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June 29, 2012

Patent Maps Provide a Key Tool for Strategic Decisions

Bangkok Post, Corporate Counsellor Column

Approximately half of all patented inventions are never commercially exploited. This can be attributed to the several difficulties faced by companies that rely heavily on research and innovation, particularly in devising strategic patent management schemes, and in identifying business opportunities.

Moreover, research-driven companies, such as those focusing on technology or medicine, must consider the legal aspect of patents and protect them in order to avoid intellectual property infringement—a serious issue in Thailand.

To ensure legal compliance while at the same time maximizing commercial value, companies now utilize Patent Maps, which provide a visual representation of information relevant to patent documents, as well as an intuitive element to the strategic decision-making process.

Essentially, companies focused on research and development must take the necessary steps to accurately gauge the current market and its technological demand, at the same as focusing on “White Space” fields (areas in which patents have not been created), in order to enhance continuous technological development while ensuring their innovation is patented and protected.

The general process begins with a careful study of the legal implications of the relevant legislation in the country. Subsequently, companies select a patent strategy aligned with their own research capabilities, which should include the following steps:

  • Assessing the range of their competitors’ technology
  • Analyzing the differences between the company’s technology and those belonging to its competitors
  • Selecting countries and/or markets of interest that are attractive targets in which to introduce the company’s technology

Usually, a specialist or researcher is required to carry out an assessment and analysis of the technology used by the competitor to minimize or eliminate any possibilities of infringement before deciding whether to launch the product into the market. When using a Patent Map, however, some of the more detailed procedural requirements can be made simpler and can assist in the process from technological R&D to legal necessities. Once a Patent Map is created in the correct form and with a rich representation of statistical data, the maturity of certain technologies and trends can be identified.

To begin with, R&D departments use a Patent Map to select themes for conducting their research and development, to pick out new ideas, and to gain a detailed understanding of the development of the competitors’ technology. By showing the areas where research activities are clustered (or scattered), the Patent Map also enables researchers to comprehend market needs and analyze patent information to minimize the risk of wasting investment funds on a fruitless idea.

Furthermore, intellectual property management departments of companies, research institutes, and universities can use a Patent Map in order to acquire strong and extensive exclusive rights. For example, when drafting claims, which typically involves making comparisons between the relevant invention and any relevant prior art, a Patent Map can be utilized to reveal the relationships existing between them.

Also, when assessing a patent for the purpose of filing a patent application, a Patent Map can be used to review and respond to an examiner’s notification, which cites the reasons for rejecting such application. The IP departments can thus use a Patent Map as an alternative to the otherwise unsophisticated traditional patent information searches to uncover the rights of other companies that may prevent the company from successfully obtaining a patent.

When evaluating patent applications, Patent Maps can even be used to reveal the overall standing of the relevant invention and the existence of other patents that could significantly influence the chances of successful registration of the patent in question. When monetizing a patent via a transaction, the Patent Map can be used to identify the company that is most likely to be willing to make the acquisition, and essentially, to guarantee the patentability of the patent to be offered.

For large businesses, counterfeit goods not only pose the problem of a reduction in sales of the legitimate rights holder, but they also heavily damage the reputation and the brand image of the company, and potentially their other product lines. Being vigilant in identifying IP infringers is generally not an easy task, but it can be facilitated by a Patent Map. They are effective in identifying competitors who develop products that are even likely to infringe the company’s patent, regardless of their intention.

Many companies face difficulties in respect of pursuing a management strategy that targets both overseas and domestic markets. A Patent Map can help a company formulate such a strategy, as it enables it to identify the status of global intellectual property networks, the status of new entrants, as well as the key needs in several local markets.

Each market will present different challenges and costs in terms of the prosecution of the patent application, the duration of protection, and the timeline for examinations and payment of annuity fees, among other issues.

Fundamentally, the information gleaned from utilizing a Patent Mapping tool is crucial when arriving at a final decision on which country a company should penetrate, the legal requirements and patentability of the prototype, and thus whether to pursue introducing the technology domestically or internationally, if at all.

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