Due Diligence and the analyses
of the patent landscape
Per Wendin - Kapea
Agenda
• Risks of entering new product or geographical markets
• Analyses of own patent portfolio and the patent
landscape...
Infringement
Infringement
•

A party (other than the patentee or licensee of the patentee) that
manufactures, imports, uses, sells, or ...
Infringement
•

A party (other than the patentee or licensee of the patentee) that
manufactures, imports, uses, sells, or ...
Infringement
•

A party (other than the patentee or licensee of the patentee) that
manufactures, imports, uses, sells, or ...
Example of claim chart
Global IP overview

Source: WIPO Statistics Database, October 2012
Global IP overview

Source: WIPO Statistics Database, October 2012
Patent applications

Source: WIPO Statistics Database, October 2012
Patent families

Source: WIPO Statistics Database, October 2012
Patents granted

Source: WIPO Statistics Database, October 2012
Patents in force

7.3 million patents in force and 5.17 million pending
applications in 2010

Source: WIPO Statistics Data...
Patents - geographical
distribution

Japan

Internet

China
Patents - technology (2011)
ICT
∼50%

Source: Thomson Reuters 2012
Number of US lawsuits

Source: US Government Accountability Office GAO, Aug 2013
Number of US lawsuits

Source: US Government Accountability Office GAO, Aug 2013
Number of defendants in US
litigations

Source: US Government Accountability Office GAO, Aug 2013
Sued by whom?

Source: US Government Accountability Office GAO, Aug 2013
Not cheap...
For a claim that could be worth less than a $1
million, median legal costs are $650,000. When
$1 million to $...
Damages
Source: PWC 2013
Damages

Source: PWC 2013
Distribution of cases

Source: PWC 2013
What can/should one do?
Options
Ignore

Don’t
Ignore

Wait and see

Be proactive

Solve
problem as
they come

Strategic
actions
Don’t ignore - strategic actions
Don’t ignore - strategic actions

• Create own patent portfolio - takes time
Don’t ignore - strategic actions

• Create own patent portfolio - takes time
• Buy patents - quick but good patents are ex...
Don’t ignore - strategic actions

• Create own patent portfolio - takes time
• Buy patents - quick but good patents are ex...
Don’t ignore - strategic actions

• Create own patent portfolio - takes time
• Buy patents - quick but good patents are ex...
Patent landscape
Patent landscape
•

Who is doing it?

-

A start-up
An established industry player
An investor
Patent landscape
•

Who is doing it?

•

A start-up
An established industry player
An investor

What will it be used for?
...
Patent landscape
•

Who is doing it?

•

An established industry player
An investor

What will it be used for?

•

A start...
General Patent Landscape

• ”10,000 m overview” (or lower)
• Trends
• Major patent holders
• Key patents
• Areas of high/l...
Patent landscape
Establish a view based on

-

IPC class
Key words
Assignees (eg. Competitors)
Inventors
Time/Trend
Countr...
Example of Patent landscape

Key word: Chain saw
Example of Patent landscape
Chain&saw&Applica-ons&
600"
500"
400"
300"
200"

Key word: Chain saw
100"
0"
1994" 1995" 1996"...
Example of Patent landscape

Key word: Chain saw
Example of Patent landscape

Key word: Chain saw
Example of Patent landscape
Infringement - what do I do?
Infringement - what do I do?
• Patent vs. application
Infringement - what do I do?
• Patent vs. application
• Validity (here: fee paid)
Infringement - what do I do?
• Patent vs. application
• Validity (here: fee paid)
• Ignore
Infringement - what do I do?
• Patent vs. application
• Validity (here: fee paid)
• Ignore
• Design around
Infringement - what do I do?
• Patent vs. application
• Validity (here: fee paid)
• Ignore
• Design around
• Business solu...
Infringement - what do I do?
• Patent vs. application
• Validity (here: fee paid)
• Ignore
• Design around
• Business solu...
Infringement - what do I do?
• Patent vs. application
• Validity (here: fee paid)
• Ignore
• Design around
• Business solu...
Who pays whom?
Your
patents

Your
sales

%

%

Their
sales

Their
patents

You need patents that read on competitors’s pro...
Per Wendin
per.wendin@kapea.se
www.kapea.se
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Due diligence and the analyses og the patent landscape

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Due diligence and the analyses og the patent landscape

  1. 1. Due Diligence and the analyses of the patent landscape Per Wendin - Kapea
  2. 2. Agenda • Risks of entering new product or geographical markets • Analyses of own patent portfolio and the patent landscape • Ways of remedying risk
  3. 3. Infringement
  4. 4. Infringement • A party (other than the patentee or licensee of the patentee) that manufactures, imports, uses, sells, or offers for sale patented technology without permission/license from the patentee, during the term of the patent and within the country that issued the patent, is considered to infringe the patent.
  5. 5. Infringement • A party (other than the patentee or licensee of the patentee) that manufactures, imports, uses, sells, or offers for sale patented technology without permission/license from the patentee, during the term of the patent and within the country that issued the patent, is considered to infringe the patent. • The infringing party's product or method falls within one or more of the claims. Test: Reading a claim onto the technology (claim chart), see next slide.
  6. 6. Infringement • A party (other than the patentee or licensee of the patentee) that manufactures, imports, uses, sells, or offers for sale patented technology without permission/license from the patentee, during the term of the patent and within the country that issued the patent, is considered to infringe the patent. • The infringing party's product or method falls within one or more of the claims. Test: Reading a claim onto the technology (claim chart), see next slide. • Direct vs indirect infringement vs contributory infringement etc.
  7. 7. Example of claim chart
  8. 8. Global IP overview Source: WIPO Statistics Database, October 2012
  9. 9. Global IP overview Source: WIPO Statistics Database, October 2012
  10. 10. Patent applications Source: WIPO Statistics Database, October 2012
  11. 11. Patent families Source: WIPO Statistics Database, October 2012
  12. 12. Patents granted Source: WIPO Statistics Database, October 2012
  13. 13. Patents in force 7.3 million patents in force and 5.17 million pending applications in 2010 Source: WIPO Statistics Database, October 2012
  14. 14. Patents - geographical distribution Japan Internet China
  15. 15. Patents - technology (2011) ICT ∼50% Source: Thomson Reuters 2012
  16. 16. Number of US lawsuits Source: US Government Accountability Office GAO, Aug 2013
  17. 17. Number of US lawsuits Source: US Government Accountability Office GAO, Aug 2013
  18. 18. Number of defendants in US litigations Source: US Government Accountability Office GAO, Aug 2013
  19. 19. Sued by whom? Source: US Government Accountability Office GAO, Aug 2013
  20. 20. Not cheap... For a claim that could be worth less than a $1 million, median legal costs are $650,000. When $1 million to $25 million is considered "at risk," total litigation costs can hit $2.5 million. For a claim over $25 million, median legal costs are $5 million. Source: American Intellectual Property Law Association 2011
  21. 21. Damages Source: PWC 2013
  22. 22. Damages Source: PWC 2013
  23. 23. Distribution of cases Source: PWC 2013
  24. 24. What can/should one do?
  25. 25. Options Ignore Don’t Ignore Wait and see Be proactive Solve problem as they come Strategic actions
  26. 26. Don’t ignore - strategic actions
  27. 27. Don’t ignore - strategic actions • Create own patent portfolio - takes time
  28. 28. Don’t ignore - strategic actions • Create own patent portfolio - takes time • Buy patents - quick but good patents are expensive
  29. 29. Don’t ignore - strategic actions • Create own patent portfolio - takes time • Buy patents - quick but good patents are expensive • Buy insurance - cost will reflect risk
  30. 30. Don’t ignore - strategic actions • Create own patent portfolio - takes time • Buy patents - quick but good patents are expensive • Buy insurance - cost will reflect risk • Join patent pool - somewhat expensive
  31. 31. Patent landscape
  32. 32. Patent landscape • Who is doing it? - A start-up An established industry player An investor
  33. 33. Patent landscape • Who is doing it? • A start-up An established industry player An investor What will it be used for? - General patent landscaping (e.g. management presentation) Cross-license agreement Law suit/nullification
  34. 34. Patent landscape • Who is doing it? • An established industry player An investor What will it be used for? • A start-up General patent landscaping (e.g. management presentation) Cross-license agreement Law suit/nullification How much time/money am I prepared to pay? (50%-75%-95%) - Internal/external
  35. 35. General Patent Landscape • ”10,000 m overview” (or lower) • Trends • Major patent holders • Key patents • Areas of high/low patenting
  36. 36. Patent landscape Establish a view based on - IPC class Key words Assignees (eg. Competitors) Inventors Time/Trend Countries Legal status
  37. 37. Example of Patent landscape Key word: Chain saw
  38. 38. Example of Patent landscape Chain&saw&Applica-ons& 600" 500" 400" 300" 200" Key word: Chain saw 100" 0" 1994" 1995" 1996" 1997" 1998" 1999" 2000" 2001" 2002" 2003" 2004" 2005" 2006" 2007" 2008" 2009" 2010" 2011" 2012" 2013"
  39. 39. Example of Patent landscape Key word: Chain saw
  40. 40. Example of Patent landscape Key word: Chain saw
  41. 41. Example of Patent landscape
  42. 42. Infringement - what do I do?
  43. 43. Infringement - what do I do? • Patent vs. application
  44. 44. Infringement - what do I do? • Patent vs. application • Validity (here: fee paid)
  45. 45. Infringement - what do I do? • Patent vs. application • Validity (here: fee paid) • Ignore
  46. 46. Infringement - what do I do? • Patent vs. application • Validity (here: fee paid) • Ignore • Design around
  47. 47. Infringement - what do I do? • Patent vs. application • Validity (here: fee paid) • Ignore • Design around • Business solution: Cross-license/take license
  48. 48. Infringement - what do I do? • Patent vs. application • Validity (here: fee paid) • Ignore • Design around • Business solution: Cross-license/take license • Legal solution: Find prior art and invalidate
  49. 49. Infringement - what do I do? • Patent vs. application • Validity (here: fee paid) • Ignore • Design around • Business solution: Cross-license/take license • Legal solution: Find prior art and invalidate • Withdraw product from market
  50. 50. Who pays whom? Your patents Your sales % % Their sales Their patents You need patents that read on competitors’s products - not your products.
  51. 51. Per Wendin per.wendin@kapea.se www.kapea.se
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