Authored by Nishla H. Keiser, Ph.D. and Eric P. Raciti
Patent landscapes can be a powerful tool for the research, business, and legal decision-makers in a company, whether early-stage or established. This article discusses various aspects of competitive intellectual property landscaping, including practical tips for getting the most out of a landscape. The authors address a number of considerations for small, mid-sized, and large companies in several technology areas. In particular, the article describes patent landscape approaches for early stage research and development purposes before market entry, competitive positioning, legal risk management and identifying potential monetization, partnership or licensing opportunities.
Cognitive psychology has shown that the mind best understands facts when they are woven into a conceptual fabric, such as a narrative, mental map, or intuitive theory. Disconnected facts in the mind are like unlinked pages on the Web: They might as well not exist. - Steven Pinker
Technology companies in modern economies face a chaotic and dynamic churn of data. But, as Harvard evolutionary psychologist Steven Pinker's quote above recognizes, data divorced from context is meaningless. Fitting the data to a story is what transforms it into information. Information properly interpreted becomes actionable intelligence.
Technology companies often use strategic intellectual property landscapes to obtain a broad view of the patents, state of the art, and competitive activity in a particular technical area. Because these projects typically provide a higher-level view than traditional legal analyses such as freedom-to-operate or patentability opinions, they provide a means for marketing, research and development, and legal teams to coordinate strategies that align with the overall goals of the business. The results of a patent landscape can be used both offensively and defensively to inform early stage research and development decisions, assist with internal patent portfolio strategy, identify potential third party roadblocks or licensing opportunities, and gauge competitor positioning. But unlike a geographical map, IP landscapes have no counterpart in reality by which to gauge their accuracy. While an error in a road map or a GPS database can lead to misinterpretations or errors in execution, a poorly executed IP landscape can lead to faulty choices that could not only be costly, but also require precious months or years to unravel.
Depending on the ultimate purpose, patent landscapes can vary dramatically in scope and focus. This contextual flexibility allows a well-executed patent landscape to be a highly useful tool, but also presents several challenges for both those commissioning and those performing a landscape project. Given the potentially large scope of these projects, it can be tempting to try to accomplish too much at once, leading to information overload and diminished returns. In fact, a properly-designed landscape should not necessarily be able to provide comprehensive validity positions, freedom-to-operate, research and development guidance, and competitive intelligence on all aspects of a particular technical area. Rather, the attorneys, business development team members, and science/technology group leaders interested in a landscape should define two or three specific goals for the landscape, with clear technical parameters. This will allow those performing the search and analysis to remain focused on key information.
Two types of landscapes are described in more detail below:
Both types of landscapes, when successful, will achieve the ultimate goal of facilitating communication about very complex topics among different groups of people that may process information quite differently. For example, businesspeople tend to look at data expansively, finding opportunities and pushing boundaries. Lawyers on the other hand tend to spot risks and attempt to mitigate them, which is an inherently conservative mindset. Engineers and scientists, by further contrast, want to know parameters for problem-solving and can sometimes struggle with fuzzy business and legal priorities.
For companies in the early stages of product development, whether in a startup or a new technology program in a larger company, landscapes can be useful to identify "clear" or "white" space for research and development, as well as help chart patenting strategies. Typically these landscapes cover a technical area broadly, and may include alternative methods or products to those specifically in development. In many cases, a startup interested in a new platform technology may need information not only on IP relating directly to its work, but also on other technologies that have been developed to address the same problem. For example, a company developing small molecules to target a certain cancer pathway may look at other methods of targeting that pathway, and also the current standards of care for treating the cancer of interest. A startup with a new prototype surgical device may look at other ways to perform similar surgeries, or structurally analogous devices used for other purposes. A software developer could consider other companies addressing the same basic market niche and how they solved technical problems. The intelligence gained from an early-stage landscape can be used in numerous ways:
Typically scientists and engineers have an excellent understanding of their particular field of study, although sometimes with a relatively narrow view. In addition, the technical staff might not be as familiar with the patent literature—often larger competitors will file patent applications on their developments, but may not present at conferences or publish in journals, or commercialize the invention. An early-stage IP landscape can provide a more thorough understanding of what has and has not worked for others, and may help streamline the research process by avoiding dead ends. Identification of potential blocking patents can also facilitate the design-around process, but only if identified early enough. In addition, researchers may use the landscape to find groups particularly suited for partnership or collaboration opportunities.
In-house or external counsel may use a landscape as a springboard for various legal analyses. For instance, any potential freedom-to-operate concerns identified in the landscape may be flagged for further monitoring, addressed by non-infringement/invalidity opinions, or licensed, if possible. The legal group can also use the landscape information to advise the research and development team on clear space for potential design-around opportunities. Furthermore, while a patent landscape cannot replace a proper prior art search, it provides valuable information on the state of the art in the technical area of interest. This facilitates patent prosecution since appropriate backup positions may be drafted into specifications. The data may also lend support later for patentability arguments such as unexpected results or long-felt need.
A patent landscape can provide ideas for marketing, and help anticipate questions that may come from investors or shareholders. In particular, familiarity with what competitors have and have not done allows marketing to explain distinctions in the technology, highlighting the advantages of the company's own product or methods. In addition, if applying for venture funds, business teams can use detailed knowledge of the competitive space and the associated key patents to address concerns about third-party patents and competitor products. Where many players are involved in a space (e.g., antisense nucleic acid therapies or smartphone technologies) it becomes increasingly important to show investors that the company has realistic, well-informed expectations about where its competitors stand, and how its technology brings added value.
While a company in the early stages of research and development should be aware of its closest competitors, a strategic competitive landscape assessment may become more useful as a company gets closer to product launch. Often these landscapes go beyond the patent literature, and include analyses of competitors' marketed products, recent publications, and other competitive intelligence. In some cases, these landscapes may be used offensively to identify patents that may cover competitor's products.
It is a very rare technology that does not share some attributes with another party's patents or prior-art publications. Knowing these issues before a due-diligence investigation by potential investors or business partners eliminates surprises. A well-prepared company has a narrative ready about each possible issue, and does not need to waste time reacting to an issue raised by an investigation. Even if a specific issue is not known in advance, a well-prepared landscape should allow a company to more quickly identify and articulate a response.
Understanding a competitor's advertising, commercial success, and descriptions of its products in patents and non-patent publications can inform marketing and advertising strategies. As with early-stage landscapes, a landscape conducted close to market entry can assist in distinguishing a company's product from those of its competitors.
Being aware of the closest competitors and potential freedom-to-operate risks becomes increasingly important as a company gets closer to design freeze or product launch. While a landscape should not be mistaken for a true freedom-to-operate search, it can provide a very good sense of the particular areas requiring further searching, and the entities likely to hold additional relevant art. Besides obtaining non-infringement or invalidity opinions, with the newer post-grant procedures before the U.S. Patent and Trademark Office (USPTO) it may even be possible to remove certain problem patents before market entry, particularly in areas involving business methods or software. In addition, being aware of the particular competitors and patents in the space allows the legal team to assess risks based on known litigiousness of certain parties.
Identifying patents that cover competitors' products can become important in crowded fields where multiple parties have marketed products, and each party has its own established patent portfolio. This is particularly common for consumer products such as smartphones or DVD players, certain medical devices, and in other industries with standards organizations and patent pools. In many of these areas, litigation abounds. Even if one company has no interest in initiating litigation, securing access to additional patents may strengthen negotiation positions should a competitor threaten a lawsuit. A larger portfolio may also provide additional cross-licensing opportunities, possibly reducing litigation risk.
At a practical level, most successful landscape projects follow three guidelines:
The figure below summarizes the general landscaping process.
Typically, landscape projects are conducted by first casting a wide net for patents, literature, and/or other publicly available information, and culling the non-relevant results from the information of interest ("Screen 1"). At this stage, the potentially relevant results may be grouped into large buckets. For instance, an antibody landscape may begin with groups relating to antibody compositions, target compositions, methods of detection, methods of treatment, and methods of manufacturing.
The particular technology area and the goals of the project dictate the focus for this initial Screen 1 review. For example, a post-marketing competitive landscape may cover patent and non-patent information for known competitors and products, while an early-stage landscape focused on research and development may not target any particular third party, but specific technology features instead. In addition, the nature of the technology drives the mechanics of the search. In fields such as biology, keyword searches can sometimes capture the vast majority of the documents of interest. Often sequence searches for nucleic acid or protein targets fill in the gaps from the term searches. Small molecule pharmaceuticals frequently require specialized chemical structure searching. For mechanical devices, keywords may not result in a useful set of documents, as patent claims frequently contain non-specific language that could apply to drastically different structures (e.g., having an inner diameter and an outer diameter, with a sensing means at the distal end, configured to be inserted along an axis). In those situations, searching via the USPTO's classification system may provide more productive results.
Once the first pass screen has been conducted, the remaining potentially relevant results are reviewed in more detail to further identify, categorize and describe key pieces of art ("Screen 2"). Before this analysis, decisions should be made based on the Screen 1 review to refine the goals set out at the beginning of the project. For example, if out of 300 potentially relevant hits, 75 are directed to a particular technical feature already known and well-understood by the scientists and engineers, or that is less likely to appear in a final product, those patents may not require as much detailed analysis. Instead, those carrying out the landscape can focus on other aspects of the technology.
Often the results of Screen 2 are captured in a database or chart to facilitate searching and sorting. The final deliverables for the landscape can include a database containing the detailed analysis, a graphical display of the results on a timeline, charts explaining competitor filing activity, and more.
It is particularly helpful to discuss desired outputs with the landscape team, and to explain who will use the landscape deliverables. Numerous services exist advertising more automated patent landscaping and mining. These can provide useful metrics at a high level, such as the overall patenting activity of particular assignees, "key" patents based on citation frequency, and other statistics.
Successful landscapes deal in information and not just data. The distinction between these two concepts lies in whether the material in the landscape (whether contained in a database or a chart) has contextual meaning or not. Contextual meaning requires interpretation and judgment, and this is simply not a process that can be done by generic software. Granted, an artificial intelligence system could be built to create a highly refined landscape, but this comes only at great expense. Consumers of IP landscape products need to be aware that services that offer results inexpensively are really just supplying data, and not rich information. For example, providing the patent filing trends by a competing company is interesting, but it says nothing of the quality or breadth of those filings. The authors are also aware of some products that create visual landscapes that can easily lead to misinterpretation or false information. Because of the intimately custom nature of landscaping to a particular company's needs, the most rewards will be achieved by the company placing a priority on the quality of the landscape, and involving real humans in its construction.
Finally, keep in mind that a landscape provides a snapshot at one point in time, and may evolve as the technology develops and the competitive environment changes. So long as decisions are being made based on information from the landscape, it is important to monitor and update the most relevant aspects (e.g., a design change may require a revised assessment of patents identified as freedom-to-operate risks). To get the most out of a landscape, make sure those conducting the project understand how it fits in with the company's key goals—the landscape should be tailored to fit those objectives, not the other way around. Following these principles, a high-quality IP landscape can provide an unrivaled tool allowing various internal units and IP counsel to work together, think creatively, and work toward a company's goals.
Copyright © Finnegan, Henderson, Farabow, Garrett & Dunner, LLP. This article is for informational purposes, is not intended to constitute legal advice, and may be considered advertising under applicable state laws. This article is only the opinion of the authors and is not attributable to Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, or the firm's clients.
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