1. Segment 1 Making Patents Work for Strategic Business Advantage Presentation at KAIST October 2010
Bruce D. Sunstein
Sunstein Kann Murphy & Timbers LLP
Boston
©2010 Sunstein Kann Murphy & Timbers LLP

2. Archimedes:
“If you give me a lever of sufficient length and a fulcrum in the right place, I can move the world.”

3. Was Archimedes a Patent Lawyer?
“If you give me a lever of sufficient length and a fulcrum in the right place, I can move the world.”

4. Knowing where to apply the leverage of patents—
is critical to successful patent portfolio building
cannot be done without
awareness of business goals and
knowledge of the competitive landscape

5. Patent Leverage

6. Our setting: Our company has a growing portfolio of technology
With pending and issued patents
How do we know
What to file?
When to file?
When to license?

7. We should develop a patent portfolio on purpose!
Not based on accident
Not based on blind guessing
Instead, based on a planned strategy, aimed at supporting defined business objectives

8. How to develop a patent portfolio on purpose
Develop patent and business strategies that are aligned with each other, and
Make the patent and business strategies appropriate to the competitive environment

9. Making the patent strategy fit business strategy
Patent strategy must be aimed to protect existing and potential markets of the company
Patent strategy and business strategy must inform each other
Existing and potential markets that can be protected may depend on how well the company can develop technology in a particular area

10. What will the business look like five years from now?
An application filed today defines what protection the business has five years from now
What products and processes will the business be selling (and using)?
What products and processes can we expect the competition to be selling and using?
The answers to these questions go to the heart of the company’s business plan

11. What technology should we target to get our new products and services to market?
The targeted technology defines our patent filing strategy
We craft a filing strategy to cover our planned products and services as well as potential work-arounds by competitors

12. Patent filing strategy can inform the business plan
Steer product development in directions that are ripe for patenting and technologically feasible
Coordinate product development and introductions with patent filings

13. Patent strategy and business strategy can inform one another
But only when the masterminds of each meet with one another
Required are regular meetings of patent counsel and general counsel with heads of business development, marketing, and technology development

14. IP Portfolio Meetings Use a patent portfolio listing
Place new inventions on it, and indicate timing for filing
Place existing filings on it, with filing data, pertinent product lines, and status
Review and update the listing in meetings, so the listing also becomes an agenda
Have patent counsel update the listing between meetings

15. IP Portfolio Meetings (cont’d)
Items on the portfolio listing can be adjusted in relation to the business strategy
The business strategy can be adjusted in relation to items on the portfolio listing
The adjustments must take into account competition, developments in the market, the technology, legal proceedings involving the portfolio and the company, and the budget

16. Patent Licensing and Litigation
Can be addressed in the IP Portfolio meetings
Licensing-in may be used expand the reach of the company’s portfolio, and may be needed for clearance purposes
Licensing-out, a potential source of revenue from the portfolio
Litigation, both patent assertion and defense, can be evaluated in the business and technology context

17. Strategic planning considerations: I

18. Strategic planning considerations: II

19. Strategic planning considerations: III

20. Making your patent strategy deal with the competition
Learn what the competition is doing
Develop an integrated view of the competition and the prior art
Use the integrated view to inform the patent strategy

21. Learn about the competition
SEC filings (esp. Form10-K): EDGAR filings on SEC website and e.g. (also Lexis, Westlaw)
Competitor web sites & WWW generally
Newspapers, trade journals
Licensing authorities; e.g., FDA Orange Book,

22. Learn about the competition— Patent and Technology Searching
(EPO website)
Dialog ( STN database of American Chemical Society ( Micropatent ( NIH: National Center for Biotechnology Information (

23. Making your patent strategy deal with the competition
Learn what the competition is doing √
Develop an integrated view of the competition and the prior art
Use the integrated view to inform the patent strategy

24. Developing an integrated view
Patent mapping can help
Example: IPVision ( and
Specific map: base patent to Cipro® (ciprofloxacin) of Bayer Aktiengesellschaft
Found in the Orange book, 4,670,444

25. The Patent Landscape Map Shows the Patent Landscape

26. The Patent Landscape Map Shows the Patent Landscape
Patent Time Scale

27. Patent Time Scale

28. The Patent Landscape Map Shows the Patent Landscape
Starting Patent

29. The Starting Patent

30. The Starting Patent
Citation Lines

31. The Patent Landscape Map Shows the Patent Landscape
Each patent
to left of yellow starting patent is cited prior art

32. The Patent Landscape Map Shows the Patent Landscape
Each patent to right of the yellow starting patent cites the starting patent as prior art

33. The Patent Landscape Map Shows the Patent Landscape
Each blue tail to the left of each patent box indicates when the application for the patent was filed

34. The Patent Landscape Map Shows the Patent Landscape
The map colors the patent boxes according to the name of the owner (assignee) of the patent

35. Patent Owners (Assignees)

36. The Patent Landscape Map Shows the Patent Landscape
The map also lists all owners of the patents on the map

37. All patent owners (assignees and co-assignees)

38. The Patent Landscape Map Shows the Patent Landscape
The map lists inventors shown on the patents in order of frequency of appearance

39. The Inventors

40. The Patent Landscape Map Shows the Patent Landscape
The map lists classifications into which the mapped patents have been placed by the USPTO

41. Classifications into which the mapped patents have been placed by the USPTO

42. The Patent Landscape Map Shows the Patent Landscape
Who (patent owners, inventors) obtained patent coverage
When they filed
When they obtained patent coverage
But not a substitute for reading!
Data can be developed manually, too

43. The Patent Landscape Map shows particular things in relation to the starting patent(s):
Patents cited as prior art to the starting patent(s)—located to the left of the yellow starting patent

44. The Patent Landscape Map Shows the Patent Landscape
Each patent
to left of yellow starting patent is cited prior art

45. The Patent Landscape Map shows particular things in relation to the starting patent(s):
Patents citing the starting patent(s) as prior art—located to the right of the yellow starting patent

46. The Patent Landscape Map Shows the Patent Landscape
Each patent to right of the yellow starting patent cites the starting patent as prior art

47. The Patent Landscape Map shows particular things in relation to the starting patent(s):
Patents cited as prior art to the starting patent(s)—located to the left of the yellow starting patent
Patents citing the starting patent(s) as prior art—located to the right of the yellow starting patent

48. The Patent Landscape Map shows particular things in relation to the starting patent(s)
Patents cited as prior art to the starting patent(s)—located to the left of the yellow starting patent
Patents citing the starting patent(s) as prior art—located to the right of the yellow starting patent
This map often serves as an excellent introduction to the subject area, and can give a feeling for the scope of the starting patents based on patents citing them and cited by them.

49. The Co-Citation Map Same starting patent
Find all patents (“forward references”) that cite this patent
Find all references cited by the forward references
Some of these might be pertinent prior art, particularly if cited by a number of forward references

50. Map 2A
Starting patent

51. One patent in the map cites much of the prior art to the starting patent and a lot more as well

52. What patent is this?

53. Patent 6261601 Assigned to Ranbaxy Laboratories Limited
Licensed in by Bayer
Indian publication Economic Times (August 15, 2002)

54. Patent mapping example 2: 3D imaging
You want to learn about the state of the art relating to 3D imaging without special glasses
You perform a search in the USPTO database for “autostereoscopic display”
You get 331 patents

55. USPTO search results: 331 patents

56. Patent mapping example 2: 3D imaging
What are you going to do with 331 patents?
You do not want to look at all of these now, so you select the most recent 50 of them
With those 50 you access IPVision on the web where you have an account and put them on a patent map

57. Patent mapping example 2: 3D imaging
In the patent map, lines connect any patent that cites another patent
When you have selected patents and put them on a map with these lines, you have what IPVision calls an “interconnection map”

58. Patent interconnection map for 50 3D imaging patents

59. The map shows 10 patents to Philips NV, 3 to Philips US, 6 to Samsung, etc.

60. Each patent box on the map (and on a pdf that can be generated from it) is live, and can give me patent information
Mouse click on a box
accesses that patent’s
text, images, history,
patent family

61. I can click to select patent information of interest for each patent on the map

62. Patent mapping example 2: 3D imaging
I do not have to stop with an interconnection map
I can look forward and backwards as well:
Patents that cite these patents
Patents that are cited by these patents
(If map both forward and backwards citations, I have a landscape map, like our first example)

63. Patent mapping example 2: 3D imaging
But we started with recent patents, and looking for forward citations may not yield much. So let’s look only for backwards citations
For example, 47 of the recent patents and 63 recent patents cited by these patents

64. Patent map of 47 recent patents relating to “autostereoscopic display” and 63 recent prior art references cited by them

65. Of these 114 autostereoscopic display patents, who are the major patent owners?

66. I can find and click on the blue boxes to read the patents owned by Samsung

67. Licensing Opportunity Analysis Map for Company A
Company A’s
Patents
Company 3

68. Uses of patent maps To assess quickly a large patent portfolio
To understand relative patent positions of a number of companies in a technological area of interest
To identify prior art that might be invalidating

69. So when might I use patent maps?
Evaluation of one or more competitors
In relation to developing and managing my own company’s portfolio and product development
In relation to defensive strategies for my company
Evaluation of a company targeted for acquisition
Evaluation of prior art before filing a new patent application
Finding and evaluating patents to be licensed in and identifying companies to take licenses out
Defending against patents asserted in negotiations or litigation

70. Making your patent strategy deal with the competition
Learn what the competition is doing √
Develop an integrated view of the competition and the prior art √
Use the integrated view to inform the patent strategy

71. Using the integrated view to inform the patent strategy
Must reflect the technical and market position and goals of the company
Use regular, joint meetings to tune the IP Portfolio:
Patent counsel
General Counsel
Marketing head
Technology head
Business development head

72. IP Strategy Sessions Share information and insights
Develop and refine goals
Review position of company in relation to competition and company goals
Agree on filings and budget consistent with these goals and the competitive context

73. Your patent strategy serves your business strategy and provides business leverage
You know what the competition is doing
You have an integrated view of the competition and the prior art
The integrated view informs the patent strategy and the business strategy

74. Thank you.