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Methods to improve Freedom to Operate analysis

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  • 1. Improving “Freedom to Operate” Analysis via Comprehensive Risk Assessment
    • Assessing your competitive landscape using targeted prior art search techniques and focused market analysis
    • Managing your information resources to cost effectively increase the quality of your searches
    • Applying search and market information to assess freedom to operate in your key markets
    Caterina Dauvergne LexisNexis Europe
  • 2. A Highlight: IP Sources and Solutions Technical IP Sources & Solutions : Patent Information and NPL IP Patent Data Delivery for intranet patent archives Non Patent Literature IP.com , Research and Disclosure & Elsevier Technical reviews through Lexis .com Totalpatent IP Research and Analysis Workflow solution 96 Patent Authorities (22 FT and MAT )
    • IPR Information & Solutions
    • Global IP Law Service
    • Legislation Practise and
    • Proceedings in the all the different IP domains
    • 235 countries coverage
    • Baxter World Patent Law
    • Case Law for US and UK
    • Patent Optimizer :
    • IP Solution for Optimising the Drafting ,Litigation & the Analysis of US Patent Applications
    • Analytical IP Content for M&A , Litigation and
    • Analytical information
    • Nimmer, Baxter, Chisum..
    • CourtLink information
    • US patent Infringement related decisions –docket
    • Related Business Information
    • Updated Company Profiles , SEC,DCA …
    • International as well as National Sources
  • 3. Agenda
  • 4. Agenda
    • A highlight of LexisNexis® Intellectual Property Services
    • A Brief Overview of FTO related climate and trends
      • Trends in Patent Filing and Litigation
      • IPR in force world wide
      • Recent Cases
    • Freedom to Operate: Theory and Practice
      • Properly Weighing Risk
      • A business case study
      • In Practice:Diligent Claim Interpretation
    • Improving your FTO analysis using PatentOptimizer™ and Lexis.com ™
    • Conclusion
  • 5. The importance of Freedom to Operate Strategy
    • What risks do companies take when deciding to commercialize a new product or process?
    • How concerned should companies be about patent litigation?
    • Planning for the development, production and launch of a new product is as much a matter of forecasting future market developments as it is of minimizing risks.
    • Patent litigation can be an expensive, uncertain and risky affair, and, as the saying goes, an ounce of prevention is worth a pound of cure.
    • Freedom-to-operate (FTO) opinions provide risk assessments relating to infringement of granted patents and the possibility of future infringements of any pending patent application which maybe issued.
  • 6. Facts and Figures: Patent Filing evolution
  • 7. IPR: Global Patent Litigation
    • UNITED STATES
    • Under United States law, an infringement may occur where the defendant has made, used, sold, offered to sell, or imported an infringing device or its equivalents.
    • EUROPE
    • European patents are enforced at a national level, i.e. on a per-country basis. Under Article 64 (3) European Patent Convention "any infringement of a European patent shall be dealt with by national law," with the European Patent Office having no legal competence to deal with and to decide on patent infringements in the contracting States of the EPO
  • 8. Patent Litigation in Europe
    • Average life of European Patents
    • DE UK 8 years
    • FR NL DK SE 6 years
    • ES BE GR 5 years
    • AT 4 years
    • Highlights :
    • GERMANY : Highest number of litigation average
      • From 300 000 EP patents per year designating DE: litigation 1 out of 600 - the ratio of Germany is the highest one.
      • The number of litigation doubled in the past decades
      • The number of actions commenced: 500per year was in 2006 the highest in Europe
    • UK : Highest cost of patent action in comparison to the other EU States
    • Costs
    • 650, 000 Euros as Plaintiff
    • 500, 000 Euros as Defendant
    • 430, 00 Euros on First Appeal
  • 9. Patent Litigation in Europe
      • In 2004, 90%of patent litigation in the European Community took place before the tribunals of four Member States (Germany, France, UK and the Netherlands)
      • 1 500 to 2 000 patent infringement and invalidity actions per year
      • 60 to 70% concern European Patents
  • 10. Patent Litigation in the US
    • Patent Infringement Suits originate in US Federal District Courts
    • 2753 US Patent Infringement Suits
    • filed in 2008
    • For infringement cases with more than $25 million at stake , the average cost of patent litigation is $3.2 million through the end of discovery and $5,2 million through trial (only 2,5%of the cases)
    PATENTS SUITS FILED *
  • 11. Patent Litigation in the US
    • TOP 5 Litigation Verdicts in the US since 2005
    • Amount $ 1,672,594,000
    • Centocor vs Abbott Lab (June 2009 )
    • Amount : $ 1, 500, 000 000
    • Alcatel Lucent vs Microsoft (March 2007)
    • Amount: $ 431,867 ,351
    • Saffran vs Boston Scientific (February 2008)
    • Amount: $ 388,000, 000
    • Uniloc vs Microsoft Corporation (April 2009)
    • Amount $ 368,043 ,056
    • Alcatel Lucent vs Microsoft( April 2008)
    *
  • 12. Trends of Patent Litigation in Asia
    • CHINA
    • Patent Filing in China according to statistics of 2007 over 250000 /Utility Models 175000.
    • Increase of the total number of new patent application is of 20% p.a
    • Significant IP litigation in China, mostly between and among Chinese parties.
    • Between 2001 and 2007: 77,000 IP court cases were filed, of which 18,521 involved patent litigations .
    • 1634 cases involving foreign IP Owners
    • WORLD WIDE TRENDS
    • Patent Litigations are on rise, especially in the US and in developing economies like CHINA and INDIA.
  • 13. Freedom to Operate: Theory and Practice
      • Properly Weighing Risk
      • A business case study
      • In Practice: Diligent Claim Interpretation
  • 14. Freedom to Operate Analysis : Risks Factors
    • PATENT PROTECTION IS TERRITORIAL
      • Patents are limited by geographical boundaries. There is no such thing as a “global” patent.
    • PATENTS HAVE LIMITED DURATION
      • When properly “maintained”, patents are generally enforceable for a period of 20 years.
    • PATENTS ARE LIMITED IN SCOPE
      • The claims of a patent dictate the scope of the inventor’s enforceable rights.
  • 15. Freedom to Operate Analysis: From Weighing Risks to Building your strategy FREEDOM TO OPERATE CROSS-LICENSING ACQUISITION INVALIDATION AMOUNT of MONEY INVESTED in PRODUCT DEVELOPMENT LICENSING MANUFACTURE PRODUCT and COMMERCIALIZATION
  • 16. Freedom to Operate Search
    • Identify potential patent barriers to the commercialization of products or technologies.
    • Search the claims language of third-party in-force patents to determine if the claims of any prior art read on aspects of the technology that is to enter the marketplace
  • 17. A business case study
    • THE CASE :
    • A hypothetical client intends to produce vehicle fuel tanks by blow polyethylene and related copolymers
    • Manufactures and Sales Plans are limited to North America .
    • THE PROBLEM TO BE SOLVED:
    • The polymer could be ethylene homopolymer or copolymer comprising ethylene and not more than 10% by weight of an alpha-olefin having from three to 20 carbon atoms.
    • The polymer has a density of 0.945 to 0.970 g/cm 3 , thus falling in the range of high density polyethylene (HDPE) characterized as having a density greater than or equal to 0.941 g/cm 3 .
    • In addition, the polymer has intrinsic viscosity of 2 to 6 dL/g. It may be prepared by classic Ziegler-Natta catalysts, i.e., titanium chloride (TiCI3, TiCl4) catalyst and alkylaluminum (AIEt3, Et2AICI, EtAICI2 , etc.) co-catalysts with or without supports or modifiers.
    • The client has provided a known patent on "Ethylene Polymer and Fuel Tank Comprising the Same" (US 5547722, published Aug. 20, 1996) from Mitsubishi Chemical Industries.
    Used with the kind permission of the author: Thomas E. Wolff, Ph.D. “ Freedom-to-Operate Patent Searching. My Six Basic Rules.“ Searcher. The Magazine for Database Professionals, 16 (5) (May 2008): pp. 34-39 .
  • 18. A business case study
    • Initial Definition
    • Ethylene Copolymer or Polyethylene
    • Density :0,945 -0,970 gr/cc
    • Intrinsic viscosity: 2-6 dl/g
    • Ziegler Natta Catalysis
    • Fuel Tank
    • US and Europe
    • Search Scope
    • C2 homopolymer, C2/C3+ olefin copolymers
    • High Density, HDPE; 0,94, 0,95, 0,96, 0,97, 0,98 g/cm 3
    • Intrinsic viscosity but values in the post search
    • Post Search consideration only
    • Vehicle or fuel tanks, drums, reservoirs; blow-molded or hollow articles
    • EP , US and WO patents and applications published since 1985
  • 19. In Practice Diligent Claim Interpretation
  • 20. Improved Patent and NPL Searches with Semantic Technology in PatentOptimiser
  • 21. Improved Patent and NPL Searches with Semantic Technology in Patentoptimiser
  • 22. Improved Patent and NPL Searches with Semantic Technology in Patentoptimiser
  • 23. Improved Patent Searches with Semantic Technology in Totalpatent
  • 24. Gathering effectively Company Information
  • 25. Conclusion
    • FTO search and analysis is necessary endeavour to avoid litigation and infringement costs .
      • Evaluating systematically your freedom to operate prior to launching a new product is, therefore, a way of minimizing (but not eliminating) the risk of your product infringing the patents owned by ot hers
    • New Technologies applied to patent searches ,such as semantic query expansion and the growing availability of patent data from Asia with machine translation enables :
      • Improved search precision and recall
      • Effective way the claims analysis
      • Reasonable Fostering of Asian concerns
      • You take the blue pill - the story ends, you wake up in your bed and believe whatever you want to believe. You take the red pill - you stay in Wonderland and I show you how deep the rabbit-hole goes.
      • - The Matrix ( 1999)-
  • 26. The Rabbit Hole
  • 27. References used for this presentation
    • STATISTICS :
    • Patent Litigation Insurance – a Study for the European Commission on the feasibility of possible insurance risks
    • CJA consultants LTD PH7 Bickenhall Street Londomn
    • WIPO & OECD statistics on Patent Application from 2006
    • 2008 Perspective - China Trends. Mondaq Business Briefing November 26, 2008 in Lexis Nexis, Mr Robert Grantstein
    • University of Houston Law Center : www.patstats.org
    • BUSINESS CASE AND INITIAL REFERENCE PAGE 1 CITED FROM
    • “ Freedom-to-Operate Patent Searching. My Six Basic Rules.“ Searcher. The Magazine for Database Professionals, 16, no. 5 (May 2008): pp. 34-39.
    • Used with the kind permission of the author: Dr. Thomas E. Wolff, Ph.D., webmaster and wikimaster of the Patent Information User Group, http://www.piug.org, http://wiki.piug.org
    • http://www.wolffinfo.com/docs/FTO_Patent_Searching_Wolff_in_Searcher_Magazine.pdf

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