Global business leaders over the world are relying on patent Monitoring or watch to drive business-critical decision making.

Patent Monitoring or watch is a type of search and analysis wherein, patents or published applications or markets are regularly monitored to follow-up on inventions filed by third parties, or to track mergers and/or new product launches.

The search scope, in turn, may cover technology, ownership, legal status and market trends related to patents or publications in any geography or time frame.

Consequently, the outcome from the analysis is key information or insights that help companies estimate market prospects, track competitors’ products or aim for new customers and new market possibilities.

Why Monitoring is Important

The objective behind performing such search is to monitor competition, technology growth, R&D direction and/or due diligence before making commercial decisions.

As information is converted into patterns and predictions, there are numerous insights drawn and employed from the analyzed data to develop business models and solutions. A good number of strategies utilize monitoring of the techno-legal-commercial space for such models and solutions.

Monitoring can impact the following decisions:

• Firstly, it can impact the planning investments
• Secondly, it can affect the deciding buying, selling and licensing assets
• It can also influence the determining collaborators and legal representatives
• Lastly, planning fate of existing patent portfolios and possibilities of extension 

The study is important to all the entities at various stages of IP ecosystem- for example – R&D companies, Universities, new start-ups and/or investors in technology portfolios and Law Firms.

What are the 4 Different Types of Monitoring

Following are the different types of monitoring:

1. Technology Monitoring

The technical disclosure of the patents or publications of interest are studied. The focus of the study is subject matter of patents including Claims, Classifications and Citations.

The analysis can include:

• The technical disclosure of the patents or publications of interest.
• Technical details. For example, technology domains and subdomains
• Scope and focus of Claims or Independent Claims also.
• Niche or crowded areas for a domain
• Application areas related to a technology
• Untapped potential in an area – for example, a different component achieving similar results or a new application area

2. Ownership Monitoring

This includes monitoring patent portfolios to watch Assignee or Applicants of interest or those owning technology of interest. For instance, licensees.

 The analysis includes:

• Firstly, competitors
• Secondly, potential licensees or collaborators
• Transfer of rights or reassignments for technologies of interest
• Lastly, the study can further include information related to existing partnerships and/or collaborations or acquisitions

3. Prosecution Monitoring

This type of monitoring keeps a watch on the activities for a published application and leading up to the grant. The information can, hence, be used post grant.

Study focus revolves around all events of legal status, for example, publication, opposition, rejections, arguments, amendments, appeals and allowance, etc.

The analysis includes:

• Identifying new publications, with embodiments similar to the technology of interest (for example, CA or CIP)
• Determining additional information. For instance, priority documents – Origin of invention, Inventors and sequence listings (for biological inventions)
• Monitoring applications that are potential threat and may impose infringement charges once granted and further filing opposition to such application
• Understanding Examiner’s disposition on RCE TAT, rejections, appeals, allowance rate and/or arbitration, etc.
• Tracking patent term of granted patents to plan product launch
• Lastly, paralegal support in maintaining patents

4. Commercial Monitoring

Determining events that have impact in commercialisation and other market activities.

The focus of the study are Patents: for details on Licenses and Market for information on Product Launches, Collaborations and/or Acquisitions.

Details from market watch can be corroborated with Patent analysis for thorough SWOT analysis.

The watch can provide analysis related to:

• Litigation strategy of plaintiffs and defendant – their predisposition and/or inclinations
• Representatives of plaintiffs and defendants
• Filings in new jurisdictions and jurisdiction specific challenges
• Market: Monitoring new product launches. Market influencers (opportunities, challenges) and recent news (acquisitions and FDA approval etc.). Moreover, potential infringement can also be monitored with market watch.

5 Ways Global Leaders use Patent Monitoring Service

Global Leaders use monitoring effectively to stay ahead in the game irrespective of various market and economic challenges.

They maximize on competition alert, market prediction, customer retainment, identifying and/or counteracting on threats and determining and exploiting commercial possibilities.

Based on these goals, there are five ways Patent Monitoring Service can be used effectively

1.Risk Mitigation:

There can be various possibilities of risks, right from investments in R&D or scaling up to commercial prospects – including competition and legal protection.

Therefore, risk mitigation is essential to be updated about forecast or “alerts” over new filings by competitors. That is so for anticipating their move in new applications, technology or jurisdictions, determining potential infringement and accordingly enforcing rights or negotiating.

This may further include performing due diligence before investing in a portfolio.

For example, a large portfolio with 90% expired applications may not be a promising deal. Further, in addition to that, the strategy supports in post grant surveillance of granted patents to launch own products without any hindrance and in buying time in strategizing and preparing for defense by conducting clearance searches or invalidity analysis

Key Trends Identified:

• Firstly, determining new entrants in a technology sector in last 5 years and their patent coverage also
• Secondly, new filings and/or publications in relevant domain by competitors and their priority data
• Thirdly, major inventions filed and their overlap with own inventions
• Proportion of active patents in competition or in a portfolio of interest
• Rejections by examiner and appeals
• Patent term
• Lastly, new products launched in the market as infringement threat

The study is beneficial for everyone in technology or product life cycle. For example, R&D companies, Commercial entities, Law Firms. While, the preferred Watch Type are Technical (FTO and/or infringement), Prosecution and Commercial (Market) watch.

How Sagacious IPs Patent Monitoring Service in Risk Mitigation helped a US based Multinational in the field of FMCG

The client was in the process of releasing a product in the market which, in turn, could face tough challenges from a competitor’s patent portfolio.

The client was interested to “watch” the legal events related to the portfolio so that they could launch their product without any possible infringement.

Based on the study of portfolio and the chain of legal events, Sagacious IP recommended a monthly watch of the portfolio.

As a result, in a span of 10 months, with regular monthly updates, the client was able to receive a green signal to introduce their product in a specific jurisdiction with minimal refinement in their product specifications.

2. Commercialization or Licensing Strategies

Organizations require their R&D and products aligned with commercial potential to reap returns on the investments. While doing so, they need to recognize new entrants, for example, start-ups coming in with new innovation, delay competition and when required fine tune their own products.

Performing timely product clearance and/or patent invalidity and determining possibilities from available markets are a few steps in that direction.

Moreover, Companies can also engage in further developing patent pools with other players and collaborate for a win-win situation.

Key Trends Identified:

• Firstly, emerging assignees and Inventors in last few years with promising innovation
• Secondly, patent reassignments to determine key technology holders
• Thirdly, institutes and/or Universities leading research to approach for technology transfer
• Generating expertise maps for cross-licensing goals
• Market dissemination of a product or process
• Geographies with potential and/or saturated markets
• Lastly, strategizing collaborations from information on litigation proceedings and success of appeals etc.

How Sagacious IPs Patent and Market Monitoring in Commercialization or Licensing helped a European Leader in the field of Smart Wearables

The client had developed a process at pilot-scale and required technical collaborations to commercialize in the market. They wanted to determine incubators, collaboration opportunities and potential licensees to launch the final product.

Sagacious IP provided insights to the client on Tech clusters, geographical distribution and prosecution timelines for major assignees. Further analysis included information on new products, existing partnerships-licenses and recommendation on potential licensees.

Consequently, the client was able to get a clear idea of market presence and strategies of leading players and determined viable prospects for their product commercialization. 

3. Research & Development:

Organizations functional in R&D need to take calculated decisions before strategizing on funding or grants to know whether their research can bring returns in term of business.

Grant agencies with Universities and Research Institutes also need to be sure about public impact of the research they are investing in.

Monitoring in R&D enables decision makers with different perspectives before moving forward. These can range from identifying gaps for applications not converting into grants during early stage study or determining impact of regulator and/or compliance changes and saturation in patenting activity in a domain from obsolete technologies.

Key Insights:

• Recent developments on the basis of tech maps
• Sector-wise application of the technology over time
• Key players in top geographies and their growth and upcoming developments
• Analyzing rejected applications for a domain to evaluate challenges
• Convergence between patent trends and market tendencies
• IPC or CPC Classification for top domains

The analysis is beneficial for: Universities and/or Research Institutes, R&D companies and preferred watch types are Technical (Patent Landscape or State of Art), Prosecution and Commercial.

How our Patent and Market Monitoring helped a Fortune 500 Multinational in the field of Material Sciences with R&D Support

The client was working on a novel process for which they required to study literature published by some universities and their researchers. The client was further interested in collaborating with their Technology Transfer Offices for working on some of the patented inventions.

The analysis highlighted technology analysis specific to leading universities.. Our analysis provided the client with hotspot application areas in the field, key assignees with University patents, region-wise filings, top researchers with their niche areas and further partnerships and licenses.

Consequently, the client was able to study University portfolios and access the latest updates every quarter and was able to collaborate with some leading researchers for their technology. 

4. Building IP & Business Strategy:

Continuing to build on IP and steering through several business strategies are critical to propel business forward and require careful due diligence and strategizing. This involves continuous watch on the industrial ecosystem and adapting accordingly. Such a process for an active R&D facility may comprise gathering actionable knowledge from the monitored patents to build own portfolio. For a start-up, this may involve attracting investments from technology incubators and investors. For any patent holder, pruning own portfolio to remove commercially unviable patents is quite valuable to aim for new directions in the long run. The analysis enables preparing for defense in case of a potential threat by coming up with a strategy, e.g., initiating opposition or performing patent validity/invalidity searches.

Key Insights:

• Tracking filing trends, research countries and child members
• Evaluating claim priorities, focus, scope, classification tags                               
• Jurisdictions foregone by competitors which are promising
• Technical & Citation based ranking,
• SWOT analysis using Market information

The strategy is useful for early stage companies building IP and established R&D companies extending their portfolios. Preferred watch types can be FTO/Clearance, Prosecution and Commercial watches.

5. Patent Maintenance & Paralegal Support:

Keeping portfolios and keeping check of their validity and timely enforcement requires maintenance, especially when the portfolio is large and is a further part of patent pools, or cross-licensing deals. Negligence can cost revenue and promising alliances. Maintenance can include publication of application & other docketing requirements, communication with examiner, fee maintenance and further keeping tab on patent pools with third parties

Key Insights:

• Legal Events leading up to grant
• Post grant events for maintenance of patents

This monitoring is crucial for companies with large portfolios/patent pools to maintain and preferred watch type is Prosecution.

Final Thoughts – Patent Monitoring Service

To summarize, patent monitoring services identify and highlight dynamic patterns and trends in technology and market space at regular time intervals (i.e. weekly, monthly, quarterly, or yearly), which enable decision makers to strategize before making decisions. As elaborated above, four different types of Monitoring studies (viz. Technology, Ownership, Prosecution and Commercial) can be customized or combined to achieve any of the five objectives (Risk Mitigation, Commercialization/Licensing, R&D, Building IP and/or Maintaining IP assets) of an organization. Such strategies can be utilized in developing solutions and models to advance in investments, collaborations and building on commercial values of technology and products.

If you are interested in Patent Monitoring Service for your business, please contact us or visit the service page here.

-Devika Saini (Life Sciences) and the Editorial Team

Also Read

• How our Patent Due Diligence Study Helped a US-based Cosmetics Multinational Company Acquire a Start-Up
• Patent Portfolio : How To Identify Deal Drivers

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