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Consultancy Services:

In 2009 I was contracted under NDA by PatAnalyse staff to provide advice for the strategic portfolio alignment for one of the major European Telecommunication conglomerates. I reviewed portfolio of cryptographic technologies. Some patents in this portfolio were clearly an emerging technology at the date of filing. However technologies and industry standards have substantially moved on since then. As a result many patents have changed their technology status from emerging technology to redundant. A careful study of each individual patent involved a comparison to the prior art and to current marketing wisdom. This was a very interesting assignment and I would definitely participate in such studies again

Sergey Nenashev PhD,
Leading expert on information security
Inforion Co. Ltd

Further Details of Patent Studies:

Strategic portfolio alignment

Separating key patents from low value assets and understanding the role of different patent bundles can help to organise the portfolio and maximise its value

In a typical high-technology market, the product/technology life cycle is shortening as a result of increasing competition and more rapid innovation. In consequence the active life of a technology has become ever shorter – and much less than the 20 years of protection provided by patents. However little has changed in the way that companies actively reviewing patents in their active patent portfolios.

It is common knowledge that less than 20% of patents represent more than 80% of the total value. Typical issues are:

  • continued maintenance of patents whose utility has run out;
  • neglecting to trade off non-strategic patent assets;
  • continued patent filings in areas with more than sufficient existing protection;
  • reliance on “old” patents without renewing strong competitive position with fresh IP.

A macro level understanding of how the individual patents in the client’s portfolio are distributed across various scoring metrics often requires thorough investigative work involving current marketing intelligence and benchmarking of the patent portfolios of close competitors.  As a benefit of the newly gained understanding of the dynamics and interdependencies in the patent portfolio, the company improves its patent prosecution, acquisition and divestiture strategies.

For better understanding of small and medium size patent portfolios (with less than 2,000 patent families) PatAnalyse can introduce detailed scoring and rating in order to take into account a combination of criteria:

  • the breadth of geographical coverage (calculated automatically);
  • the role of the patent (strategic, defensive, non-core, dormant, redundant);
  • end-user benefits;
  • technology status (base, key, pacing, emerging, and speculative);
  • claims coverage (conceptual, broad, constrained) reflecting the difficulty of circumvention of claims;
  • the level of inventiveness.

For instance according to the TRIZ (Theory of Inventive Problem Solving) there are several levels of inventiveness as explained below.

  • A simple improvement - about 32%.
    • Obvious solutions without substantial change to the system; narrow extensions of existing solutions rather than actual inventions
  • Slight modification - about 45%.
    • Usually combines knowledge from different areas within an industry; still does not resolve major technical compromises
  • Radical change - 19%
    • Resolution of some contradictions in the existing solutions; usually based on a single engineering or scientific discipline
  • New system - 4%
    • Replacement of the old technology with a new one; usually based on interdisciplinary solution

Technology status can also be classified:

  • Base technology - is ageing technology which is available or known to all industry participants; it cannot provide competitive advantage because of its widespread use.
  • Key technology - a proprietary product or process technology already well embodied in the processes and products on the market; is critical to the basis of competition - it is used by its owners to differentiate products and services from those of their competitors.
  • Pacing technology - those emerging technologies which already demonstrated their ability to change the basis of competition and as a result are now moved to the development stage at many companies; these will probably become a key technology in the near future.
  • Emerging technology - forward looking technologies sometimes under development in substantially different industries; at an early research stage with unknown potential, but promising.

A small number of emerging technologies of today will be the pacing technologies of tomorrow; some, but not all, pacing technologies of today will be tomorrow’s key technologies; and some key technologies become base technologies and will serve as a new foundation for an industry.

The classification by technology status is useful in evaluating how a company's technology compares to its internal needs and targets and to those of its competitors, and in providing direction for its R&D efforts. Also it can assist in cost reduction through the abandonment of redundant and dormant patents or sale of non-core IP. For instance, it might be useful to present Patent Maps with the patent information regarding the 'technology status' plotted against the 'level of inventiveness' or 'role of the patents' taxonomies. Although it might be reasonable to hold on to 'slight modification' patents for 'key' technologies, it is quite questionable to actively maintain 'simple improvement' patents for 'base' technologies.  Indeed, mastering 'base' technologies is essential to be in business and so a set of broad 'modification' patents with the 'base' technology status can serve an important defence purpose. Nevertheless an excessively strong position in 'base' technologies might indicate a waste of resources; while a lack of 'strategic' patents in 'pacing' technologies might be an alarm signal for the future of the company.

Working closely with the client's team, the 'rating' taxonomies can be substantially modified. To guide analysis of the patent portfolio it is possible to create several Patent Maps filtered by different categories of the 'rating' taxonomies; or to create a single Patent Map but to apply different weights to different parts of these taxonomies. The Patent Map builder fully supports the scoring mechanism and allows the creation of Patent Maps with weighted data for each patent family.

The 'Software as a Service' Web 2.0 user environment of the on-line patent portal system fully supports multi-user collaboration and provides the client company with an option for contributing to the process of assignment of various 'rating' taxonomies to individual patents. A frequent root cause of ineffective IP utilisation is the fragmentation of the necessary knowledge across the corporation. The collaborative nature of our on-line tools allows to properly maximise the value of a company's IP by empowering the previously hidden internal knowledge.

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