Home Articles The Fine Print: Know your art

The Fine Print: Know your art

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Published in Australian Anthill Magazine,
Dec 2008/Jan 2009

The most successful companies not only continually innovate but they position their innovations within a framework of competitor developments. Knowledge of who their competitors are, what intellectual property they hold and, in particular, in what direction they are moving should be fundamental to shaping a company’s internal innovation/R&D process and strategy and to underpinning long-term commercial and business success.

How can a company with relatively limited resources afford the apparent luxury of monitoring the activities of competitors? Given the clear implications of not pursuing such efforts, the question might be better couched, ‘Can any company afford not to be aware of competitor activities?’

In terms of patents, much can be achieved with a relatively modest outlay and by utilising free resources available on the internet. A prior art search is useful only on the day it is performed. After that, it is history, as new developments continue to occur. What methods can be used to monitor competitor activity in a continuous fashion so that a company is always kept informed of the state of external developments?

The core principle of the methodology is the creation of a living database of competitor patents and patent applications that is updated regularly via information freely available on the internet.

There are two major search engines that are valuable in the creation of such a patent database. Firstly, the USPTO Patent Full Text and Image Database is a free facility enabling very specific searching to be performed. New US granted patents are published weekly as are new US applications. Secondly, the World Intellectual Property Organisation (WIPO) publishes new PCT applications weekly. Utilising the international patent classification codes, specific searches in specific areas of technology can be performed very quickly. Data procurement may be performed in-house or an external alert service may, alternatively, be utilised.

Some pre-work is required in order to define the breadth of search required. It may be specific to a technical area, strongly dependent on the current activity in that field, and in some cases a number of patent classes may need to be utilised.

A database is then created in a simple spreadsheet form, usually containing the applicant name, the patent or applicationnumber, the date of publication and a short sentence describing the contents of the document. Each week the database is expanded. Initially, the data may seem random and haphazard. However, if the process is rigorously adhered to, patterns of activity will emerge. Viewed over a period of one to two years, the dataset will begin to provide an overview of all significant patenting activities in the field. The data can be manipulated to highlight activity of individual competitors. Much of the value of this strategy is only realised once the dataset is sufficiently mature.

However, there are also immediate advantages. It is highly valuable to be aware of a competitor filing shortly after it publishes. This may have an impact on a company’s current internal research program or a company’s freedom to operate current or future technologies. It may also affect a company’s thinking with respect to internal innovation, sparking new directions for research. As technology continues to build on itself, being aware of new technologies as soon as they are published can help you avoid wasting significant capital on prosecuting low value patent applications and pursuing unnecessary research and development programs.

It is recommended that this activity be undertaken by a skilled researcher with a high appreciation of the field in question because it is an exercise in critically analysing the data and placing each relevant citation in context within the database. With a correct search strategy, it is extremely rare for a relevant patent or patent application not to be identified.

The exercise can be performed in a few hours per week. It will be apparent that this represents a small investment relative to the immense amount of information that eventuates. The attraction is that any company can potentially undertake this exercise, as all of the resources are freely available without the need to purchase expensive proprietary intellectual asset management software, or utilise the traditional services of an IP watch provider.

Alternatively, the activity may be performed by an external IP provider that has the necessary technical expertise to place each new citation within the context of the client’s business. This scenario can offer the advantage of strengthening the client-IP provider relationship, and potentially offers future cost savings with respect to strategic IP advice.

Long term, a company’s confidence increases with respect to shaping their future strategy in the light of the information available. Further, and of significant importance, the interactive nature of the exercise educates those involved to become more knowledgeable in the field. Just as successful companies know their competitors, successful researchers should know their art.

Dr Grant Jacobsen is an IP Professional at Watermark. He can be contacted on g.jacobsen [at] watermark.com.au

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