ARE THERE HALLMARKS OF IMPORTANT PATENTS? SCIENTIFIC DONALD WALTER NOVEMBER 11, 2008

2 WHAT IS AN IMPORTANT PATENT? One or more of the following; Commercially important –Patents that protect an important invention –Patents that block a competitor from practicing a technology Technological breakthroughs –Patents that disclose brand new technology

3 HOW DO YOU RECOGNIZE AN IMPORTANT PATENT? Patent markings on the product In the pharmaceutical area, patents that protect drugs are listed in the Orange Book ( Patent has been maintained & not been allowed to expire Patent life has been extended (e.g. Supplementary Protection Certificates) Patent family size vs. very selective country coverage (in context!) Mentioned in Company reports / web-sites Licensed to other companies (i.e. someone has been willing to pay money or future royalties to get access to it) –(e.g. the PDL (Queen) patents licensed to everyone who wants to produce an IZUMAB product) For technological importance, cited by large numbers of later patents (controversial) If it has been litigated (e.g. West publishing, LitAlert ® db)

4 TEST CASES; FINDING IMPORTANT PATENTS, AND SEE WHAT PROPERTIES THEY MAY HAVE IN COMMON

5 FIND THE MOST IMPORTANT OF THESE DRUGS Find those drugs with sales >$1bn

6 FIND THE PATENTS NOS. FOR THOSE DRUGS FROM THE US FOOD AND DRUG ADMINISTRATION ORANGE BOOK

7 CONSIDER, FOR EXAMPLE THE VALSARTAN PATENT FROM THE PREVIOUS SLIDE

8 IT WAS MATCHED WITH PATENTS OF “ROUTINE” IMPORTANCE

9 FEATURES WERE MATCHED AGAINST “ROUTINELY” IMPORTANT PATENT

HOW DO THE VERY IMPORTANT PATENT COMPARE TO THE “ROUTINELY” IMPORTANT PATENTS?

11 ARE THE FAMILIES OF VERY IMPORTANT PATENTS GENERALLY BIGGER THAN ROUTINELY IMPORTANT PATENTS? The number of patent publications pursued may be proportional to its importance –If the importance of an invention drops, the number of jurisdictions in which protection is required may drop

12 DWPI PATENT FAMILY SIZE Min = minimum Max = maximum Avg = Average ESD = Estimated standard deviation TTEST = The probability associated with a Student's t-Test. Used to determine whether two samples are likely to have come from the same two underlying populations that have the same mean.

13 A BETTER INDICATOR OF BREADTH OF COVERAGE; NUMBER OF COUNTRIES The number of countries in a patent family is calculated by summing the number of countries represented by the documents listed in the family, including the designated states in EP and PCT (WO) documents EP and PCT are not themselves counted as countries

14 COUNTRY COVERAGE

15 GRANTED PATENTS

16 HOW ABOUT THE SIZE OF A CLAIM? Theory; Smaller claims are broader, and therefore more comprehensive –It takes more words to describe a fundamental invention (“a chair”) than to describe the narrower embodiments with certain unexpected advantages (“a chair made from dilithium crystals and having left-handed wings”)

17 OUR VALSARTAN PATENT Claim was copied and pasted into Microsoft ® Office Word, which counted the words

18 ESTIMATED NUMBER OF WORDS IN CLAIM 1

19

20 IF YOU HAVE A TRULY NOVEL INVENTION, THERE MAY NOT BE AN INDEXING TERM TO DESCRIBE IT For example, if there is no IPC for “chairs made with dilithium crystals”, then the patent is likely to get a generic “chair” IPC Count the number of IPCs at the group level (ANNA-NNNN/00) from patent offices that should assign them to the subgroup level (ANNA ‑ NNNN/NN)

21 GROUP LEVEL, INVENTIVE IPCs FROM ADVANCED IPC POs (DWPI RECORD)

22 MANUAL CODES; GENERIC? (DWPI RECORD)

23 GENERIC MARKUSH STRUCTURE? Out of 30 test patents

24 PATENT CITATIONS Presumably, if a whole technology rests on a patent (or a set of a few patents), later patents should cite earlier patents This is a controversial area –Rules for citing in patents are different than rules for citing in the technical literature –Sometimes a patent is cited frequently because it really is the basis for a later technology –Sometimes a patent is cited frequently because it is an examiner’s favorite or is handy It is easy to look at limited data – US patents citing US patents. But is it correct? Is it indicative? It is also easy to look at more sophisticated data – patent family member citing patent family member – possibly a member from a different patent office. But is it indicative?

25 SIMPLE ANALYSIS – US CASE CITING US CASE

26 PATENT CITATION INDEX* * Formerly Derwent Patent Citation Index

27 CONCLUSIONS I tested the notion that you could tell if a patent is important by taking a set of very important patents, and comparing certain features to a set of matched routinely important patents In this set, the very important patents had –Significantly larger DWPI patent family size, whether including published applications or –only counting granted patents; –Calculating the country coverage for granted patents; or –Significantly larger number of Derwent family-to-family citations accumulated In this set, there was no significant difference between the test sets and control set in the –Indexing (IPCs or Derwent Manual Codes), –Claim size or –US-to-US citations accumulated

28 SPECULATION The importance of a patent is proven over time –E.g., There are lots of drugs patented, but many fewer that make it to clinical trials and even fewer that make it to pharmacopeia shelves Most of the traits examined are created when the patent is written, published or indexed, long before the invention is proven worthwhile The importance of a patent depends on many commercial factors unrelated to how patents are written or where they are applied for

29 THANKS TO MANY FRIENDS … Gez Cross Ron Kaminecki Georg Richter Peter Steele Bob Stembridge Abraham Karkowsky Adrian Walter-Ginzburg

30 AND THANK YOU!

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