferences they have found in the literature to give guidance and a level of confidence on the potential infringement. Moreover, they will provide estimates for the reverse engineering effort required, if any, to close the gaps.
Their ultimate goal is to provide the highest quality service at the lowest overall cost to the client.
Prior Art Research
Unique process of prior art search involving search & technology experts.
A prior art search can be done to support a Freedom to Operate (FTO), Validity, or Patentability inquiry and requires two very distinct types of expertise:
1) Patent database search proficiency
2) Technology/Science specialization
At GHB Intellect, we have leveraged a large team of experts and specialists to devise a cost-effective and validated methodology of pairing the two specialties for each case. This method has proven to produce quality, consistent search results without substantially increasing the cost to the client.
Competitive research and analysis of relevant IP holdings in the industry.
IP landscaping, or patent landscaping, involves the process of research and data analysis of all relevant patents of the companies/competitors of interest. Then, categorizing them based on a customized multi-dimensional matrix of attributes to create a set of visual representations of IP holdings in the industry. This search and mapping is also frequently done for our clients’ own IP portfolios as well. As a result of this effort, the areas of strength and the gaps in the landscape can be identified and analyzed. Armed with this crucial knowledge, IP development funds can then be allocated in a judicious manner to close the gaps.
Comprehensive economic appraisal of the value of IP assets.
By combining valuation expertise with technology and industry knowledge, we are able to provide accurate valuation analyses based on generally accepted methodologies. The typical methods are: cost approach, market approach, and income approach (although there are variations to these, as well). This leads to accurate valuations and assessments to inform the consideration of buying, holding or selling assets.
The cost approach tries to establish the value of the IP assets by the assumption that the value of the assets is determined by the cost of acquiring the same asset. This cost can be estimated by either historical information on cost of development or the cost to reproduce/replace the asset.
The market approach, on the other hand, looks at what the IP assets may be worth in a free market. The valuation expert would then look at what prices similar properties have commanded in the market.
The income approach tries to estimate the potential income the IP assets may bring in the future and then discounts it appropriately to present value of such potential economic benefit.
Usually, the valuation expert estimates the economic value using all of the above methodologies and compares them before finalizing his or her recommendation.
Intellectual Property Background
According to the World Intellectual Property Organization, “Intellectual property (IP) refers to creations of the mind, such as inventions; literary and artistic works; designs; and symbols, names and images used in commerce.” These intangible creations are treated differently than traditional physical property and are separated into three primary areas known as patent law, copyright law and trademark law. Each category has been individually defined and is separately protected by statutory law.
The purpose of establishing sound intellectual property protocol became important in the US in the 1870s in an attempt to bundle the aspects of patent and trademark law and protect the rights of inventors of new technology. The goal was to give proper incentives for these inventors by allowing them time to monetize the creations without the threat of competitors stepping in with more resources.
As Mark Lemley wrote, in the Texas Law Review, “the proper goal of intellectual property is to give as little protection as possible consistent with encouraging innovation.” So, from the beginning, intellectual property was expected to be complicated for those who do not fully understand the intricacies of the topic.
Intellectual Property Glossary
Conversations on this topic can be difficult without familiarity of key words used in the IP industry. So, we put together a quick list to help with that. Patents, copyrights, trademarks, and trade secrets are common terms that are the backbone of most IP discussions. Let’s start there.
A patent is granted to creators who file their inventions with their governing body to limit the ability of others to make, sell or use the invention. In the US, the appropriate place to file a patent request is with the United States Patent and Trademark Office (USPTO). Patents are issued for 20-year terms. They do not grant permission to make, sell or use the product. Rather, a patent provides protection by excluding others from the use of the claimed invention.
The USPTO defines three types of patents to be granted:
1) Utility patents – invent or discover any new and useful process, machine, article of manufacture, or composition of matter, or any new and useful improvement thereof.
2) Design patents – invent a new, original, and ornamental design for an article of manufacture.
3) Plant patents – invent or discover and asexually reproduce any distinct and new variety of plant.
Other patent law jurisdictions around the world have similar categories of patents. These patent types are the primary area of intellectual property research that we focus our efforts on.
The patent law of each jurisdiction defines what is eligible to be patented and the requirements for patentability. For example, US patent law disqualifies a mere idea or formula from patentability. Instead, a machine, a process, composition of matter, etc., has to be described for making that idea “useful,” and, therefore, patentable.
In addition to being eligible in subject matter, an invention must be “novel” and “non-obvious” before being granted patent protection. Novelty refers to the non-existence of prior art that describes the claimed invention. And non-obviousness requires that the claimed invention have differences compared to the closest prior art that not obvious to a person of ordinary skill in the art.
According to the United States Copyright Office, a Copyright is “a form of intellectual property law, that protects original works of authorship including literary, dramatic, musical, and artistic works, such as poetry, novels, movies, songs, computer software, and architecture. Copyright does not protect facts, ideas, systems, or methods of operation, although it may protect the way these things are expressed.” Other copyrights jurisdictions have similar definitions on this type of intellectual property. Obviously, this area of IP law relates to creativity in terms of writing and other artistic efforts.
The USPTO describes a trademark as “a word, name, symbol, or device that is used in trade with goods to indicate the source of the goods and to distinguish them from the goods of others.” Simply put, trademarks are designed to prevent others from using the same distinguishing mark of the source of a product or service. It is important to note that trademarks do not prevent others from making the same goods or provide the same services under a different representation.
Trade secrets are formulas, lists and other information that are not protected under intellectual property laws. The US Small Business Administration says, “Unlike other types of intellectual property—patents, trademarks, and copyrights—the law does not provide for any registration in order to obtain legal protections for trade secrets.” In the US, the Uniform Trade Secrets Act was established to outline general principles to follow in regards to trade secrets.
The principles of IP we discussed above have been more focused on issues and resolutions found in the United States. However, we work extensively in many countries outside the US. To learn more about our perspective on International Intellectual Property Research Services, please continue to our article, International Automotive IoT Patent Trends.
Protecting Intellectual Property
In today’s competitive market, intellectual property is a crucial asset type used by industry players to meet their business objectives. This is particularly true in high technology and scientific industries where the speed of innovation can be exponentially increasing. This creates the need for a sophisticated strategy of how to best leverage and protect highly technical assets with limited resources. A recent study by The Global IP Center confirmed that IP protection is strongly linked to innovation.
What does this mean to technology companies? It means that because of the implications on future growth, intellectual property business analysis and patent portfolio business management must be taken very seriously. Decision makers in these industries must require that the experts they utilize in analyzing patents, internally or externally, maintain a thorough understanding of the underlying science and technology they use to avoid critical oversights. A strong science background is not enough, however.
Extensive experience in the industries of interest is crucial in understanding what innovations are valuable and which should be ignored. This kind of understanding can reduce the costs substantially. An expert who can make a correct judgement call about the potential value of an invention can not only save considerable cost associate with pursuing the wrong inventions, he/she can provide incredible value in terms of identifying which assets to further investigate. As such, limited patent analysis dollars can be put to best use. Of course, experience in expert patent analysis and economic portfolio management from a variety of perspectives is also required to put all vital pieces of the analysis together.
Our highly experienced subject matter experts provide this experience in both short, high-level analyses and in the most extensive technical patent investigations. We also apply appropriate evaluation techniques and gating criteria to our analytic processes to continually assess the value of the assets being investigated and the effort being expended in order to limit unnecessary expenditure.
For projects that require it, such as litigation support, we provide a team of experts from various disciplines that can work together to analyze patents and prove infringements. This sometimes requires an expert in the technology and industry, an expert in reverse engineering, and one or more lab technicians. When litigation or patent office proceedings are at stake, experts with more experience with such proceedings may get involved either as consultants or as testifying experts. We frequently help companies through the following steps:
Each of our experts holds an advanced degree (typically a PhD) in their subject matter area and often has had dozens of patents and publications to their name. They have each also analyzed hundreds of patents and have previous experience producing high quality Claim Charts and Evidence of Use (EoU) Charts.