Leveraging patent databases to support United States market expansion

1. Patent searching and visualizations can provide valuable business intelligence and impact decision making when it comes to Intellectual Property (IP) strategy. Specifically, they can be a great tool to develop insights on strengths, weaknesses, opportunities, and threats.
2. To maximize value, any analysis should be actionable. Think about what business decision the analysis will be supporting and what information is required. Start with the end in mind. Where you want to go will guide how to maximize return-on-investment (ROI) and ensure that the analysis is suitable for use.
3. Patent publications only become public 18 months after filing. Prior to this, they will not be found irrespective of tool used. This uncertainty is a feature not a bug.  This allows innovators a lead time to continue developing their product in exchange for disclosure.  To manage this uncertainty, searches should be performed on an ongoing basis to capture newly published applications of interest.
4. There has been a democratization of access to information and an exponential amount of information is available. This has created an environment where free and commercial tools can thrive. Free tools are often great resources for establishing baseline information with their ability to deliver targeted results while using professional/commercial patent search tools can elevate the results through the complexity of search queries and analytics possible.
5. The United States Patent and Trademark Office (USPTO) provides resources to search United States (US) patents
6. When it comes to patent searching and extracting insight, the computer science adage “garbage in, garbage out” holds true. One must balance the risk of missing important IP through too narrow of focus with the risk of too large a data set through too broad of focus. Tailored intentional data sets with appropriate keywords and the right patent classifications are crucial to extracting value but often tricky to navigate. Engaging an expert to interpret and refine parameters can assist in extracting more meaningful results.
7. Business objectives that searching supports:
   • Landscape: what is the market like?
   • Patentability: can I protect my invention?
   • Competitor Profile: what are my competitors up to?
   • Freedom-to-Operate: do I infringe third-party rights?
8. A landscape search is an analysis on patents most relevant to the field. The goal is to get insight on the market.
   • To leverage information to support business and IP Strategy; landscape provides information on:
     • The players and their dynamic in the market (diversity of players, established unknown competitors, unknown new competitors in stealth mode, presence of non-practicing entities, and collaborations)
     • The global footprint of patent protection (where inventions are being developed and the foreign filing strategy of competitors)
     • How many patents have been litigated or opposed
   • To leverage information to support R&D and product development; landscape provides insights on:
     • What technologies are feasible and the advancements in the field
     • Is there patent protection that falls within Standards that you incorporate in your product
     • Whitespace opportunities by comparing your technology to what is known
     • Uncovering expired patents of interest upon which someone can innovate
     • Identifying potential partners or acquisitions
     • Within a business-to-business (B2B) context, identifying your clients’ issues could provide insight on solutions you can provide them
     • Which players have foundational technology
     • Early indications of third-party rights which may need to be navigated during product development to maintain freedom to operate
9. A patentability search focuses on the invention a company wishes to protect and seeks to extract a similar sample of relevant prior art to what a Patent Examiner might find. The primary goal is to be able to make an educated assessment on whether to move forward with the invention given what is uncovered.
   • An IP information expert will develop a search strategy based on a broad first claim. As patentability is not limited to disclosure in patent literature, a comprehensive search would include open literature as well.
   • If it is decided to move forward with the application, the patent agent uses the knowledge gleaned from the search to draft the broadest specification and claim set possible.
   • Extra insights that can be leveraged include guidance and competitive intelligence. Studying prior art can provide guidance on how to best draft your patent application. The results can also provide competitive intelligence on the players closest to your technology through patent assignees or authors/content creators of open literature.
   • Relevant prior art found in the search needs to be disclosed at filing in an information disclosure statement (IDS). This helps strengthen the patent since the examiner takes them into account during prosecution and often speeds and reduces the cost of prosecution.
10. A competitor search focuses on key competitors and their evolving patent portfolio. This type of search is useful to see where competitors are focusing R&D investments, who they are working with, what their foreign filing strategy is, etc.
    • Results of a competitor search may highlight pending applications that can be of potential risk if they issue. A patent watch can be used to see the prosecution development in the patent office. Based on that the company may take proactive actions by either pivoting product development or submitting relevant prior art to influence the course of prosecution and reduce risk.
11. A freedom to operate (FTO) is a legal opinion that assesses the risk of infringement for a product. It is often requested by boards, investors, or acquirers.
    • An FTO opinion will be provided by a law firm with the results of a freedom-to-operate search which focuses on patents where claims are focused on the innovation in the jurisdiction of choice.  As such, they are the most expensive type of search.
    • Maximum value is extracted when the product specifications are known (e.g., product launch or modification post launch) as any change to product invalidates the results.
    • The opinion is only valid based on what is public and granted at the time. It should be repeated to capture new applications filed in the 18 months before the search and have now published or newly granted claims.
    • An FTO provides no guarantee that a company will not be sued or that it will be successful during litigation.

    Example 1: Company A did a search on Competitor B’s patent and found a patent pending that company A has prior art on, they filed their art as a third party pre-issue submission at the PTO to be considered by the examiner before the patent issues.

Key considerations for Canadian companies:

• Although companies may be aware that willful infringement creates a circumstance where damages are increased, having a policy of willful blindness can cause infringement risk. Judge Gilstrap, E.D. Texas, stated: “A well-pled claim for willful blindness is sufficient to state a claim for willful infringement.”  Motiva Patents LLC v. HTC Corporation, E.D. Texas, 9:18-cv-00179 (Oct. 2019).
• Companies should manage who searches IP databases in their company and preferably let patent experts handle the search and review. Understanding the scope of protection of a patent or pending application requires expertise in patent law.
• There should be a strict policy about not writing down any comments, whether positive or negative, regarding third-party patents and the company’s patents. Written comments on IP can only be done under attorney-client privilege upon request.

According to Myriam Davidson, Director of Engagement at Stratford Intellectual Property, “Everyone can search, but not everyone can find…making sure you have the right data set is key. Starting with the end in mind will ensure that your efforts uncover the most useful information, resulting in maximum impact.”

Additional information:

• For information about IP protection in the US, please see the Canadian Intellectual Property Office’s publication on Doing business abroad: Protecting your IP in the United States
• For more material relating to the export of goods to the US, please see the Doing Business in the United States page
• For more information on going global with your IP, visit Canada.ca/export-ip