WATCHING THE COMPETITION
KEEPING AN EYE ON THE COMPETITION—REVIEWING THE
As well as filing and maintaining your own patents, another aspect of managing a patent portfolio involves monitoring the activity of your competitors. Tis involves watching the progress of applications through the examination process, checking the legal status of others’ patents, and monitoring new inventions and the expansion of patent families. But what about other related activities? Many companies are now partnering with others for R&D, or buying expertise or technologies needed to bring a product to market that may involve licensing patents from others.
As companies put increasing emphasis on maximising the potential of their patent portfolio by licensing, partnering and assigning patents that are outside of their core technology, the importance of looking outside of patent databases will also increase. Companies can exploit outside technologies by an assignment or a licence. An assignment gives the third party complete rights over the patent, whereas the licence may give the licensee rights over only certain aspects of the invention. Assignments will generally be recorded in file histories at patent offices around the world and made available via the International Patent Document Center (INPADOC) database, while licences are typically kept confidential or are leaked only in certain circumstances. Press releases, annual reports, trade press and other sources can be searched for information on licences, but only if the parties agree to make this public. It is a good idea to monitor a competitor’s partnerships both with other businesses and with research organisations.
INPADOC records change of ownership or transfer of rights of patents via change of owner, licensing, transfer assignments and changes of address for patents from Australia, Brazil, China, the European Patent Office, Switzerland, the US and the Patent Cooperation Treaty, but no licensing or assignment information is available for India, Japan or Korea.
For example, in the solar industry, thanks to investment from government and industry, many new technologies for materials, processes and devices have forced companies to cross-
license patents in order to compete effectively. Konarka Technologies, an innovator in the organic photovoltaic area, has more than 100 patent families, plus many licences. To find details on its activities, you can check non-patent literature sources such as the Chemical Business NewsBase for licensing and research projects, or Ei Compendex, Inspec and Pirabase for technologies. Te National Technical Information Service database covers research funded by the US government and will also indicate patents pending. Te disclosure database or Investext can be used for new developments and licences, because this type of news tends to affect the bottom line of annual reports and stockbroker valuations.
ACTIVITY SURROUNDING PATENTS It’s important to keep up to date on competitors’ activities in order to maximise your chances of success. Ron Kaminecki and Jane List explain.
Ron Kaminecki has been involved with patents for over 35 years, starting as a patent searcher and currently working with other patent attorneys and agents, plus patent examiners in the art of literature retrieval for intellectual property. He holds a BS (chemistry), an MS (computer science), a JD (with certificate in patent law), and is a US patent attorney and has a patent pending.
A short profile containing words found in this record could be a starting point for an alert to keep apprised of new information. Start with the name Konarka in the company name field, but also include some of its competitors and partners (such as Nu Energy), plus indexing terms (sales agreement) and words found in the text (partnership). Note the hierarchical Standard Industrial Classification (SIC) code, which can be shortened for a broader brush for the general plastics industry. Te output can be sent directly to your email box periodically for review and, based upon the results, new terms can be added over time.
Ron Kaminecki is director of the intellectual property segment at Dialog LLC. He can be contacted at
ron.kaminecki@dialog.com
Jane List is a patent search expert with experience developing intellectual property products. She can be contacted at
janeannlist@gmail.com
48 World Intellectual Property Review May/June 2011
www.worldipreview.com
Jane List was, until recently, technical product manager with responsibility for intellectual property at Dialog. Prior to this, she worked as an information analyst at the Technology Partnership plc, where she specialised in the searching and analysis of patent, product and technical literature for patentability, freedom to use, validity and technical information matters. She is a member of the editorial advisory board for World Patent Information, has a BSc (Chemistry), MSc (Information Science) and a certificate in intellectual property law.
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