PATENT ASSIGNEES
PINNING DOWN WHO OWNS A PATENT
Sometimes it can be difficult to identify exactly how patent owners and assignees are set up, which can pose problems if you want to do business, as Ian Pearce explains.
Te currency of patent documents and the detailed level of
technical information disclosed make
them invaluable assets when trying to understand company strategies, competitive landscapes and technology trends. However, if you wish to research further the patenting activity of a company of interest it is imperative to consider who that company really is, and that should invariably involve the use of multiple search strategies and resources.
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One of the first things to determine is how the company represents itself as the patent assignee. Some companies use their names in different ways depending on the country they are filing in and this can be further complicated when non-Latin characters, eg, from Japan, China or Korea, are translated into English. For example, ‘Fuji Heavy Industries’ and ‘Fuji Jukogyo’ are the same company, and both variations of this company name can be found on patent documents to trip up unsuspecting searchers. It is also important to have an understanding of the company’s corporate structure and any subsidiaries that may be filing patents under different names.
In some cases no actual corporate assignee will be present on the initial patent document and it is only later that the inventor will officially assign rights back to his or her employer. Dialog and similar resources which allow users to ‘browse’ or ‘expand’ a list of entries in an indexed field such as the patent assignee field are a good starting point for a patent assignee search as this functionality allows different spellings and subtle variations of the company name to be easily identified and then incorporated into a search as appropriate.
Of course, if the company name differs significantly or is a subsidiary then it may not be obvious from an ‘expand’ look-up that certain names should be included in the search. Tis is where using the knowledge and skill of database producers can help enormously.
Derwent World Patents Index®, a database which provides value-added patent family, abstract and indexing information, assigns a four-letter code to more than 21,000 company names which can then be used to retrieve the patent portfolio of that company and its easily recognisable subsidiaries. In the case of Fuji Heavy Industries, a search within the database on the appropriate code of FUJH easily retrieves patents assigned to Fuji Heavy Ind, Fuji Jukogoyo or Fuji Jukogyo. Similar functionality is provided by the intellectual business intelligence tool Innography, which groups together subsidiaries and misspellings of a company name to allow simplified retrieval of a patent portfolio.
It is also worth considering specialised business databases when trying to determine corporate relationships and structures as part of a patent assignee search. For example, D&B WorldBase®— Who Owns Whom, which is available on the Dialog platform, is a worldwide company directory containing more than 14 million records linking firms to their corporate families, showing invaluable information such as the corporate structure and hierarchy, parent firms, headquarters, branches, and subsidiaries worldwide. Even general trade and news sources may yield information on company mergers and divestitures which should be considered for any patent assignee search.
Tings become trickier when no corporate assignee is named on the original patent document. However there may be hints as to who the potential corporate assignee may be. Te subject matter of the invention, classification codes, addresses, inventors and legal representatives may all point towards a particular corporate assignee. Tere are, for example, more than 100 patent families in the Derwent World Patents Index® where Microsoſt is not given as the patent assignee, but this information can be inferred from the corresponding legal representative field. Again, various database producers make use of this type of information to provide best guesses as to
50 World Intellectual Property Review July/August 2012
the assignee in a probable assignee (the CLAIMS®/ US Patents database from IFI Claims®) or hidden assignee field (Innography).
Finally, a patent is a living document so there may well have been ownership changes during its lifetime and it is also important to check not only the assignee as it appeared at the time of publication but also sources of reassignment information such as the INPADOC/Family Legal Status database produced by the European Patent Office and national patent office websites.
Ian Pearce is a training and information consultant at Dialog. He can be contacted at:
ian.pearce@
dialog.com
Ian Pearce began his career with Derwent Information and spent 12 years within the Tomson Corporation (now Tomson Reuters) in various roles. In 2006 he joined Dialog, where he maintains responsibility for providing expert knowledge on Dialog and ProQuest Dialog content, platforms and applications. He holds a BSc Honours degree in chemistry with German
www.worldipreview.com
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