Patent portfolio audits Cost-effective IP management Vashe Kanesarajah Manager, Europe & Asia Clarivate Analytics
Clarivate Analytics Patent portfolio audits 3 Introduction The world today is in a state of information overload, and the field of intellectual property (IP) is no exception. Although it can be difficult to see the forest for the trees, the development of your IP portfolio as a business asset means you need to see both the forest and the trees. Patent Portfolio Audits are a way to do this, and when done in phases, they don t have to be an overwhelming task. This paper also describes a method that enables you to gain the perspective you need, and do it one step at a time as resources permit. This white paper describes how an IP Audit can be used to manage the IP lifecycle so that you strategically deploy resources for R&D or acquisitions to enhance your business strategy, make informed choices about what to grow and what to divest, and extract the most value from your IP for its full lifetime. Conducting an IP Audit helps you: Align your IP strategy with your business strategy Reveal under-utilized, yet strong IP that might be sold or licensed Eliminate unnecessary IP costs Find gaps in your portfolio that may warrant in-licensing, partnering or acquisition Optimize coverage by enhancing some IP areas, while reducing others Identify justifiable expenses by coupling them to value generation The development of your IP portfolio as a business asset means you need to see both the forest and the trees. Table 1: Phases of Portfolio Audits Phase Looks at Purpose IP Management Benchmarking Opportunity identification Past performance Present competition Future development Understand your existing portfolio as it relates to your business strategy Place your existing portfolio within the broader landscape of the competitive IP environment Identify opportunities for cost-effectively improving your portfolio Each phase of an IP Audit has a clear purpose and a clear work product leading to options for actionable business plans. The one you choose to execute first depends on your current state of IP management, and on available time and resources. Let s look more closely at each phase of an IP Audit, examine examples along the way and summarize the intelligence gained at each step. Patent portfolio audit phases Divided in three phases (Table 1), an IP Audit helps you understand your company s IP portfolio - past, present, and future. The IP Management phase gives a snapshot of your historical portfolio, while the Benchmarking phase places your existing portfolio within today s competitive environment. The Opportunity Identification phase suggests options for future management. Each phase can be completed independently at a pace that does not exceed your resources.
4 Clarivate Analytics Patent portfolio audits 5 Phase 1: IP Management The first phase of an IP Audit aggregates and organizes your portfolio, and assesses its size, global reach, persistence and vitality. Size is important, but is certainly not the only way to judge your portfolio. Global reach tells you whether your technology is protected in the geographic markets that you intend to enter, or in regions where you need negotiation power. Persistence is the consistent filing of patent applications so that you extend exclusivity for your products and services. Vitality is the current state of filing activity that shows whether you have resources devoted to leading-edge innovation. The results from this first Audit phase not only prepare your portfolio for benchmarking, but also facilitate right-sizing and cost-saving recommendations. The work process for the IP Management phase is shown in Figure 1. The first step is to prepare the portfolio for analysis. The published patent applications and issued patents are more easily organized and analyzed when placed in a common data management system and in particular, one that allows your assets to be tagged. The next step is to classify and code each patent by a businessrelevant grouping. Many companies organize their IP by business unit, by technical field, by the applicability to standards, or by other categories, and some use their docketing systems to record the assigned categories. Once categorized, the portfolio is analyzed to assess patent strength based on several factors. As a result of this analysis, it becomes clear which properties are more valuable and which align with the current business strategy. Those that do not align can be considered for licensing, sale or abandonment to achieve cost savings. There are a variety of tools for collecting and coding IP, and various methodologies for determining relative patent strength, and these steps can be done on your own, or with the help of external experts. In the example shown on page 5, the first phase involved identifying the home company s patents, exporting patent bibliographic fields and text into a database The results from this first Audit phase not only prepare your portfolio for benchmarking, but also facilitate right-sizing and costsaving recommendations. tool, and linking the patent records to the home company s tagged fields from their docket report. By using technology descriptions from an internal knowledge exchange along with text-mining and patent classification, each patent or application was put into one or more technical categories, and category tags were added to the data. The information in this enriched database was analyzed, with some of the results shown in Figures 2, 3 and 4 Figure 2 shows the pace of invention for several of the technologies in the portfolio. Plotting the tagged technologies by priority year shows more clearly when the inventions were made. It is obvious that these three technologies have very different activity patterns; Technology A is older and not being further pursued, Technology B is persistently active, and Technology C had been dropped for a while and then has since resumed. Figure 1. IP Management Workflow Portfolio preparation Figure 2. Pace of Innovation 200 150 100 50 0 Technology A Technology B Technology C Categorization Categorize by business unit Categorize by technology Categorize by standard Categorize by product Analysis of portfolio parameters 1996 1998 2000 2002 2004 2006 2008 2010 2012 2014
6 Clarivate Analytics Patent portfolio audits 7 An alternative method of viewing patent activity within technology areas is shown in the Figure 3. This shows total volumes and levels of recent patent activity for each of the technology areas. From this view, the recent activities of the company are evident, potentially indicating new fields of interest for the firm. Figure 3. Recent Investment Figure 4 shows the ratio of patents and patent applications by technology area. High application volumes may mean that applications have not had time to grant, or it may indicate that the field is crowded or of questionable patentability. Distinguishing among these reasons is important in formulating recommendations. Table 2 is a heat diagram showing how IP aligns to business unit. In this example, there are eight business units analyzed for IP across 13 technical categories. The color intensity of the boxes indicates the relative number of patent documents by technology. Clearly, BU-1 has patent filings across all technologies and is particularly strong in one area. BU-3 has a narrow focus on one technology. This type of analysis can help assess whether the patenting activity of each business unit is appropriate for its business strategy. This type of analysis can help assess whether the patenting activity of each business unit is appropriate for its business strategy. Technology F % of activity since 2010 Volume, 1996-2015 90% 61 Table 2. Business Unit IP Technical Concentrations Technology E 78% 52 Business unit A B C D E F G H I J K L M Total Technology D Technology B 50% 48% 140 456 BU-1 428 BU-2 48 BU-3 108 Technology C 30% 141 BU-4 36 Technology A Technology J 28% 12% 45 598 BU-5 91 BU-6 81 BU-7 81 BU-8 81 All 124 62 71 94 27 96 58 136 52 15 160 48 26 Figure 4. IP Management Workflow Technology A 48% 34% Technology B Technology C 46% 83% 43% Technology D 56% 19% Technology E 66% 34% Technology F Technology G 77% 34% 100% Technology H 22% 78% Technology I 10% 90% Technology J 35% 65% Granted patents Published applications
8 Clarivate Analytics Patent portfolio audits 9 To make this information more meaningful, a Composite Patent Strength Score (Clarivate Analytics Strength Index) was included for each technology area. This Composite Patent Strength Score identifies technology categories or business units with a higher fraction of granted patents and higher external recognition. Figure 5 shows technology categories arrayed based on 3 criteria: x= composite strength score, y= % of activity since 2010. The size of the circle is proportional to the number of inventions. Categories toward the bottom are older and those appearing in the top right hand corner of the chart indicates recently filed patents which have a high impact, or a high perceived importance based on the aggregated strength score. Categories at the upper left are newer and less proven. Performing a strength analysis gives a much clearer picture of the relative quality of the patent art for each business unit. Once the scores are assigned, they should be dissected to determine their meaning. Figure 5. Three factor analysis of portfolio % of activity since 2010 Technology M Technology K Technology D Technology J Technology C High strength, recent areas Technology H Technology N Technology A Technology B In this example the company holds a number of recent inventions, highlighted in orange, which have received proportionally high filing investment and external recognition from the broader competitive environment. Composite strength score A Composite Patent Strength Score can incorporate different factors, both positive and negative, including the grant status, citation frequency, age, breadth, and examiner comments or office actions (Figure 6). Performing a strength analysis gives a much clearer picture of the relative quality of the patent art for each business unit. Once the scores are assigned, they should be dissected to determine their meaning. Is the external interest something that can be leveraged? Does the business unit need to reconsider how they invest in IP, or improve the marketplace relevance of their IP? This type of analysis may lead business units to refocus limited resources. Figure 6. Factor Selection for Composite Patent Strength Score Positive factors Filing breadth Technical breadth Citation frequency Youth Patent Start Application Positive factors Filing breadth Technical breadth Citation frequency Youth Examiner rejection of others Negative factors Negative factors Age Office actions Age Office actions
10 Clarivate Analytics Patent portfolio audits 11 Phase 2: Benchmarking In the second phase of an IP Audit, the portfolio under study is placed within the larger context of the competitive marketplace and quality measures are added. Parameters such as prosecution success, prosecution breadth, and external recognition are studied and compared with the same parameters in the competitive patents. This allows for the calculation of a relative quality score that indicates the strength of the patent portfolio in comparison to the competitive environment. Figure 7 shows the steps for the Benchmarking phase. In the first step, the home portfolio is viewed using external lenses or comparators. In particular, the examination of competitive patent activity and citation metrics are key indicators of the relevance of the home portfolio to the competitive environment. The portfolio may be benchmarked in various ways, for example, by technology, by product or by market depending on the specific situation. In the final step of the Benchmarking phase, Strength Analysis can be used to compare the home company to competitors. This forms the basis for the information used to identify opportunities in the final phase. The Benchmarking phase should give you a much better understanding of how your portfolio fits within the competitive environment. This understanding may result in identifying properties for licensing or sale and companies for partnering. Figure 8. Map of the Competitive Landscape Figure 7. Benchmarking Workflow Benchmark by business unit Source: Thomson Innovation Figure 9. Comparative Analysis of Technical Approaches Home portfolio Comparators Benchmark by technology Comparative strength analysis Home Company Competitor 1 Total Records Average Strength Score % Recent Total Records Average Strength Score 1 24 37.9 14% 38 41.5 50% % Recent Technology A Benchmark by standard 62 39.5 80% 42 55.3 31% Technology B 71 35.4 100% 32 58.8 100% Technology C 94 36.9 38% 103 61.4 15% Technology D Categorize by product 27 41.2 96 52.6 55% 45 58.1 11% Technology E Technology F 58 18.8 15% 120 22.1 48% Technology G By using text mining tools such as ThemeScape shown in Figure 8, very rapid insight into the activity in your technical space can be generated. Here the home company s patents are highlighted (Red) and compared to activity by a competitor in the field. There is one area predominantly (top left) where the home company seems to have unique holdings. Figure 9 focuses on a specific type of analysis used to compare technical strength, or strategic changes in direction. Specifically, the following table compares the volume, patent strength and level of recent activity for the home company with competitor 1. Above average recency or strength values within the technology areas are highlighted in the table. Where both strength AND recent activity are above average, these topics are highlighted as convergent and imply a new patent protection scheme or change in behavior for the applicant, indicating potential strategic changes in direction within a specific technology area. 136 25.3 79% 140 32.0 38% 52 51.5 8% 12 66.8 12% 15 58.6 60% 52 68.3 25% 160 23.0 33% 192 73.5 75% 48 57.3 54% 32 80.9 50% 26 34.0 47% 5 47.9 12% Above Average Invention Strength Convergence Above 50% Recent Activity Technology H Technology I Technology J Technology K Technology L Technology M
12 Clarivate Analytics Patent portfolio audits 13 Citation as an Indicator of Competitive R&D Activity It is informative to understand who is citing or referencing patent art, the home company or other, external sources. The ratio of self references to external references can indicate possible over- or under-investment. Self references are an indicator of continued investment and incremental portfolio building. Too many self-references, however, may indicate an internal over-enthusiasm for the technology that is not shared by the marketplace. External references are an indicator of interest on the part of others (impact) within the competitive environment. A high ratio of external references to self-references may indicate an underinvestment in the technology. Cites from patent examiners may reflect closeness of the art. Examiner s references often challenge patentability by declaring that earlier art defeats novelty or renders the technology obvious. Patent impact is also examined by technology through citation frequency. This analysis gives quantitative measurements of patent impact. Cites from patent examiners may reflect closeness of the art. Examiner s references often challenge patentability by declaring that earlier art defeats novelty or renders the technology obvious. A high number of references may indicate patents covering more fundamental technologies. High is relative to the technical field, since citation practice differs among fields. Self-references indicate possible strategic areas that a company intends to protect by patenting as many incremental improvements as possible and is particularly useful when analyzing competitor portfolios. External references often can be used as indicators of the extent of competitive activity. Patent Impact can be examined through citation frequency. Citations provide a way to assess whether the level of internal effort is matched to the level of external interest. A mismatch suggests that the technical area be examined to decide what to do about a mismatch. In Table 3 the technologies Table 3. External and Self References for each Technology Technology categories Total records in tech category External reference to home company Home companyself references are ranked by their external impact, and those marked in red are the ones that deserve the earliest review, and flag technologies that could either benefit from more R&D or IP investment, and which could be sold or abandoned. Figure 11. Percent of Self and External References to Home Company IP Portfolio External 84% Self 16% External references per record % self references Activity in the home company is Critical for review Figure 10. Types of references to home company IP Portfolio Tech-L 54 1447 148 27 9% Underactive? Tech-B 28 604 37 22 6% Underactive? Tech-C 26 477 16 18 3% Underactive? Home company Tec-E 87 1228 119 14 9% About par Tech-A 125 1733 234 14 12% Robust Tech-I 46 520 45 11 8% About par Self Tech-H 77 779 68 10 8% About par Home company External Company B Tech-F 84 847 128 10 13% Robust External examiner Tech-D 75 665 449 9 40% Overinvested? Tech-G 88 652 57 7 8% About par Tech-J 62 340 39 5 10% Overinvested? Company C Tech-K 18 36 1 2 3% Not of interest
14 Clarivate Analytics Patent portfolio audits 15 Phase 3: Opportunity Identification The third phase of an IP Audit is Opportunity Identification. Opportunities can be grouped into two main types: cost savings and profitable business growth. The information gained in the first two phases is used to formulate options for lowering costs and leveraging the portfolio for improved revenue. Figure 12 shows the steps in Opportunity Identification. The home portfolio with its Strength Analysis and external comparators is now examined to find indicators of potential commercial interest. With respect to cost savings, a low score on IP strength, lack of external citations and low alignment with the business strategy are some of the indicators of properties that should be considered for cost reduction measures. With the right information, pruning the portfolio of non-aligned properties becomes one of the easier tasks of IP management. Opportunities for profitable business growth are discernible with the right tools and experience. Sources for business opportunities may come from a deeper analysis of the patents held by competitors, customers, other participants along the value chain, and even other markets. Clues for licensing targets or cross-market expansion can come from targeted searching or citation analysis. To give specific illustrations, the use of your trademarked product in the examples of a patent by a company operating at a different point in the value chain may be an indication that the company is a candidate for licensing. Similarly, the citing of your patents by a participant in a completely different market may be an indication that the product has uses beyond the current customer base. There are many possible vectors pointing to future opportunities. Patterns of citation can also pinpoint licensing targets with different characteristics. The patterns illustrated in Figure 13 show two types of citation patterns. On the left, specialty companies operating in the home company field may be identified by the fact that they cite multiple patents in its portfolio. That means that they are attentive to what the home company is doing and may be reliant on it. Only expert review can confirm whether the patents are required for the competitors operation, but the search for this pattern helps focus the candidate licensee list and reduce your effort and legal cost. Specialty companies offer advantage as a licensing target because their overall success may rely more heavily on freedom to operate, making it easier to get a licensing program off the ground. On the right, the citation pattern identifies a large diversified competitor with specific interest in one or just a few of the home company patents. This patent may be needed for freedom to operate, but with a head-to-head competitor there may be more likelihood that each company holds IP needed by the other, potentially leading to cross licensing. By deciding what kind of transactions are desired, criteria for sifting through the references to the home company portfolio can be established and make the job of opportunity identification much easier. Examples of opportunities that may be identified are: Cost reduction from pruning IP Out-licensing or sale to increase revenue In-licensing to expand offering or to avoid right-to-practice issues Partnering to expand market or access to technologies Potential acquisition, merger or divestiture targets Potential infringers of home company s patents which may also lead to licensing or enforcement Technology areas for future patent filing Figure 12. Opportunity Identification Workflow Figure 13. Citation Patterns Supply chain A list Speciality competitors focused broadly on home company B list Large diversified competitors focussed on narrow areas of home company technology Home IP packages Collection and sorting of downstream references Competitors Potential buyers, licensees, acquisitions Patent 1 Competitor A Patent 1 Lateral markets Patent 2 Competitor A patent Patent Competitor A Patent 2 Patent 3 Competitor A Patent 3 Enforcement Patent 4 Competitor A Patent 4 The competitors reference many home company patents A home company patent is cited by many of the competitors patents
Clarivate Analytics Patent portfolio audits 17 The methodology of an IP Audit should be tailored to meet a company s specific needs and staged to accommodate limited time and resources. Summary This white paper has shown how, through a Patent Portfolio Audit, businesses can answer critical questions such as: What is the extent and quality of the current IP portfolio? How well is it aligned with the current business strategy? How does it compare to competitive IP? How can portfolio costs be reduced without compromising business options? How might the IP be leveraged for future revenues and profitable growth? The methodology of an IP Audit should be tailored to meet a company s specific needs and staged to accommodate limited time and resources. If you are interested in learning more about how Clarivate Analytics can assist with an IP Audit, contact one of our representatives. As information specialists and IP intelligence thought leaders, the Clarivate Analytics staff can be counted on to identify opportunities for cost effectively improving your IP portfolio to support and even enhance your business strategy. As information specialists and IP intelligence thought leaders, the Clarivate Analytics staff can be counted on to identify opportunities for cost effectively improving your IP portfolio to support and even enhance your business strategy.
Clarivate Analytics Patent portfolio audits 18 Who we are Clarivate Analytics accelerates the pace of innovation by providing trusted insights and analytics to customers around the world, enabling them to discover, protect and commercialize new ideas faster. We own and operate a collection of leading subscription-based services focused on scientific and academic research, patent analytics and regulatory standards, pharmaceutical and biotech intelligence, trademark protection, domain brand protection and intellectual property management. Clarivate Analytics is now an independent company with over 4,000 employees, operating in more than 100 countries and owns well-known brands that include Web of Science, Cortellis, Derwent, CompuMark, MarkMonitor and Techstreet, among others. For more information: clarivate.com North America Alexandria: +1 800 223 9697 Europe, Middle East and Africa London: +44 20 7433 4000 05.2018 2018 Clarivate Analytics Asia Pacific Tokyo: +81 3 5218 6500 Beijing: +86 10 6267 4111 Seoul: +82 2 2076 8011 analytics_support@clarivate.com clarivate.com