At Anaqua, we understand the integral role patent data plays in portfolio management decisions. Our robust platform, AcclaimIP, provides patent portfolio managers and in-house counsel with easy access to the patent insights needed for critical IP tasks, including foreign filing, renewals, and competitive intelligence.
If you work in one of these job functions, AcclaimIP enables you to work more efficiently, strategically, and confidently by simplifying patent data analysis. The software provides decision-support tools, visualization gadgets, on-demand reports, and more to help you make more informed decisions faster.
Decision Support Patent Tools
Efficient access to decision support data can’t be underestimated. Patent portfolio managers are tasked with making hundreds of decisions each week. If the decision support data are difficult to access, hard to understand or not actionable, then portfolio managers are often forced to do without the data and make decisions lacking a complete picture.
The following are some ways that AcclaimIP is designed to support patent portfolio managers and attorneys in their day-to-day workflows.
Filing Decisions
Filing decisions are generally made with two general criteria in mind.
- Does the invention support our business objectives?
- Is the invention novel and non-obvious?
With respect to supporting your business objectives, that is mostly an internal decision by considering the details of a specific invention and how it impacts your products, and roadmap. However, competitive landscapes can help guide your filing plans, and assess the relative strength or weakness of your portfolio in the technological areas covered by the invention.
Figure 1: As one example lets dashboard Google’s and Apple’s portfolios by CPC. By looking at the top chart you can see that both companies have near parity in terms of number of fillings around VR governed by G06F3/011. On closer inspection the lower chart demonstrates that Google had a head start back in 2016, but since then Apple has more than caught up relative to Google. Currently Google is not patenting much in this area.
What’s the insight in the chart above regarding these VR patents?
- Both companies are near parity WRT to total volume of patents
- Google has older patents which may indicate they are more fundamental. (A citation analysis of the set will settle that question)
- Apple is in a good defensive position relative to Google therefore if the invention is only incremental and may never get implemented in product, they can consider not filing or filing only in a single priority country.
If it makes business sense to file the invention, then you also need to know if the invention is patentable. Many companies use outside firms to do pre-filing patentability searches, which is generally considered a good practice. However, the search capabilities of AcclaimIP give patent portfolio managers access to a quick review of the prior art with just a few clicks and a few simple refinements which gives a rapid assessment if the invention is patentable and even worth sending to the outside search firm.
One key feature is that search results are saved in Projects for simple updating prior to filing decisions, or quickly re-run later when making foreign filing decisions as new potential prior art is published.
The saved searches come in handy when fulfilling duty of disclosure requirements. For example, a manager could rerun a search on emerging art 6 months after initial filing and easily identify any new references to submit.
Foreign Filings
When determining where to file internationally, portfolio managers are tasked with developing a filing strategy that maximizes the impact of their best highest value innovations and minimizes the costs of their incremental improvements, which may not impact the business to the same degree.
AcclaimIP helps managers instantly check the status of priority applications within families and see if a PCT was filed and review the International Search Report (ISR) for blocking prior art which may limit the scope or invalidate the priority filing. The family relationship view highlights cases with issues that may require closer examination.
Figure 2: Many foreign filing decisions are influenced by two factors: 1) Where you typically file similar patents, and 2) Where you rcompetitors file their patents within the same technology areas. AcclaimIP’ foreign filing report automatically surfaces relevant patents and compares them to your established competitors’ global filing behavior.
Managers can also compare their coverage gaps to competitor filing strategies. For instance, AcclaimIP may show that a rival is building a strong portfolio in China in a certain technology area where your company has little IP protection. This competitive intelligence would lead to expanding filings in China.
Renewals
What’s the patent about?
Step one when making annuity decisions (also called renewal or patent maintenance decisions) is to fully understand the patent itself including what it covers, its potential strengths and weaknesses, and a summary of the inventive step claimed. The new artificial intelligence integrations in AcclaimIP summarize your patents, providing patent portfolio managers with a full understanding of the patent claims, their coverage, and their strengths.
Figure 3: AcclaimIP’s built-in AI features summarize patents from various points of view to help portfolio managers understand their patents coverage, inventive step, and strengths and weaknesses and potential uses for the claimed invention.
Reverse Citation Analysis: Is the patent enforceable?
Only AcclaimIP analyzes the entire reverse (backwards) citation record in the entire family to surface consequential cited references in prosecution of the entire family of international counterparts. With one click, potential invalidating or narrowing prior art that was not considered during the examination of your patent is surfaced. AcclaimIP further evaluates these uncited references and scores them from 0 to 5 depending on the likelihood of being prior art.
Figure 4: Prior art that was deemed relevant during the prosecution of one family member but not considered by another examiner is algorithmically evaluated by AcclaimIP and scored from 0 to 5 based on its likelihood of being invalidating or narrowing prior art. In the example above, the JP ‘723 cited patent resulted in the abandonment of the EP counterpart. What’s its impact on the US case?
Can we practice this patent? Reviewing the patent in the context of prior art
Another aspect when assessing the value of a patent to your organization is to review the patent in context of the prior art. It is common that blocking art covers the core of the invention and the granted claims only cover an incremental improvement. The result is that the claimed invention cannot be practiced until the prior art expires.
Figure 5: A claims diff tool is indispensable tool for evaluating patents. In this example you can see that the limitations shown in green were amended to the first independent claim. Just a click away you can see the blocking art is expired which means this patent can be practiced.
In the example above, this patent can be practiced as an improvement over the prior art. The prior art patent has expired and no longer prevents the patent owner from practicing the improvement. You can imagine there are also cases where the prior art expires close to the expiration date of your patent, rendering your improvement nearly unpracticable. AcclaimIP shows you the blocking prior art along with their estimated expiration dates.
Does it limit the ability for competitors to practice their patent?
The inverse of often true, where you hold the key patent, and your competitors have patented incremental improvements. Knowing this before making your annuity decisions will often be the determining factor whether to renew or abandon a patent.
Annuity decisions are perhaps the most consequential area where AcclaimIP helps portfolio managers perform at a higher level by uncovering insights that are simply not feasible without the tools AcclaimIP provides.
