As business and technology development projects are initiated, it’s important to get them started in a way that will improve their chances of generating commercial success. One way to do this is to utilize patents for their ability to supply background information in the technical and market areas. They are most helpful in answering three key questions: (1) how active an area of research surrounds a proposed R&D project? (2) What are the preliminary strengths, weaknesses, opportunities and threats posed by alternative technical and business approaches? (3) How will the proposed project’s innovations distinguish themselves from known prior art?
To get started, the best approach (circa 2018) was to use a simple combination of Google Patent and Ambercite AI to create a patent database of relevant art. This particular approach is good to use in an early stage of a project because often times the key features and technologies are not well known. Google search can take a free text description of the project and find similar art to the project described. This can quickly provide a list of relevant patents – regardless of the keywords they use. The additional advantage of using an artificial intelligence engine based on citations, such as provided by the search company Ambercite, is that the first set of patents can be refined based on significant parent-child as well as aunts-and-uncles citation relationships. This is a very robust method for finding almost all art related to the project. Of course traditional methods using patent classifications and keyword searching can also be used when information scientist support is available.
Once all the patents related to the R&D project are collected they can be used to improve the technology and business proposed by the projects. As an example, in the early 2000’s a U.S. Corporation was considering entering the antitheft market. It found an example patent 5,990, 791 as representative of the art that they wished to commercialize. Their initial strategy was to license this patent, then build out a system around it. The background on this patent is shown in the “Starting Patent Related to Proposed Anti-Theft R&D Project” figure.
Looking at this background information, observations are that the patent was issued within the previous two years of the time the study was done. There are two inventors, one of which is also the assignee. This patent cited as prior art 109 other patents. It has also been cited itself at the time of the study by two other patents. The likely conclusions from these observations are that this patent has a citation pattern that is statistically associated with a valid and enforceable patent. The patent is also unique compared to the mainstream work of the field.
Looking more carefully at the two recent US patents that cited the starting point art it is seen in the “Does The Patent Represent Well-Known Art?” figure that two different entities were involved. They were Research Electronic Ink (REI) and World Color Printing (WCP). Thus the work of these independent inventors is not yet well-known or not of high commercial interest. In order to understand the importance of these direct citations it is necessary to look at what other prior art did these citing patents reference?
Starting first with the REI patent, it references 11 other US patents. The observations are shown in the “Other Citations from the REI patent” figure for the 10 different assignees cited. The references included market leaders such as Sensormatic and Checkpoint. Also present were market participants ICI Americas and Esselte. It can be concluded that field is active and not crowded. When looking at the dates of these cited patents it somewhat surprising to find the cited art is 9 to 30 years old. An exception of course is the starting patent of interest. Thus this art has a pattern that is associated with art that is not likely to be a problem from a prior art standpoint. The mix of dates of art indicates that the latest work could be start of a new wave of inventive activity, based on a twist of the Dominant Design. Since the number of patents in this case is small, the R&D project team can read each of these patents to determine the validity of these tentative conclusions.
With respect to the World Color Printing patent, there are 19 different assignees. The notable assignees are Avery Dennison, Sensormatic, 3M, and Wallace. The conclusion that can be drawn from these citing entities is that there is interest from RF tag manufacturers. Given the multiple citations from several of the top participants indicates that the art they have filed may cause problems for the R&D team. The field is definitely active but not too crowded. To dive a little bit deeper into this, the age of the cited art was studied. This art is from 1 to 5 years old, thus relatively recent. The conclusion that can be drawn for the R&D team is that this art has a pattern associated with art that may be a problem and needs a quick legal review. It also indicates that the preliminary conclusion from the previous REI art that “this could be the start of a new wave of inventive activity” is unlikely. It is important to note that the power of undertaking patent-based analyses at the start of an R&D project is that multiple conclusions can be drawn and tested during the study. When the study is completed all the conclusions can be taken together in order to formulate the best possible picture of the strengths, weaknesses, opportunities, and threats that the R&D project faces.
In this example study it turns out that the amount of prior art is manageable. The R&D team can easily read this amount of prior art and segment the information disclosed into relevant technology, product, features and business model segments. Once segmentation is made the patents can be sorted into those that represent opportunities and threats for the R&D team to consider. An example is shown in the “Segmentation of the Technology, Features, and Business Models in the Prior Art” figure. Of most importance in this particular example would be the four patents related to the “alarm” segment.
There are many clustering tools available that can automatically provide such segmentations. These are particularly valuable when the number of patents to be reviewed is large. In this example case there were 918 such patents. By looking at the assignees of these patents it was found that the market leaders dominate. Independent inventors such as those of the starting point patent are also very active with approximately 28% of all patents. This intellectual property “forest” raises the question of whether or not the field is actively growing or has it already matured. If the former, it is a good time for the R&D team to get involved with this project. If it’s already maturing this may not be a viable commercial area to invest in.
Good way to quickly determine the answer to this question is to sort the available prior art by year of publication. As shown in the “Prior Art Sorted by Publication Year” figure, this field is growing. The growth is been steady and has not yet matured. Looking at the consistent growth it can also be concluded that this is constant innovation, most likely incremental, and that no breakthrough to a new dominant design has yet occurred. This is important for the R&D team’s understanding of how its new product will be received by the market. Given this growing body of work occuring alongside the company’s R&D project, it’s important for the team to also realize that a good potential exists that there will be more inventions around their own work. They will need to protect any novel approaches they create.
To see where the industry has focused its attention over the previous years, the top 10 most frequently cited patents are identified. In the “Top 10 Most Frequently Cited Patents” figure, it can be seen that the industry has focused on components and unique uses of tagging systems. Given the company’s R&D project team’s approach, this top cited by patent art has a pattern associated with art that would have a high risk of infringement for the project team. Uncovering this insight, the project team should request patent counsel support for its project and budget accordingly. Of particular concern is the high number of citations that the top cited by art possesses. The average citations per year rates are also quite high, indicative of an industry that is competing on the basis of intellectual property protection.
In summary, using a patent study to determine some of the strengths, weaknesses, opportunities, and threats the R&D team will face on commencing a new project is a good use of time and money. In this example study, using patent information, it was determined that upon licensing the starting patent and building an improved system based upon it would lead to the following opportunities: (1) There would likely be an opportunity to practice invention. (2) It is likely that the patented invention could be asserted against potential infringement and defended. (3) When looking at competition and what IP exists, it appears the art is potentially problematic, growing, and fragmented among many firms, not dominated by anyone. (4) It is unknown at this stage of R&D whether the patent could easily be circumvented by minor changes in reduction to practice. The R&D team should address this issue when it comes back for its next round of funding. (5) It does appear possible to enhance the IP strength prior to commercialization through additional patents.