Outsmart the Competition Through Patent Research

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1 Outsmart the Competition Through Patent Research Central Texas Electronics Association Symposium 8/12/2014 Steve Pearson Lead Strategist & Founder The Pearson Strategy Group, LLC

2 Background This presentation is not about the legal process for patenting an idea. Bob Villhard presented to CTEA on this subject last year. I m not a patent attorney or agent (and I don t play one on TV!). R&D activity, company direction and future markets can be revealed by recently filed Intellectual Property.

3 Today s Focus Large companies have groups responsible for all nine of these intersections: Today s focus is on the two cells with an X. Photo credit: Martina_L (Shutterstock), andre crisante (Shutterstock)

4 A Few Numbers USPTO patent statistics for 2013: 571k applications (all but provisional) 303k grants 912k total These numbers become significantly larger when including Patenting entities around the world. Data credit: Patent Technology Monitoring Team, USPTO (

5 Tip #1 Use prior art research to gather ideas (before you try to invent or patent anything). The Patent authorities of the world have created huge databases to help YOU accelerate the technology innovation cycle. Photo credit: Wolfgang Thieme (Wikimedia)

6 Tip #2 Use free research services but not for significant financial decisions or for legal activities. USPTO ng-3 Google Patents Espacenet is best for world-wide information since it is organized by patent families and has PDF downloads.

7 Tip #3 Scale the dollars spent on prior art research according to your risk and gain. USPTO examiner searches are not perfect. Don t apply for a patent only to find out later that published prior art already existed. This wastes your time and money. Don t get a patent only to find out later that published prior art existed when a competitor initiates a re-exam. Re-examinations can remove/alter your patent s claims. Can involve significant amounts of your time and money for legal teams, licensing, and/or redesign. Can annoy your customers if your product changes or has delayed delivery. Photo credit: Wolfgang Thieme (Wikimedia)

8 Tip #4 Anticipate and minimize your costs. Set a low threshold for initial scoping, perhaps $1,000, before significant spending. For small entities, start with these cost estimates*: ~$10k for attorney, prior art research, drawings, USPTO filing and publication fees for utility patents. ~$10k for effective marketing and licensing of your patent Some patentable ideas may not benefit from a patent. Example: mobile phone apps can have short lifecycles. * This amount will vary for many reasons. Photo credit: Rugby471 (Wikimedia)

9 Tip #5 Prior art may not be obvious or published (yet). Patentability is determined by prior IP from any country. Patentability can also determined by publications from any country. Provisional applications are never published. An 18 month publication lag after filing a utility application is typical for most of the world s patent authorities; conduct thorough research today and then do a quick refresh in 18+ months.

10 Tip #6 Use Patent Analytics to examine high-level activity.

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14 Tip #7 Use Patent Analytics to scout for future opportunities Photo credit: Krantzmh (Wikimedia)

15 Tip #8 Start Early with Freedom to Operate research for new products or product revisions. Start when the idea is new, don t wait Focus on enforceable patents in the country(ies) where you plan to operate. Discourage litigation. Persuade your neighbors to compromise whenever you can. Point out to them how the nominal winner is often a real loser in fees, expenses, and waste of time. As a peacemaker the lawyer has a superior opportunity of being a good man. There will still be business enough. Abraham Lincoln Credit:

16 Tip #9 Use an IP attorney/agent to file your application. IP Attorneys and law firms do not necessarily have an in-house specialist for IP research. Bring your prior art research to your attorney/agent so they can better define the claims of your patent application. Photo credit: ConstantinosZ (Shutterstock)

17 Tip #10 Alerts monitor patent resources and then notify you when your criteria are met. Monitor for technology advancements. Monitor your competition. Monitor for citations to your IP as prior art (potentially blocking the advancement of your technology, IP and market). Google Scholar Alerts include patents and/or technical publications Examples of Google, Apple and 3D-printing patent application alerts can be found at Photo credit: Cryteria (Wikipedia)

18 Benefits Affords early risk identification giving you more time to react. Provides early opportunity identification giving you more choice on what to pursue. Delivers faster and more defensible patents. Accelerates your R&D cycle and your time to market. Reduces your costs. Steve Pearson Lead Strategist & Founder, The Pearson Strategy Group, LLC

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