USE OF PATENT INFORMATION IN A
MAJOR MULTINATIONAL COMPANY
Ebe Ilmaier-Campi (NL)
Shell International
INTRODUCTION
Twenty Per Cent of All Research Results Have Been
Published Before
This statement is common knowledge, it is cited all the time, but unfortunately I
have not been able to find the original source. Even more unfortunately, in my
experience as Chief Patent Information Scientist in a major oil multinational, it is
a rather conservative statement. I fear reality is worse.
I have often heard the theory that researchers are more creative if they are not
hindered by knowledge of previous research. That is a fairy tale. Nowadays no
company can afford to ignore the information available in technical literature,
mainly in patent literature. No company can afford to ignore the tools needed to
transform this information into useful knowledge, knowledge required to keep a
leading edge in the race against one’s competitors.
It may be useful to review quickly the major uses made of technical information as
sources, operators, and distribution means vary depending on the use made:
·
Competitors' technology assessments
·
State-of-the-art at beginning of projects
·
Novelty assessment of company's inventions
·
Identification of possible infringement of third parties' rights
·
Assessment of the validity of third parties' rights which might interfere with the
business
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·
Identification of possible infringement of own patent rights by third parties.
COMPETITORS’ TECHNOLOGY ASSESSMENTS
Current technology provides a great help for company-wide, quick distribution of
information: all major companies nowadays make use of intranet technology for
instant updates and dissemination.
This technology has dramatically changed the way technical and non-technical
information is brought to the end-users. Even the end-user concept has changed –
in earlier times this term usually referred to the scientist in the research laboratory
who would make use of selected information that the information specialist
provided. Later, with the development of easier front-end tools for information
retrieval, the end-users became more independent and the information specialist
could dedicate more time to complex and specialised searches, while training the
end-users in the tools and techniques available for their daily operations. The
internet and intranet have changed so that end-users are more aware of information
and tend to use the internet themselves. They tend though, when it is available, to
use the intranet, where they have a greater chance of finding focused and relevant
information. Information specialists are still doing the highly specialised searches,
while setting up current awareness profiles and focused information on the intranet.
This technology has made possible the distribution of information to other departments than the traditional R&D outfits: mainly marketing and planning can greatly
benefit by the availability of fast updated information on competitors' technology
coupled to business and commercial information like balance sheets, management
data, mergers, takeovers and product fact sheets.
STATE-OF-THE-ART AT BEGINNING OF PROJECTS
When setting up major research projects, information on the state-of-the-art, that
is regularly updated during the project, is the typical information that can save an
enormous amount of research funding: a well done, comprehensive search, mainly
in the chemical and pharmaceutical industry, is indispensable for guiding research
effort in the right directions. Major companies can afford to employ dedicated
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information specialists, who are graduates in the relevant technical disciplines and
who have acquired a deep knowledge of the specialised databases which one should
search.
The trend to business globalisation in industry has seen the advent of ‘global’
research project teams, distributed in several locations. Results of state-of-the-art
searches and their updates can be loaded on a server or on the intranet where an
easy to use search engine can give access to the data.
NOVELTY ASSESSMENT OF COMPANY’S INVENTIONS
One should safely be able to assume, when a proper state-of-the-art assessment has
been made, that inventions made during the course of a project are new. This is, of
course, an ideal situation, but experience teaches that often a search conducted with
the specific purpose of establishing the novelty of the invention is still needed.
Moreover, the patent attorneys of a company often require further patentability
searches to be carried out, in order to define fully the technical field and be able to
claim as much as possible in the patent application they plan to write. Highly
specialised patent analysts will perform these types of searches, and unfortunately
not much has changed in the last couple of years in the methodology to be followed
in the attempt to find the most relevant documents. Complex specialised databases,
based on deep-coding, indexing, and the application of several different
classifications, need to be consulted.
A few years ago the first full-text patent databases appeared. Initially they were
received by experienced patent searchers with a good deal of scepticism but they
have demonstrated their usefulness, mainly in very specific cases. A typical one
could be the use of a specific product by its trade name in the examples of a patent
document. Naturally full-text databases of English documents are the most popular.
Full-text searching of EP documents, published in three different languages, are
already of a complexity that makes their full exploitation practically impossible. We
are still waiting for the powerful search engine that will allow a search to be
formulated in one language, automatically translates the statements and search
documents in several different ones, and finally reports the results in the language
requested by the searcher. It is not an impossible dream; the work carried out by
companies like Manning and Napier is very promising and we hope to see concrete
results in the foreseeable future.
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IDENTIFICATION OF POSSIBLE INFRINGEMENT OF THIRD
PARTIES’ RIGHTS
These studies are the nightmare and the delight of experienced patent searchers. The
consequences of failing to find relevant patents can cost millions of
dollars/pounds/euros. Products have to be taken out from the market, production
plants have to be closed until a settlement is reached or alternative processes are
implemented, costly and lengthy litigations are started.
But the challenge of having to find out really everything about a certain product or
process which may be relevant for an infringement assessment study compels the
experienced patent searcher to use his/her skills and knowledge in the most effective
way, and this is really rewarding in itself. No stone will be left unturned, and all
tools available will be used to come to a satisfactory study. Needless to say, only
patent literature will need to be studied.
ASSESSMENT OF THE VALIDITY OF THIRD PARTIES’ RIGHTS
WHICH MIGHT INTERFERE WITH THE BUSINESS
In the course of an infringement study one can likely come across granted, or close
to be granted, third parties’ patents which may cause trouble to the planned
projects/businesses. The easiest and cheapest way out is a proof that the patent in
question is invalid. A validity study is then carried out. A validity study is in
practice a patentability study, whereby the relevant documents have to be published
before a specific date, usually priority date of the patent. Relevant literature which
can be used against the patent is not easy to find. Usually the granted patent will
go through the searching and examination procedure of one or more patent offices.
Relevant documents which have already been found and cited, will still not be
deemed sufficient to invalidate the patent’s claim. Our patent searcher will have to
do better!
IDENTIFICATION OF POSSIBLE INFRINGEMENT OF OWN PATENT
RIGHTS BY THIRD PARTIES
When a company has been spending a substantial amount of money in creating
intellectual property rights, the least it can wish for is a good return on the
investments made – in this case exclusivity in the exploitation of the obtained
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rights. To be able to do that however, it needs to monitor third parties’ activities
and to be aware of possible infringements. This is one of the fields where the
internet has helped enormously. Competitors’ product data, brochures, general
information – all that is commonly called `grey literature', is plentifully present on
the internet. Practically all companies have a very informative internet site, and
often a quick search with any normal web search engine will give quite interesting
results. It is unlikely that expert patent analysts would be involved with these
studies; their skills are rare, and have to be used for patentability, infringements and
validity studies.
This analysis of technical information activities in a typical multinational, although
far from complete, has hopefully shown the current needs for specialised personnel
and the use of available tools. One factor has not been analysed – time. The
exponential growth of available technical information unfortunately has not been
parallelled by a similar growth in the efficiency of the tools used. This means that,
to be able to translate this information into useful knowledge, knowledge we
require to be innovative and competitive, we need more time and more resources
than in the past.
Small and medium enterprises have always been struggling to find these resources,
and currently major companies are undergoing more and more cutting exercises that
seriously endanger their ability to cope with their information requirements.
This is the common denominator factor for industry, regardless of size. This is
particularly true for the sophisticated type of information needed for patent studies,
like patentability, infringement, and validity assessment. Complex, high addedvalue databases are needed as much as in the past, but the market does not seem to
increase, and the cost in keeping up the quality of the data with an ever increasing
volume of data will have to be paid by a relatively static group of users. Expert staff
who can efficiently use a variety of complex information sources are expensive and
hard to get. The need for efficient tools which can minimise the time spent on a
search is higher than ever, and initiatives like the new STN-On-The-Web approach,
whereby a searcher (or an end-user) can perform an online search on the host, are
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very welcome. By clicking on the bibliographic data the searcher can access the full
text, which can be downloaded, accessed online, or ordered offline – and this for
millions of technical and patent literature references.
The concept of one-stop-shop and pay-as-you-go are very close to reality, and I
think we should stimulate these comprehensive approaches to information.
There is still much to do, and in this short time I have only been able to touch the
tip of the iceberg, but I hope I have been able to give you a general view of the
issues found in the use of patent literature in major industries.
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