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How do you go about building a world-class patent portfolio that either you license to someone OR commercialize yourself?

You are working on developing a technology in a start-up or a small/medium enterprise with limited internal IP strategy capability.

Very often we are approached by startups, small and medium enterprises, or independent inventors who have unique ideas and are wondering what the best way is to monetize their ideas. Patents are one way to do so. Whether you want to commercialize the patent yourself or license it to others, a single lone-standing patent typically does not help. You need a patent portfolio, i.e., what we call a “moat”, to protect a compelling idea from various angles.  Large companies already have this capability with large internal teams of R&D and IP staff but how do small companies and independent inventors compete?

SciTech Patent Art (SPA) analysts and The Solution Infusion Company (TSIC) have teamed together to bring this world class strategic capability to inventors in small and medium-sized companies. We work together with the inventor’s organization – R&D scientists and IP lawyers – to create a moat.   Here we describe a recent case where we supported a Japanese client (a start-up within a reputed university) in generating a portfolio of robust ideas for patenting. This is an on-going project and we will update this case study as we progress further.

Patent  Landscape

So how did the SPA/TSIC team generate a portfolio of robust, patent-able ideas? It involved extensive collaboration with the client’s R&D team to provide a patent landscape study that involves the following steps:

  1. Technology background study:

    First, SPA and TSIC staff spent extensive time understanding the technology, prior filings, new experimental results and observations. During this phase, there was open knowledge-sharing between the SPA/TSIC team and the client. Extensive Q&A on why one experimental path was pursued vs. another, novelty/benefits of the proposed inventions, etc. were discussed.

  2. Patent search and analysis:

    Armed with a detailed understanding, the SPA/TSIC team then created detailed search strategies to identify patents of interest and analyzed them in detail while keeping the client’s perspective in mind. The analysis was done with three perspectives in mind:

      • Are there patents that could potentially cause issues in commercializing the client ideas and if yes, how does the client navigate around such art?
      • What are all the aspects of client’s invention (composition, method of manufacture, etc.) that are unique and what patent portfolio of filings could offer a robust protection?
      • Are there any new aspects that client could consider for further R&D based on prior art?

    The outcome of this step was as follows. 1000s of patents were screened to identify about 200 patents of interest and within those 200, detailed one-page summaries were developed for about 25 patents.

  3. High level summary charts:

    Post the detailed analysis, a series of high-level charts summarizing trends, key inventors, etc. were summarized so that the overall direction of the space was well understood. Potential competitors, universities and inventors were reviewed in detail to ensure that there are no large blind-spots. The outcome of this project is that we are moving to a second, more advanced phase where we will be supporting the client in drafting at least five unique patent applications that protect their idea.  An additional outcome is that the client now has a well-informed view on freedom-to-operate in their space. The client team can proceed confidently in their funding discussions with knowledge that their ideas have been thoroughly vetted by independent experts.

What is Patent Landscape Analysis?

Patent landscape Analysis serve as a fundamental component of IP strategy. A patent landscape study involves a comprehensive analysis and visualization of patents and involves searching and screening for relevant patents, categorizing and analyzing patents. Once the analysis has been conducted, it is converted into a visualization to provide insight into the competitive landscape and technological trends surrounding the technology.

The process of conducting a landscape study usually begins with a thorough understanding of the technology, followed by the identification of important aspects of that technology that should be extracted and analyzed. It assists in answering key questions regarding inventions, including:

  1. What is the current patent landscape of the technology, such as the number of patents, geographical distribution, and filing trends over time?
  2. What are the various compositions or processing techniques that are employed within the technology?
  3. What are the functional advantages of the technology?
  4. Which companies or institutions are the most active assignees of patents?

WHY SCITECH PATENT ART?

  • For over 22 years, our team of searchers have been conducting Patent Landscape Analysis for clients worldwide.
  • Our team of searches are subject-matter experts across wide range of disciplines in science and engineering.
  • Our searchers are well-versed with patent laws of different jurisdictions.
  • Our Interactive and tailored work process ensures frequent interactions and is flexible to change direction as needed.
  • We provide follow-on services as needed.
  • We work as per the needs of our client’s timeline and offer pricing to fit their budget as well.

Interested in conducting patent landscape analysis and understanding how to leverage analytics for your business or technology development? Contact us today and schedule a free consultation. We are here to help you navigate the complex world of IP and secure the protection your inventions deserve.

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