Patent Intelligence Needs

AuthorAusten Zuege
Patent Intelligence
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
How an understanding of business goals can aid in developing an IP
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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