Patents & Competitive
Intelligence
James L. Grant
GLIST – Global Legal Information Science Team
Pfizer Corporate Legal Patent Department
La Jolla, CA, 92037
Patents & Competitive
Intelligence - Overview
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Introduction
Value of Patents
Global Nature of Patent Filings
Patents as Unique Scientific and Legal
Documents
Patent CI cf Business CI
Discussions With Clients
Case Study –High Throughput Screening
Patents & Competitive
Intelligence
Making a Difference,
…One Patient At a Time
Patents & Competitive
Intelligence - Value
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It is estimated that upwards of $800 Million
is required to bring a drug from idea, to the
lab, through patent prosecution, drug
approval, and launch.
It is therefore intrinsic to the process to have
the best information possible to drive the
work forward at all stages along the drug
pipeline or for any product life cycle.
Showing value from research to revenue.
Patents & Competitive
Intelligence - Value
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“Triumphs and Trials in Tech Transfer”
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“As tech transfer offices sprouted, they became increasingly valuable to
their home universities. In some cases, the benefit to the university was
completely financial, such as the gene insertion patents that have made
more than $300 million for Columbia University. That money can be
funneled back into research, or into startup packages to lure prestigious
recruits to the institution”.
“At Wisconsin, we have this billion-dollar endowment that has been
generated entirely out of patents,” says Handelsman. “The quality of life in
science at UW is a lot better than at a lot of universities [because of that].” A
number of her students, for instance, have been supported by fellowships
offered through Wisconsin’s tech transfer arm”.
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“From Stigma to Street Cred: Tech Transfer Is Gaining Ground”
Genome Technology, March 2007, by Meredith Salisbury
Patents & Competitive
Intelligence - Value
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“Everything should be patented. On the other side of the coin are
scientists who believe that all new findings should be patented, and
argue that their tech transfer offices aren’t doing good work by not
pursuing patents on everything. In fact, says Soderstrom at Yale,
filing a patent is an expensive proposition and unless there’s a clear
indication that the university will recoup its legal expenses, the tech
transfer office won’t pursue the patent.
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In the US alone, he says, filing the patent and prosecuting it -“assuming that it’s fairly straightforward” -- “is somewhere between
$25,000 and $50,000,” he says. “If you decide to go international
with [the patent], start adding zeroes.”
“From Stigma to Street Cred: Tech Transfer Is Gaining Ground”
Genome Technology, March 2007, by Meredith Salisbury
•The largest number of patents granted is at the United States Patent Office, followed by Japan, the EPO, China and the Republic of Korea.
Patents & Competitive
Intelligence
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International Technology
Patents & Competitive
Intelligence – Unique Sources
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“The European Commission recently calculated
that 20bn pounds a year is wasted in duplicate
research. If a designer wishes to check whether an
idea is really new, he or she should begin with a
search of existing and publicly available patent
information – 80% of the technical information
contained in patents is not to be found anywhere
else.”
Packaging Week, Jan. 23, 1997, p. 17
Patents & Competitive
Intelligence
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“Thus in today's global competitive world there companies have
to be more alert to win the war, through competitive intelligence
using patent information.
Competitive intelligence (CI) is the process of monitoring the
competitive environment. CI enables senior managers in
companies of all sizes to make informed decisions about
everything from marketing, R&D, and investing tactics to longterm business strategies. Effective CI is a continuous process
involving the legal and ethical collection of information, analysis
that doesn't avoid unwelcome conclusions, and controlled
dissemination of actionable intelligence to decision makers.”
“The War of Patents Information and Competitive Intelligence”
Monday, December 18, 2006
by: Vinod Kumar Singh
Patents & Competitive
Intelligence
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Other uses for Patent Analysis and Mapping include:
Identifying emerging technologies and trends, including an analysis of the rate
of development of a technology
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Revealing gaps in a technology which could be new development opportunities
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Observing when a competitor abandons a technology
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Assessing the risk of infringement
(working with patent attorneys, this line added)
Monitoring competitors activities, including new players entering a market
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Detecting possible partnering opportunities
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The War of Patents Information and Competitive Intelligence
Monday, December 18, 2006
by: Vinod Kumar Singh
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Patents & Competitive
Intelligence
Traditional Business Intelligence (Thomson):
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Basic COMPANY INFORMATION, such as address, telephone number,
and company officials, and key financial data like 10-K reports.
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Company and industry news, including introduction of new products,
sales, increases in research and development spending.
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Analyst reports on companies, an industry, or a specific country.
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Detailed market research on specific industries or companies.
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Product information, such as new product launches.
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Information on mergers, acquisitions, alliances, and partnerships.
Patents & Competitive
Intelligence
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Intellectual Property
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Trademarks
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Copyrights
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Patents
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Trade Secrets
Patents & Competitive
Intelligence
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What is a patent?
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An official government document that grants to the
assignee (owner of the patent) a right to exclusivity in
making, using, selling and offering for sale the invention
for up to 20 years from the date of filing with the USPTO.
When there is more than one assignee, each has a nonexclusive right to the invention.
Patents may be licensed by the assignee to another
party.
To provide a clear definition of what is covered in a
patent, SPECIFICATION and CLAIMS are included in all
patents.
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Patents & Competitive
Intelligence
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What makes a patent unique?
USEFUL: Is the invention useful? (35 U.S.C. §101 Utility)
Does the invention fit into one of the proper
categories? (i.e. a composition of matter or process)
Will the invention work for its intended purpose?
 NEW: Is the invention new? (35 U.S.C. §102 –
Anticipation, prior art)
Has the invention been disclosed in its entirety by
another party prior to the date of invention?
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Patents & Competitive
Intelligence – FTO/FTP
Freedom To Operate/Practice
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Trade Secrets
Defensive Publications – Intentional Publication –
Public Domain
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Journals, Conferences, Technical Bulletins, IP.com, etc.
Ongoing Patent Prosecution Within IP Space
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Invention Review Committees – IP Portfolio Review
New Uses
Improvements
Licensing
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Exclusive
Non-exclusive
Patents & Competitive Intelligence –
Strategic Decisions Require an IP
Component
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IP Strategy
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Opportunities
Partners
Products
Patent Data/Patent Analysis
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High Level
Relevant
Business/Legal Decision
Financial
Acquisition / Licensing Targets
Players and Trends
Patents & Competitive Intelligence –
Fundamental Steps – Getting Started
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Meeting With Clients
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Key questions answered
Identification of key business goals
Subjects to address
Create a picture or story book of the process
Create by-in and agreement
Search in various categories
Analysis
High-level work product
Patents & Competitive Intelligence – Case
Study – High Throughput Screening (HTS)Robotics
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HTS
Patents & Competitive Intelligence – Case
Study – Search In Various Technologies
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Artificial Intelligence
Circuitry
Power
Design
Communication
Uses
Partners
CI
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HTS
Patents & Competitive Intelligence – Case
Study – Building A Report
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Individual Reports
Address Pertinent
Technology
Identify
Partner/Competitors
Identify “White Space”
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Unexplored technology
areas
Future IP
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HTS
Patents & Competitive Intelligence – Case
Study – Communicating Report(s) To
Business Managers / Attorneys
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Artificial
Intelligence
Circuitry
Power
Design,
etc.
HTS
Patents & Competitive Intelligence – Case Study – Key Concepts In
Title, Abstract, and Claims [(highthroughput or highthrough()put or
high()through()put or high()throughput)()(screen? or analys?)/ti,ab,cm]
DIALOG(R)File 349:(c) 2007
WIPO/Thomson. All rts. reserv.
01507871
GPCR EXPRESSING CELL LINES
AND ANTIBODIES
Claim
... of said recombinant cell.
42. The method of claim 38 wherein
said method employs a high
throughput screen for detecting
interaction of said test entity with
said fragment.
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HTS
Patents & Competitive Intelligence – Case
Study – Search of Inventors
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? HTS Inventors
Adding title to results...
HTS INVENTORS
------------RANK: S1/1-1037 Field: AU= File(s):
652,349
(Rank fields found in 1037 records -2793 unique terms)
RANK No. Items Term
-------- ----- ---1
16 BOUGUELERET LYDIE
2
15 MAHE EVE
3
14 CUSIN ISABELLE
4
14 NIKNEJAD ANNE
5
14 REFFAS SAMIA
6
11 EHRHARDT THOMAS
7
11 FREUND ANNETTE
8
11 RUBEN STEVEN M
9
10 ROSEN CRAIG A
10
10 SONNEWALD UWE
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HTS
Patents & Competitive Intelligence – Case
Study – Search of Assignees
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HTS ASSIGNEES
------------RANK: S1/1-1037 Field: PA= File(s):
652,349
(Rank fields found in 1037 records -2940 unique terms)
RANK No. Items Term
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24 BASF
AKTIENGESELLSCHAFT
2
24 THE REGENTS OF THE
UNIVERSITY OF CALIFORNIA
3
20 MERCK & CO INC
4
16 BOUGUELERET LYDIE
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15 GENEPROT INC
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15 MAHE EVE
7
14 CUSIN ISABELLE
8
14 NIKNEJAD ANNE
9
14 REFFAS SAMIA
10
12 HUMAN GENOME
SCIENCES INC
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HTS
Patents & Competitive Intelligence – Case
Study – Search In International Classes –
Technology Descriptors
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HTS IC
---------RANK: S1/1-1037 Field: IC=
File(s): 652,349
(Rank fields found in 1036 records -1030 unique terms)
RANK No. Items Term
-------- ----- ---1
199 C12Q-001/68
2
98 G01N-033/68
3
97 G01N-033/50
4
96 G01N-033/53
5
53 C12N-015/12
6
50 C12N-005/10
7
47 C12Q-001/00
8
42 B01J-019/00
9
42 G01N-033/543
10
41 C12N-015/63
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HTS
Patents & Competitive Intelligence – Case
Study – Technology Sectors of Interest
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DIALOG(R)File 351:Derwent WPI
(c) 2007 The Thomson Corporation. All rts. reserv.
Predicting likelihood of cells associated with pathophysiological
condition acquiring resistance to therapeutic agent, by inputting
values into model of growth response of cells with agent in
computer, obtaining output values
Original Titles:
HIGH THROUGHPUT SCREENING FOR ANTIMICROBIAL
DOSING REGIMENS...
DIALOG(R)File 351:Derwent WPI
(c) 2007 The Thomson Corporation. All rts. reserv.
Improved detection of mutation in a target sequence comprises
determining the nucleotide sequence of the amplified products
or fragments using high throughput sequencing
Original Titles:
HIGH THROUGHPUT SCREENING OF MUTAGENIZED
POPULATIONS...
DIALOG(R)File 351:Derwent WPI
(c) 2007 The Thomson Corporation. All rts. reserv.
0016538313
WPI ACC NO: 2007-254540/200725
Assessing platelet activation comprises stimulating platelets to
cause
activation of the platelets, capturing activated platelets in
preference to resting platelets, and detecting the captured
activated platelets
Original Titles:
METHOD FOR HIGH - THROUGHPUT SCREENING
HTS
Patents & Competitive Intelligence – Case
Study – Figures and Drawings
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WPIX COPYRIGHT 2007
THOMSON CORP on STN
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TI High throughput screening
device for combinatorial
chemistry, has switching system
causing selected membrane
electrode assembly to be
switched on into current
producing state in flow
channel during operation of
screening device
PI US 20060024551 A1 20060202
(200613)* EN 16[9]
PA (NUVA-N) NUVANT SYSTEMS
INC
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THE
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HTS
Patents & Competitive Intelligence – Case
Study – Figures and Drawings
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WPIX COPYRIGHT 2007
THOMSON CORP on STN
THE
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TI High throughput screening
device for combinatorial chemistry,
has switching system causing
selected membrane electrode
assembly to be switched on into
current producing state in flow
channel during operation of
screening device
PI US 20060024551 A1 20060202
(200613)* EN 16[9]
PA (NUVA-N) NUVANT SYSTEMS
INC
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HTS
Patents & Competitive Intelligence – Case
Study – “The Story Book”
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Tell a story from beginning
to end, from question to
series of answers
Document thoughts and
discussions
Each report should show
strength of position
Relevant patents from w/in
the company and outside
the company
Identify licensing
opportunities
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HTS
Patents & Competitive
Intelligence – All Technologies
Patents & Competitive
Intelligence – Key References
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Patents, Citations, and Innovations: A Window on the Knowledge Economy
This book demonstrates the usefulness of patents and citations data as a window on the process of
technological change and as a powerful tool for research on the economics of innovation.
by Adam B. Jaffe, Manuel Trajtenberg, and Paul M. Romer (2005)
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Creating and Managing a Patent Information Group in a Global Environment
Pages 136-139
by Donna Kaye Wilson