Authors: Matthew Wahlrab and Craig Rochester
As your company grows and your intellectual property (IP) portfolio matures, your patent searching needs will change. Ideally, the insights you gain from patent searches should address your legal and business needs in parallel: How nervous should you be about being sued for patent infringement or having a competitor copy or even patent your technology?
Patent searching provides a sense for how crowded your technology area is, which will in turn inform an efficient patent strategy, one that invests in the right technologies and territories for your business.
First, let’s explore examples of different patent search needs:
1. Basic pre-filing search for relevant prior art
This gives you an understanding of what your patent position could be relative to that of the rest of the world:
- Is your technology potentially patentable?
- Would a patent that you get be dominated by someone else’s patents?
- Could you dominate others in your field if you move quickly?
2. Ensuring you have freedom to operate
For a clear path forward and business peace of mind, patent searches can confirm that you have freedom to operate in your technology area (FTO).
Let’s take pharmaceutical companies as an example. Verifying full FTO is especially important in this sector, as pharma companies need to be sure the innovations they are pursuing will provide a return on what is typically a sizeable up-front investment in development and clinical trial expense. Being blocked by someone else’s patent after spending hundreds of millions of dollars is a nightmare scenario. In the case of new chemical entities, an expert searching team will initiate a patent database search for relevant chemical structures to determine whether there are existing patents or articles disclosing structures in the same chemical genus, and whether these will impact patentability and the viability of the proposed drug development initiative.
3. Evolving R&D and accessing innovation
From a patent standpoint, there are two key dimensions to understand in deciding whether to invest additional funds in an R&D project:
Know the patent landscape: If you are managing your company’s IP and patents, or guiding decisions about which R&D projects to pursue, you will need a sharp awareness of how crowded the patent field is within those areas. If pursuing a certain path will leave you exposed to risk, you can use a patent landscape analysis to formulate a defensive strategy, a mitigation plan, to partner or license, or to reroute to safer strategic waters.
Know your infringement risk: Companies can’t always see patent infringement liability coming ahead of receiving a complaint. If a third party asks for you to take a license, the clock begins ticking before they file a suit. With this in mind, if you haven’t already, you may do some searching for patents that cover the third party as ammunition for a countersuit. Foresight in having a portfolio of IP that covers aggressive competitors can make you look good if the worst happens and you receive a complaint.
In terms of strategies for accessing innovation, i.e., obtaining technology for your business, a patent search is again a useful tool. What are the patent activities of your potential partner companies? Are there opportunities to purchase or license third party patents to mitigate your R&D risk, or should you obtain a legal opinion stating that competitor patents are nothing to worry about? Could you co-develop patents with a partner to ensure your resources go further?
4.Creating a defensive position against known competitors
It’s no secret that companies look for patents assets to buy, hold, and leverage to outmaneuver the competition.
Litigation defense: Often, we guide our clients through the process of identifying patents they can use for a patent infringement countersuit. Whether the infringement suit is actual or potential, having a portfolio of patents for defensive use is a wise strategy that can translate into real dollars in settlement discussions.
Willfulness opinions for defense against willful infringement: This is a legal analysis of a discrete patent or set of patents that may have been brought to your attention by a third party, e.g., one asking for a license. If the willfulness opinion states that you either do not infringe existing patents, or that these patents are invalid, you can maintain an objectively reasonable defensive position, should you be accused of willful infringement.
5.Finding your patent silver bullet
Is there a single facet of the product, IP, and patent scenario facing you that, if addressed creatively and strategically, actually resolves all your problems? An angle that empowers you to swiftly take down the seemingly intimidating house of cards that your competition has constructed?
Whether your objective is to bring a counterclaim or identify the right external patents to buy, knowing your surrounding patent landscape is indispensable. Mapping technology evolution can reveal the relative strengths and vulnerabilities of existing patents, highlighting which are strategic to use, license, or purchase.
A legal patent solution isn’t necessarily a business solution
Due to the liability associated with giving business advice, a patent lawyer’s willingness to guide you on next best business moves is often quite limited. As a result, turning to a legal team for your patent searches saddles you with a correspondingly limited set of options for resolution; litigation and settlement negotiation to resolve conflict is often the closest that law firms get to a business solution.
Lawyers are also an incredibly expensive resource to use for patent searching. The search itself can be a relatively straightforward, low-cost affair (ranging from some $500 – $6k if outsourced), whereas engaging a law firm can quickly surpass $20k.
The limited scope of exploration, plus spiraling costs, often mean patent searches led by legal teams fail to consider the full patent landscape relevant to a company’s circumstances. This can create dangerous gaps or blind spots in a patent strategy: A defense crafted from just a subset of the available patent data might resolve the immediate issue in court, but at the same time generate shortsighted arguments susceptible to further future litigation. If your opponent recognizes this, you could be forced into arguing against your prior position — not a great look.
Analyze once, strategize long-term
At Rapid Alpha, we comb through the patent landscapes of our clients’ competition, gaining a detailed understanding of the products they have patented and the important patents in the field:
- How does their patent ecosystem shape up?
- What is the true narrative of how early patents were filed?
- What early research and development was done?
- Which improvements were made to arrive at the actual product?
With this information, we can map your competition’s storyline and chart your business activities alongside it. This enables us to pinpoint where your differentiating footholds are; what your niche is and how your position stacks up against the wider patent landscape.
And we can filter out cumulative search results and those that are irrelevant to your own patent applications so that you are not burdened with disclosing to patent offices documents that should not be disclosed.
Our ideal is performing this in-depth search once and for all, working with the entirety of the data available to us straight away. This enables us to shape nuanced, long-term patent strategies for our clients, positioning them to launch products with an in-depth knowledge of their surrounding technical, IP, and marketing landscape.
Ready to devise the strategy your innovation needs?
Helping technical leaders win their markets, negotiate from positions of strength, and outperform their competition for investment are Rapid Alpha’s driving aims. To talk more about how we can support your team to map, leverage, and protect its IP, don’t hesitate to get in touch.
