Features Overview
Watching a patent or portfolio - finding patents missed by conventional watching
Patent watching services are increasingly common, with a number of these services based on watching new forward citations from the patent you are watching.
We believe that patent citations are very helpful - but by themselves are only half the story. Instead we need to combine citations using advanced algorithms in smart ways to both rank them in an order of predicted similarity - and also to find similar patents that have not yet been listed as a forward citation, but probably should be.
In other words, we think our clients want to be as well informed as possible, and more informed than their competitors. And we also know that our clients want to be able to do this as easily as possible.
Let us illustrate this with a case study. I am going to take a patent that has been asserted against the billion dollar drug Keytruda, being US8779105. This patent, filed by Bristols Myer Squib, is thought to have been the basis of a patent infringement worth hundreds of million of dollars.
If I was the patent manager for this patent, I will be interested to see who else is filing similar patents, say published in the last three years.
When I ran this search on 8 May 2020, it returned a list of 101 patents, of which 29 were ‘known’ citations, and 72 are ‘unknown’ citations, i.e not previously recognised as a forward citation, but predicted to be relevant to US8779105.
The results of this search can be found here. This link was created using the Share Results button found in Ambercite.
So, already our smart patent manager is ahead - using a simple search, they have quickly found a list of known and previously unknown patents filed for similar products.
Watching for search updates
However - the patent manager will also be interested in efficiently looking for changes in this citation landscape.
As an example of this, we are looking going to look for changes in the citation landscape after the monthly change in the patent landscape.
This process is remarkably simple. We simply take the link from above, open it up, and run a new search (‘Find Similar Patents’) with the ‘Show Only New’ patents selected, as shown below.
This will produce a list of 20 new results, all being patents added during the last data update. Of note, only 6 of these patents are known citations - so the other 14 patents are both new and relevant - and not picked up by conventional citation watching.
How to watch for the next update.
To watch for the next update, simple create an updated share link from the new set of results, save this somewhere, - and in about a months time run through the same process, i.e. run a new search from the link above.
Can we do this with a portfolio of patents?
We can run with up to 200 query patents. So to repeat this process for up to 200 patents, simply enter them into the search box, and run the above process.
For a larger portfolio of patents, you may need to take advantage of our API. Please contact us for the details of this, and some suggestions of how you could automate this process.
Are all of these newly reported results recently published?
Both recently published results - AND - earlier published results which are now connected to the patents in the search box via new citation links, either directly or indirectly - i.e. the patent citation network is always growing over time.
How does this compare with conventional patent watching services?
Most of these are based on watching for known citations, which can miss relevant patents, or sometimes for new patents filed by known competitors, or in particular patent classes.
Watching for known citations (only ) can miss relevant patents. Watching for new patents by particular competitors can be helpful if the competitor is tightly focused on your area of interest, but can be less helpful if the competitor files in many different areas of technology. Watching in particular patent classes can bring up a lot of not relevant patents.
In contrast, watching is both more comprehensive than citation watching, and can be more targeted than other types of watching - so providing a very useful and efficient way to watch patents.
Strengthening your due diligence on patent acquisitions
Patents can be valuable assets, and not surprisingly tens of thousands of patents are transferred annually in the US and other countries.
Patents are generally transferred for two reasons:
The patents being part of a sale of a business from one owner to another (in some of these cases, the listed legal owner of the patent may not change, but regardless, a potentially valuable asset was transferred from one beneficial owner to another).
A dedicated purchaser of a patent independent of the sale of a business. A leading reason for this is the acquisition of patents by companies who wish to monetize these patents at some stage. Other reasons include the strengthening of a patent portfolio for defensive purposes, and the desire to invest in a particular technology, including its underling IP protection.
The need for due diligence
Given that patents can be very valuable, it is natural that potential purchasers will want to undertake appropriate due diligence. This often starts with a check of the legal details of the patent, including the ownership and legal status.
For many acquisitions of patents as part of a purchase of a business, this is as far as the due diligence extends. But for purchasers looking to monetize patents, often more diligence is involved. Potential owners can look for potential monetization opportunities, and will often consider carefully the legal ‘strength’ of the patent – regardless of whether it has been granted or not.
This last point is becoming increasingly important. While some purchasers will rely on the legal status as listed by a patent office as a final indicator of the legal strength of the patent, more sophisticated purchasers will know that even a granted status is only a starting point. This is even more so in recent years in the US, as the 2012 America Invents Act has increased the rate of inter partes reviews – and with a claim survival rate of only around 25% for patents reaching final written decisions - and this is for a dataset of over 9,000 IPRs since 2012 (for example, check out image below, based on data supplied by Finnegan.com)
Of course, such statistics can be misleading as IPRs only tend to be initiated on patents where the opponent has decided that the patent would be worthwhile challenging (and for which they have a financial motivation to challenge the patents). But regardless, such a high claim failure for the patents that are challenged, does show that a general assumption of validity for granted US patents is simplistic. This would suggest that appropriate due diligence for patents you are considering acquiring may be very worthwhile.
Help with patent due diligence
As patent applicants who have through been the process of getting a patent granted may fully understand, patent examination can be very rigorous before a patent is granted, with many stages of patent searching and examination reports. Given this, one might surmise that finding new prior art (that can weaken the patent) that the examiner has missed can be challenging.
And indeed this can be the case if only conventional patent searching is used, i.e. searching that is based on the same keyword and class code searching method as used by patent offices.
However not a conventional patent searching tool. Instead it uses a unique algorithm that analyses a network of over 180 million patent citations to identify similar patents to a patent (or group of similar patents). The patents found will comprise a combination of known patent citations – and ‘unknown’ patent citations, which in fact are not citations per se, but instead are patents which could be patent citations, i.e. are similar patents that need to be considered from an invalidation and hence due diligence perspective.
An example of such as a network is shown, in this case for the famous Amazon ‘one-touch patent - this only shows part of the network, including a very small part of the secondary network (unknown patent citations).
These unknown citations can include patents that may have very different keywords and class codes to the patent in question, which can help explain why they were missed by the original searcher or examiner.
Due diligence can be very rapid
To run a due diligence on a patent, simply input the patent number, along with the date filter to match the patent itself.
As a very simple example, I have entered US10,000,000 in the search box in the image below, along with a date filter to match the March 2015 priority date of this patent.
The results are given in ranked order of predicted similarity, and include a mixture of known and unknown citations - which need to be considered from a potential invalidation viewpoint.
Individual patents (families) can be easily reviewed in our patent review panel:
And can be downloaded in spreadsheet form - or shared with a fully interactive share link, which can be opened by any recipient (click on the image to below to see a live version of this interactive page for yourself).
Benefits
Very fast to use, and can provide a unique perspective on patent searching. Its network based searching algorithms can provide a fresh perspective on the prior art for the patents you are looking at (as shown below) and so strengthen your due diligence process.
Considering the money wasted if a money is spent on a patent which later turns out to fall over in a IPR process.