Patent analysis can be invaluable to help patent owners find potential licensees and valuable patents to add to their portfolio.
AcclaimIP™ patent analytics transforms these tasks into a more systematic and data-driven process by giving you a broad suite of capabilities to make crucial decisions that impact the revenue your patent portfolio generates.
Advanced Patent Analysis Techniques for Finding Patent Licensees
Using AcclaimIP, you can certainly find similar patents with the same class codes and similar technologies to help you determine which assignees have filed patents in your space. This has been fairly standard for some time. But AcclaimIP also empowers you to do much more as described below.
Set Up Forward Rejection Alerts to Identify Potential Licensing Opportunities
With AcclaimIP’s forward rejection data, you can let the USPTO do some of your patent analysis for you. Whenever an application comes in, and the examiner uses something from your portfolio to reject (i.e., block) that application, you can be alerted to this possible licensing opportunity.
The application may be a competitor that you already know about, but it could also be a new assignee moving into your space that you didn’t know about. You can also discover how close you are to the company’s application. For example:
- Were you used against them in a 102 novelty rejection? In that case, the examiner is saying that your patent is basically a one-to-one comparison.
- Were you used against them in a 103 obviousness rejection? In this case, the examiner is saying your patent, when used with others, is comparable to the new application. AcclaimIP will show whether your patent is the primary one in that obviousness argument and have a strong correlation to that application, or if you are down the list in the obviousness argument, in which case your patent is likely not in the same technology area and less of a concern.
Figure 1: The Rejections tab on the Document Details gives you specific details on USPTO examiner rejections, including links to the other application, the rejection type, the date, whether it caused the application to be abandoned, and even a link to the OA
Either way, having that insight from the examiners can give you a better pool of candidates to choose from to approach for possible licensing deals. You can even set up alerts on your portfolio, or select groups of patents, and get alerts from AcclaimIP when your patents have been used in those rejection arguments. This step helps ensure that you don’t miss those opportunities as they come along.
Keep an Eye on Patent Abandonments to Bolster Your Licensing Position
It is also important to track when your patent caused another to go abandoned, which can strengthen your licensing opportunity even further. Even before a patent is abandoned, you can approach the owner that has been blocked by your patent and offer them a licensing deal. You might suggest that by signing now, they can get to market faster and do not have to pay other fees associated with fighting to get their patent granted. And if AcclaimIP insights show that the company had to abandon its patent, your argument is even stronger that they need to license from you.
Identifying Valuable Patents to Purchase
If you are trying to determine which patents to purchase, AcclaimIP can help you there, too. Are you looking for defensive patents? Patents that have been used to block a certain competitor’s portfolio? AcclaimIP’s easy-to-use playbooks for data such as the forward rejection data are fill-in-the-blank forms that help make these searches easier and more efficient.
Using Uncited Prior Patent Art to Identify Possible Issues
Additionally, when you are looking at purchasing a set of patents, you will want to identify any potential issues through patent analysis. For this task you will want to use AcclaimIP’s patent-pending Uncited Prior Art feature.
With the Prior Art feature, you can now tella t-a-glance if there are family members that may cause issues for a granted patent. For example:
- Did an examiner for a foreign counterpart find prior art that caused that foreign counterpart to go abandoned, but that prior art was never looked during prosecution of the patent family member you are looking to buy or license?
- It is possible that this piece of prior art—had it been examined during the prosecution of the patent you are looking to buy or license — would have changed the outcome of the examination?
In this way, you can identify whether the patents you are looking to buy or license might have issues with being enforced.
Figure 2: The citations tab gives you access to AcclaimIP’s uncited prior art score and identifies which documents have created the issues that cause those scores
Would you like to find better insights during your patent analysis to help you navigate licensing and M&A, and find patent buyers better and more efficiently? If so, contact your AcclaimIP representative today.
Written by Khyle Eaton, Senior Manager, IP Counsel in Product & Innovation, Anaqua
Categories: Business Development
Tags: Patent Analysis