Patent Intelligence Needs

• Author: Austen Zuege
• Pages: 101-133

3

Patent Intelligence

Needs

This chapter will help you learn:

• How to determine who should be responsible for keeping abreast

of intellectual property (IP) issues

• How an understanding of the industry can aid in developing an IP

strategy

• How an understanding of business goals can aid in developing an IP

strategy

• The different types of patent searches, including a freedom-to-

operate (FTO) study

• How to budget for an FTO study

• When to perform an FTO study yourself or hire an outside firm

3.1 Responsibility

Because IP involves complex topics intertwined with many facets of

law and business, it is important to determine who is responsible for

recognizing and handling IP issues before they arise. In a large corpo-

ration, this determination becomes difficult because such issues may

involve many departments within the company. In a small business,

the responsibility to keep abreast of IP issues, and solve issues that

arise, lies with one or a select number of individuals who must decide

how to address these issues, even if their primary expertise is not in

IP. In either large or small businesses, there remain questions about

either handling a problem in-house or looking to others, such as an

outside patent attorney, for help.

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102 Patent Freedom to Operate Searches, Opinions, Techniques, and Studies

Although there is no wrong approach to determining which

department or personnel should be responsible, some departments

or personnel are better suited for recognizing and solving problems

regarding IP. A legal department may be best suited because it is likely

responsible for defending against IP lawsuits and for the offensive use

of the company’s IP through the sending of demand letters, negotiat-

ing licenses, and bringing lawsuits for infringement or other claims.

The legal department may also be well-suited for keeping up-to-date

with newly published patent applications and issued patents and

conveying that information to the relevant scientists and engineers,

although if the legal department is small or lacks IP specialists this

task might instead fall to engineering/scientific personnel. If the

legal department includes one or a number of IP specialists, the legal

department is probably the best suited to handle most IP issues. How-

ever, many companies do not include an IP specialist on staff.

The marketing and sales department is another option because

it will be most aware if the company is losing sales and revenue to

competitors who are copying products and services by misappro-

priating a company’s IP. Also, the marketing and sales department

may have the most direct contact with actual or potential customers

who can offer useful information on such matters. Additionally, the

marketing and sales department may be most affected if the company

faces an injunction forbidding the sale of a product or service under

its responsibility because of patent issues. The research and devel-

opment (R&D) department may also be a likely choice. Because the

R&D department is tasked with developing new technology, it may

be the most knowledgeable and in the best position to know and ana-

lyze what competitors are doing from a technical perspective as well

as to grasp the general landscape of the relevant technological field

(i.e., the state of the art). Also, the R&D department has the techno-

logical background needed to evaluate aspects of a third-party patent

application or issued patent. This background is something that most

departments do not commonly possess—for instance, salespeople

often do not know or understand in detail the patented technology

behind products they sell. The responsibility for keeping abreast of IP

could also reside with the company’s leadership because they are the

ones who decide whether to expand into another technology field or

develop a new product or service, although corporate executives may

have the most demands on their time and therefore are able to devote

only minimal time to dealing with the company’s IP issues.

While IP (i.e., patent) concerns can be the responsibility of any

department, the most comprehensive approach is to share responsi-

bility between many (or all) departments. Patent information should

ideally be communicated between all major departments: the legal

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Chapter 3: Patent Intelligence Needs 103

department should communicate relevant patent applications and

issued patents to the R&D department, educate other departments on

what to look for, and explain why patents (and other IP) are import-

ant; the marketing and sales department should communicate the

discovery of copied products or services to the legal department; the

R&D department should communicate knowledge of relevant tech-

nology to the legal department, identify new inventions, and identify

infringing aspects of competitor products; and all departments should

communicate their knowledge to the company’s leadership so those

leaders can make informed decisions. Communication can be facili-

tated by holding regular meetings between the heads of each depart-

ment or creating a new position within the company, such as an IP

liaison, who is tasked with bridging the gaps between departments.

Such liaisons should be knowledgeable in both legal and technolog-

ical areas, and can be expected to maintain regular R&D meetings

so that the burden of identifying relevant IP issues falls more on the

liaisons than on other departments. By utilizing IP liaisons, engineers

and scientists focused on R&D activities are not pulled in multiple

directions or expected to retrace their steps to try to explain new inno-

vations to legal staff, creating risks that important aspects are forgot-

ten or simply not passed along. This approach creates a culture within

the company in which IP is taken into consideration at every step so

as to ensure that nothing falls through the cracks.

3.2 Understanding the Industry

Knowing the industry in which a company operates is the first step

to determining how competitors’ patent portfolios influence the

company and how its patents can be relied upon and developed to

increase the company’s position within that industry. If the company

is involved in a variety of different industries/technology fields, each

one should be evaluated.

3.2.1 What Is the Patent Landscape within the Industry?

Knowing the landscape of the industry includes having a grasp on the

number of competitors/participants in the market and whether those

participants are constantly changing (i.e., new participants are continu-

ously entering or exiting the industry). When there are only a few com-

petitors in the industry, those competitors may be more aggressive in

trying to block new entrants into the industry and more willing to act

to maintain the status quo. If there are a large number of competitors,

current participants may be less willing (or able) to block new entrants

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