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Patent owners should follow a number of steps in order to stay up to date with their competitors’ patenting and commercial strategies, says Treena Grevatt of TechInsights.
In this series of articles on managing patent portfolios, we have written about some of the best practices for structuring your patent portfolio and the role that reverse engineering can take in forming portfolio strategy. Here, we consider patent-based competitive intelligence information and its place in planning for effectively managing portfolios and business.
Frequent questions we see from clients include:
- What is my competitor’s strategy regarding this technology or market? and
- Can you predict my competitor’s upcoming product release dates and features?
Traditional market intelligence goes some way to answering these questions. However, the IP department can also offer significant guidance to the organisation. Patent-based analysis can add deeper context to complement other techniques and help shape a counter-response to competitor activity. What sort of information and analysis is needed to drive this evidence-based portfolio management? And what activities should this data drive? Let’s take a closer look at a couple of areas.
First, consider the analysis of a competitor’s patent prosecution. A simple starting point is counting how many issued versus pending patents it has, and whether that ratio is changing. This quantifies its innovation pipeline by technology area and indicates priority areas.
Things get much more interesting when you start to look more deeply at prosecution activity. What technologies are subject to ardent prosecution support? How does this change over time? What is the temporal dependence of technology abandonment—has its technology focus changed? Is it subject to be being targeted for pre-issuance opposition by its competitors?
Also interesting to consider is the jurisdictional history of patent families. This can provide insight into the go-to-market and patent enforcement strategies. Does a competitor prefer a particular geography? Does the jurisdictional filing change over time? Some industries, such as pharmaceutical, tend to file and go to market in a jurisdiction distant from their primary market. This gives them a chance to test and refine a product in a lower impact market, the lessons from which are then applied for the primary market launch. If this is the case, it can help focus your monitoring resources.
Another extremely useful piece of data mining to perform is the alignment of patents to products. Of course, you have already performed this study on your own portfolio, and set in place adjustments as needed. This analysis will allow you to identify which of your competitor’s products are well protected, over protected or under protected. Maintained or vigorously prosecuted patents that are not aligned to a particular product may be performing a defensive function or indicate a future product.
You should also consider looking more closely at mapping the release cycles of competitor products to the patents which describe the features in those products. A historical review determining when inventions were implemented in launched products can identify patterns in patent applications that may imply plans. What patents are being filed and vigorously prosecuted that do not reflect launched products? And in a similar vein, take the time to analyse maintenance fees to see which issued patents the competitor has chosen to abandon by dropping fee payments. This can indicate shifting technology or market priorities.
This information can be used in a variety of ways:
- Reassess your portfolio to see if any of your issued patents can read on the competitor’s upcoming products;
- Consider filing oppositions, pre- or post-grant;
- Evaluate your patent applications, identifying any opportunities for claim amendments; and perform family-expansion through continuation and divisional practices; and
- Work with your product and marketing strategy teams on approaches to counter an upcoming product release.
One instance of performing due diligence on the patent landscape in support of a client’s patent application for a foundational technology uncovered a significant amount of prior art, and new market activity including a significant, well-resourced market entrant previously unknown to the client. We were able to reposition the patent’s fundamental concept to be broader than the related art and redirect its patenting efforts.
Detailed and frequent landscape studies should become part of an effective strategy for monitoring competitors to make sure that your patent portfolios and business are responsive to evolving markets.
Treena Grevatt is responsible for marketing of the IP services group at TechInsights and supports a team of IP consultants and technical analysis architects. Grevatt obtained her PhD in exciton spin dynamics in 1996 from the University of Southampton. Over 20 years of diverse technology and academic employment she has worked in fields from optoelectronic device manufacturing to digital games-based learning. She can be contacted at: firstname.lastname@example.org
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