Due diligence and the analyses og the patent landscape
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This presentation was given on 27th November 2013 in Stockholm.
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Due diligence and the analyses og the patent landscape
- 1. Due Diligence and the analyses of the patent landscape Per Wendin - Kapea
- 2. Agenda • Risks of entering new product or geographical markets • Analyses of own patent portfolio and the patent landscape • Ways of remedying risk
- 3. Infringement
- 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. 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. 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. Example of claim chart
- 8. Global IP overview Source: WIPO Statistics Database, October 2012
- 9. Global IP overview Source: WIPO Statistics Database, October 2012
- 10. Patent applications Source: WIPO Statistics Database, October 2012
- 11. Patent families Source: WIPO Statistics Database, October 2012
- 12. Patents granted Source: WIPO Statistics Database, October 2012
- 13. Patents in force 7.3 million patents in force and 5.17 million pending applications in 2010 Source: WIPO Statistics Database, October 2012
- 15. Patents - technology (2011) ICT ∼50% Source: Thomson Reuters 2012
- 16. Number of US lawsuits Source: US Government Accountability Office GAO, Aug 2013
- 17. Number of US lawsuits Source: US Government Accountability Office GAO, Aug 2013
- 18. Number of defendants in US litigations Source: US Government Accountability Office GAO, Aug 2013
- 19. Sued by whom? Source: US Government Accountability Office GAO, Aug 2013
- 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
- 23. Distribution of cases Source: PWC 2013
- 24. What can/should one do?
- 25. Options Ignore Don’t Ignore Wait and see Be proactive Solve problem as they come Strategic actions
- 26. Don’t ignore - strategic actions
- 27. Don’t ignore - strategic actions • Create own patent portfolio - takes time
- 28. Don’t ignore - strategic actions • Create own patent portfolio - takes time • Buy patents - quick but good patents are expensive
- 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. 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. Patent landscape
- 32. Patent landscape • Who is doing it? - A start-up An established industry player An investor
- 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. 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. General Patent Landscape • ”10,000 m overview” (or lower) • Trends • Major patent holders • Key patents • Areas of high/low patenting
- 36. Patent landscape Establish a view based on - IPC class Key words Assignees (eg. Competitors) Inventors Time/Trend Countries Legal status
- 37. Example of Patent landscape Key word: Chain saw
- 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. Example of Patent landscape Key word: Chain saw
- 40. Example of Patent landscape Key word: Chain saw
- 41. Example of Patent landscape
- 42. Infringement - what do I do?
- 43. Infringement - what do I do? • Patent vs. application
- 44. Infringement - what do I do? • Patent vs. application • Validity (here: fee paid)
- 45. Infringement - what do I do? • Patent vs. application • Validity (here: fee paid) • Ignore
- 46. Infringement - what do I do? • Patent vs. application • Validity (here: fee paid) • Ignore • Design around
- 47. Infringement - what do I do? • Patent vs. application • Validity (here: fee paid) • Ignore • Design around • Business solution: Cross-license/take license
- 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. 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. Who pays whom? Your patents Your sales % % Their sales Their patents You need patents that read on competitors’s products - not your products.