Creating a forward-looking patent strategy

07-08-2018

Andrea Walsh and Cris Flagg

Creating a forward-looking patent strategy

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In the first of a three-part series, Andrea Walsh and Cris Flagg of Express Search explore the importance of landscaping at the beginning of any patent strategy.

The adage “If you don’t know where you are goin’, you will probably not wind up there” was one of the life lessons imparted by the eponymous hero of the movie “Forrest Gump” and summarises the goal of this article, which is to emphasise the power of front-end patent intelligence and its positive augmentation of a quality patent strategy.

Why are these disparate concepts related? Both recognise the importance of beginning with the end goals in mind and address issues which must be evaluated upfront to achieve this objective. If the objective is to ‘wind up’ with a strong patent portfolio then patent issues relating to developing innovations and patent procurement must be evaluated at the very beginning of research and development (R&D) and new product development—ie, it is essential to “know where you are goin’”.

Businesses must embrace the forward-looking and cost-savings advantages of patent landscaping, strategic and predictive invention, competitive intelligence, and life-cycle management in order to implement an optimal patent strategy at the forefront of the innovation process. This three-part series on providing a cost-effective and actionable roadmap to accomplish this objective focuses first on improving R&D through landscape research and strategic inventing.

Patent intelligence, when analysed from properly-designed patent landscape research, introduces strategic inventing, an approach that efficiently manages R&D and patent expenses by intentionally targeting an invention or product to improve the strength of a deliberate patent strategy. Specifically, the strategic objective is identified before the invention is made. 

Strategic inventing could be used to (1) design around a competitor’s patent to ensure freedom to operate; (2) develop products by emphasising or deliberating enhancing patentable features to procure a patent; and (3) create multiple new inventions to build elements of a larger overall strategy, such as life-cycle management.

Express Search has recently published this report which can be downloaded for free at https://www.expresssearch.com/sample-results/landscape/.


How it works

To highlight this strategy, we conducted early-stage patent landscape research focusing on potential biological therapies for neurodegenerative diseases to detect patterns of global patenting activity and innovation directed to biological drug targets and therapies focusing on the underlying genetic and molecular causes of neurodegenerative diseases.

The search strategy began with a review of non-patent literature and other publicly available information on investment and collaboration activities as well as a broad sampling of the patent literature. From this knowledge a number of individual searches in global patent databases were performed using keywords, classes, assignees, and key inventors until we maximised the amount of relevant art and minimised the number of false positives. 

The data were exported into our proprietary analytics database where patents were categorised to accurately reflect the underlying technology areas. The resulting patent strategy was designed by identifying emerging technology areas pursued by competitors or other industry players that aren’t currently competing in the product categories.

"This approach highlights creating a sustainable competitive advantage achievable only through integrating patent intelligence with a pre-determined patent strategy."

Unlike a traditional ‘discovery-driven’ approach, in which the product is developed before the patent strategy is established, this landscape research used strategic inventing to design a patent strategy before the invention was made. This approach highlights creating a sustainable competitive advantage achievable only through integrating patent intelligence with a pre-determined patent strategy. 

‘White’ and ‘red’ spaces can be derived from these results and patents in these spaces selected for inventions conforming to the designed patent strategy. The type and scope of claims likely to be granted, the determination of patentability from an examiner’s point of view, potential uses of the patents, and the commercial viability of an invention can be reasonably predicted. The product is then developed based on this information.

Level the playing field

Using the combination of patent landscaping and strategic inventing allows R&D to level the playing field by filling gaps in a patent portfolio. These techniques can ensure market dominance in desired technology areas or to pinpoint opportunities for exclusivity in unexplored technology groups. Identifying potential improvements early in the development cycle can also allow for non-patentable solutions can be evaluated.

There are important opportunities for improving competitive advantage by integrating landscaping and patent strategy at the front end of the development process. Landscape research must be periodically updated as technology evolves and the competitive environment changes. Following this principle, the combination of high quality landscape research and strategic inventing allows multiple internal business units and IP counsel to work creatively together towards a company’s goal.

In the second part of the series, we will leverage clearance research to focus innovation on specific technologies. Then, we will discuss the resulting patentability research focusing on the most innovative and profitable strategic innovations. 

Andrea Walsh is a senior patent analyst at Express Search. She has expertise in dynamic patent research and analysis in multiple chemical and biotechnology areas. Walsh provides innovative research solutions in molecular/cell biology, immunology, gene editing and biosequence analysis. She can be contacted at: projects@expresssearch.com

Cris Flagg is president of Express Search. He has a master’s degree in computer science, focusing on machine learning/artificial intelligence. With 25 years’ experience in patent research, Flagg has developed landscaping analytics and software research tools his company uses to provide research. He can be contacted at: projects@expresssearch.com

Andrea Walsh, Cris Flagg, Express Search, patent strategy, inventorship, research andd development, technologies

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