A Proven Approach to Identify Quality Patents in Any Industry – Webinar
Key Points Covered in this Webinar (A Proven Approach to Identify Quality Patents in Any Industry) Session:
- Why it is important to know about key patents and key patent holders in your industry?
- How you can identify key patents and the patent owners?
- What data is critical for such an analysis?
- How to interpret the analysis to generate key insights?
- How to check if the key-patents are owned by not-so-known companies or an NPE?
- How can companies benefit from the intelligence drawn from such analysis in making strategic decisions?
- Abhinav Mahajan, Group Manager, ICT , Sagacious IP
- Dhananjay Kr. Das, Manager, ICT, Sagacious IP
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Are you aware of the patents in your industry that may impact your business in the near future?
Have you ever wondered with whom you should engage with for taking patent in-license or for collaboration?
Have you ever evaluated your competitor’s standing in terms of owning quality patents?
In the current scenario where the global business landscape is in a continuous flux, it is critical for companies are at the core of such change – thus, patent sets is essential. Patent quality assessment studies also enable companies to discover top-quality patents of their industry and their patent holders. Insights derived from such study could help in making business decisions such as acquisitions, joint ventures, in-licensing, etc.
Faiz Wahid speaking This is Faiz here, Regional head for Europe at Sagacious signing in from Netherlands to welcome you all to our webinar today. Today’s webinar is on the topic called Proven approach to identify quality patents in any industry. In this webinar. We are going to talk about how to identify quality patents in a particular portfolio with reference to an industry.
It could also be for a specific company or a competitor, before I go on to introduce this topic and the esteemed speakers on our session today. I am delighted to welcome all the participants from so many different countries who are joining us.
We have participants from Australia, Canada, China UK Spain, Switzerland and almost six seven other countries in Europe and Asia, It is sounding encouragement to an attempt we are making. today’s awareness and spread knowledge that has been honed by Sagacious over several years of working with inventors are in the organization’s IT departments in IP law practices.
So without Much Ado, let me introduce our first Speaker for the day for this webinar Dhananjay Kumar Das, he is the Manager, ICT licensing information and communication ,licensing domain at Sagacious. DJ is a patent licensing professional and with over six years of IT industry experience focused more on projects in the patent lives licensing and valuation and he has a keen interest and also exposure in the electronics and telecommunication industry.
Welcome to the webinar Dhananjay, it’s a pleasure to having you on the webinar. Thank you.
I have also with me Abhinav Mahajan, who is a Group Manager in the Information and communication Technologies domain at Sagacious. Abhinav is patent commercialization expert with again over six years of experience in the industry and he’s also licensing professional with the experience in and expertise in telecommunication and wireless application standards etc.
Welcome to the webinar every one and let’s make this webinar productive for our participants. Wait, so productive means we need to stick to time and finish on time. So I will request the two of you to really be very concise in your presentations. And as we move ahead, you know before delving deeper into this topic one question comes to mind as to why we need to identify quality patents in a particular industry.
Now, I just want to take some time and acknowledge the difficult environment that we have got a you know in today, there is a lot of economic pressure getting created that will probably impact customer demand which in turn may affect businesses in the short or near term in such a scenario when revenue streams. Maybe affected Tech businesses probably will be more inspired to look into their patent portfolios to identify patents that are strong, assets within their portfolios that can provide new revenue streams, for example through licensing through non-core areas Etc.
Now, this is probably just one example why we may need to identify quality patents in a Industry but let me ask the speakers and get their initial remarks as to what they think. You know, what are the other scenarios where high quality patents identifying them is important and useful for a business. So Dhananjay, let me start with you.
Dhananjay Kumar speaking Right Faiz, so in my opinion, I believe that everyone is in the race of piling number of patents recently. If you’ve got an notification from USPTO that Samsung crossed in terms of getting U.S Issued patents Samsung cross IBM.
So everyone is in that race and nowadays, the numbers are currently increasing. So in that situation, many times. We need a quick access to the Quality patents. For example, if you are getting into a litigation or if you want to create a licensing campaign. In any scenario, the turn around time should be very less and you are quick on initiatives of new business avenues.
So as you rightly pointed out that nowadays due to this situation of coronavirus things are getting impacted and this time should be utilized. You know, this time can be utilized in such a way that companies don’t mind and keep their key patents ready with them. They know what are the key patents in the industry that may impact them in the near future or there if there is any threat from them or if they own the key patents in their industry, so that is what we are going to see today and how we do that that is what this webinar would focus for.
Faiz Vahid: Great, Abhinav, what are your views on this?
Abhinav Mahajan speaking So just to add what Dhananjay has already mentioned, See it’s a daunting challenge for IP and legal department as they don’t have much time expertise and and bandwidth is also a challenge considering the budget is also a challenge. I mean if you have to efficiently execute programs you have to first Define, what would you define as a success? So what is your end objective there?
So once we define that, we can easily use the tools that are available in the industry and also like we have our own solution here which we have been helping our clients with. so ultimately I think we have to find patents that meet our needs, So we use some tools to automatically rank the portfolio and I mean prioritize some of the patents we essentially looked to eliminate the patents which are less likely to fit our needs.
So once we get to a smaller pool of patent, then it gets easy to analyze them manually and it also saves time and budget so considering that it could be applied to multiple problem statements. For example, whether you’re looking to generate Revenue out of creating some licensing campaigns or whether you are looking to generate Revenue out of your non-core patents. It could be anything. So today we will be discussing all these aspects how the automatic tracking tool can be utilized in different scenarios.
Faiz Vahid speaking Wonderful. So thanks, Abhinav and Dhanajay for setting the context of this webinar before we move ahead I invite our listeners to keep sharing their questions as in when they have it during the course of the session. They can share their questions via Go-to-webinar question box on the right side of this presentation window. I will pick up on those questions in ask them to our speakers after they finish their brief talks.
Again one specific thing
I think Abhinav mentioned about patent ranking and I did look into the the slides that are going to come up and there is a lot of detailing around how to rank, you know, portfolios and patents in a portfolio and I want to make an announcement here just to remind our participants that Sagacious Team is offering a complimentary patent portfolio ranking and Analysis to the participants of this webinar.
Abhinav’s team and that Dhananjay team will is offering that and the participants of the webinar. Can you drop an email at firstname.lastname@example.org and then we handled it from there.
So let’s now get started with the main part of our presentation and for that let me invite Dhananjay to take us through the first part of the Edition which is about how do we identify quality patents through the patent ranking approach and then I’ll invite to talk about the different scenarios in which you this can be used, So over to you the Dhananjay.
Dhananjay Kumar speaking Thank you faiz. So as you can see the agenda today is to talk about identifying the quality patents. We will look at the approach, the methodology and later on we will look at how different this approach can be applied to different objectives of the businesses. So in section ‘A’ the first part is ranking that is the obvious step as we say always and we will look into it and then it runs.
We will see how we rank the assignees from it from the rank set of patents. So let’s move in.So identifying the quality buttons for this, you know, we are saying that we can identify quality patents in any industry. So the first step would be to identify the patents from that industry. So that is extracting the patents from that industry.‘
So generally, we say that we do lot of Landscapes where lot of patents come into picture and Here also even if we consider any industry, so there will be lot of patents and handling of that patent is a key challenge. So that’s why we say that quality not quantity that matters. So we need to identify the patents that have some quality. So how we can do that quickly?
So this is a general work-flow of how we do it. So extracting the patent from any industry and what we extract from there the list of patents and the some parameters, the quality indicators we can say and we put all of that into the algorithm that we have internally and as an output we get the rank set of patents. So let’s look at the ranking algorithm that how that works.
So, we have a proprietary algorithm that we built internally and the need of it was you know, there were many such tools available in the market and they claim that they can rank the patents very quickly and with the help of some quality indicators. Some of them are listed here. So the limitation that we generally faced after using those tools were that they are limited some of parameters as we have listed many parameters here, but some of the tools use a subset of it and some of the tools use a different subset of this.
I think so right now the tool we have developed internally is able to use all of these parameters and have that adaptability to use more parameters in the future as we identify in the future as we enter in the future. So the best part of this is based on the objective we have we can assign the weightages to different parameters.
for example, if the forward citation counts, if it is about monetizing, if the objective is to identify the patents for monetization and definitely forward citation is going to play a crucial role and if that is about you know, if you are considering only the new patents for the analysis, then definitely the weather patents are not so matured so we can consider a significant weightage to pending life.
So let’s move ahead. These are the basic parameters and generally available. So I won’t spend much time here. Let’s go ahead right. So home automation , show you an example of what this ranking can do. So I have taken the example of home automation segment of IOT. So we know , it is getting a lot of attention nowadays and that is due to the increased innovation in this field and it also leads to decrease in the cost to the customers. Some home automation got acquired in billions.
So this is why this particular industry segment is getting lot of popularity in its product. And obviously it is bringing the ease to the end user in their homes. So that’s why we have considered this particular industry.
So as I said extracting is the first step that we do so we have considered a specific Class codes and keywords relevant to this industry and identified almost thousand plus patents for this ranking and there were 123 unique assignees that owns this thousand patents. So let me go ahead. this is how this ranking looks like so we have not considered too much of parameters. Otherwise, it won’t be fit into this screen.
So we have considered the parameters highlighted in green. So these parameters were considered. Let me open this Excel sheet of ranking for you. So this is how this Excel sheet looks like and these are the parameters we have considered we have obtained the relative scores for each individual parameter and then we have considered the weightages for each parameter.
Abhinav explain more in his section and based on the weightages. We get a you know the score and that score helps us prioritizing the patent and the good patents comes at the top so for you know proving that this algorithm works, we have highlighted the patent that are already involved in the litigation so we can see the patent at rank four is already litigated. That means it has its application and it find it has already found it’s entertainment in the market.
So this patent is owned by Samsung, but at the same time when we want to show the quality of the patent and we can see that KIP products is not so known company. So this is a company that owns the patent at rank 1 and we can also see that patent at Rank 2 is also not so known company. In fact, it is owned by an individual inventor. So that patent can also come into top.
So If we are, you know planning to go with the quantity, then these patents might be my dead. So this algorithm works and that’s why we have Also, try to show what the analysis of this patent at Rank 2 but before that let me show you how you know, we rank the companies of or the assignees is of this rank set.
Right. So here you can see that we have listed the unique assignees and we have segregated them with the you know, how much patent they own in specific set of ranks. So in the top 50 ranks how many patents or they own and based on that? We have populated this segregation and we have assigned the score again, and normalize the score with respect to hundred and sort it down.
Then we can see the companies are rearranged based on the quality not based on the quantity. So you can see even though Google is coming on the top auto connect Holdings. This is a company, this is a subsidiary of Acacia research. That is an NP so that owns only 55 patents, but still it is coming above, you know, Samsung who is holding 115 patents in this domain.
So if we again go down so we can see KIP products owning the top patents as well as it is coming at the 5th ranked in terms of patent strength. So I mean many other companies owning more patents than this is coming at the bottom so we can also see that ring is the company that got acquired in billions by Amazon. So this company is coming above LG and many other companies who know might be owning good quantity of patents, but not the good quality of patents.
So this is how this algorithm can be effective in mining such patents as well as identifying the key owners of those patents in any specific industry. So this is an example of home automation industry. So as I said earlier that I am going to show you the analysis of this second patent, so this is owned by an individual inventor and I have pasted the claim and this patent explains a home automation system where a smartphone user registered to the home automation comes in approximate.
it can automatically triggers the home automation systems home automation systems can be an Appliance the that is a light in the house. It can be a lock in the house or door lock anything like that. So this is a very crucial patent for this particular industry and if we look at the implementation of it, we have just you know presented some Snippets from the actual products.
So this proves that the implementation of this patent is there in the market and this owner has the very good patent or the quality patent in its portfolio. So this patent can be of use. This owner can use this patent against the products in the market or patent owner can sell this patent.
So this is how the patents at the top are actually holding the quality that our vetting derived from the our patent ranking algorithm. So that’s how we do mining oftop quality patents and the key patent holders in that industry.
Yeah over to you Faiz.
Faiz Vahid: So thanks Dhananjay for the first part. I mean, I will request you to go through the second part and post that we get into the question and answer. So requesting again the listeners to push in their questions through the question box. I have already received a few so request others to also share their questions. Abhinav over to you!
Abhinav Mahajan speaking Thank you Faiz! and thank you DJ for quite an explanation on how we can quickly identify high quality patents from a large portfolio or in any industry for that matter. So in this part of the webinar, we are going to talk about some of the scenarios or use cases where we can effectively use automated and ranking tool and quickly analyze the patents both saving time and budget.
So let’s take this example to begin with. So for example, we have been working with a lot of corporate and generally their problem statement is that we have to start a licensing campaign and we have a particular Target in mind or generally they sometimes they have a part of the portfolio, which is no longer being used by them. In terms of the fact that they don’t have any running product line that is being protected by those patents.
So they also want to generate some revenue streams out of it. we can use the automated writing tool to quickly run through these portfolio site and identify some gems out of them which can drive our licensing campaigns. generally when we talk about corporations, they have this internal tally of the portfolio where you will see that they have the patent set and they have created those technology vehicle tags at level 1 2 3.
Accordingly they know that these are the core patents which directly protect their patent protects and these are the other technology called patents, which they no longer use. So for example, these for example say a company is operating in the domain of processor and memory and say they want to go and get their competitor.
So they directly know that these are the patents from the portfolio which they can use and do the mining exercise, identify some gems which can be applicable to those competitor and accordingly the charts and get into the licensing deals and otherwise if you look at this patent, which is related to Payment Processing ,For that company might not be relevant at this state, but they what they can do is they can take this patent and similar patents later to payment technology and also some other patents which are related to say payment back end for example servers networking and other aspects of the payment Network and they can use those patents to form a patent set and run the similar exercise like Dhanajay discussed how we can mine the patents and use automatic tracking too.
So just to take you through the process here. So if you look at this methodology, so I mean this is something that we have created from experience of over hundreds of projects like how to effectively mind patents from a bigger patent set. So say we have some current identification of the parent set to begin with say we have already identified using the technological tag.
We have already identified that these four patents are due to their payment fees and if we can analyze some gems and identify which patents to I mean pay the fees for and which not to renew, we can do that kind of analysis also using the automatic tracking tool. for this example. I have considered say we have a Target company in mind.
So how do we identify patents in our portfolio quickly and without picking a hole in our pocket, how can we do that? So say we have it other company in mind we know that these are the two products A and B, which are generating the most revenue for this company. We analyze those products. We identify the key features of these products, then we can use patent tools to identify some class codes and then we can formulate search strategies to identify the patent set from our portfolio, which would be applicable to these two products.
A and B so say they were like 10,000 patents to begin with and we then did some keyword searching or say some class-based searching to identify If I say patents set of 1000 patent, which are relevant to the domain but it might not be relevant to the product directly. So how do we analyze these 1000 patents and then identify like the top drivers or the deal drivers for the licensing campaign or the patent sales activity?
So Here what we can do is for example, if we identified the patent share to be around 1000 patents, we can directly run that through the one automatic tracking tool and use different parameters. Now like Dhananjay has already mentioned a couple of parameters that you can use for example, the forward citation count ,pending live, claim length claim ,ground family size and etc.
But the most important factor here could be the forward citation count and the count of specific target assignee that we have in mind in the forward citation so we can introduce a new factor and accordingly assign a weight to that particular factor, which defines how many times the target assigning has cited this patent in their in their patent or how many times examiner has used this patent in the prosecution history for the patent of the target assignee.
So that sort of parameters we can introduce in the automatic tracking tool to Is it as per our needs and again, for example, say we rank 1000 patents? We know that the parents the top means that they have either having high forward citation count or they are having at least one or two references to the patents of the assignee in our mind and accordingly. We can prioritize those patent to begin with.
So if you look at this yellow box I have said that we should take the first batch of hundred patents because these are those patents which have high probability of being infringed. So, I mean just to save some time and costs. So for example, we can begin the manual analysis of these handed patents if the budget and the time allows that but again if the time and budget is not allowing that what we can do is in the manual step we can first do the T ranking.
T ranking is a technological ranking So what we do in the T ranking is Quickly Screen through the patents to identify patents which have brought claims and have an easy identification for those claim features. So basically we rank the patents as T 1 T 2 and T 3 based on their claim scope whether it’s broad or narrow and the ease of identification whether we can easily prove the infringement from online literature, whether we can prove the infringement from the product guides and user guides and whether we would need re or whether we would need to get Hands-On to the product to test it.
So these are the things that we can keep in mind and do it took T ranking which won’t take like 10 to 15 minutes based on your experience with the domain. We can quickly rank the patents and T1 parents are those patent which generally have broad claims and also have ease of identification so we can pick those T1 patents and directly move to the detailed infringement analysis for these patents. So from 1000 patents, we picked hundred patents, then we jump to 20-25 patents for which we are doing the detailed analysis. So instead of doing the detailed analysis of all the patents we have now come down to like 10 to 25 patents, and we can then identify infringement and use that for evidence of use charting and negotiations.
All right, before getting into the methodology, I discuss that we can also look to Identify some of the patents you have a portfolio which are not of no use to us at the moment. I mean our non-core patents or have non-core applicability.
For example, you have a patent and you see that there is a player in the market who is just about to emerge in the top players, but they have their portfolio set of their own so again and that is not operating in your Direct business lines. So what you can do is you can easily generate some licensing campaigns against those companies because you don’t have the fear of them getting back to you with counter assertion or a renegotiation deal. So it’s easy to Target companies in your non-core domain as compared to the companies who are in your direct competitors because that again poses a threat that they can also come back to you with their portfolio set.
So, even if you haven’t really tag your patents in two different technological buckets, what you can do is quickly use the automatic tracking tool to identify some of the key areas in your domain, in your portfolio, which are non-core to your business. So we did this exercise for one of our clients where they had like 20,000 patents in their portfolio. One of the easiest step is to remove the patent that are categorized as the core CPC. So this particular client of ours was an automotive industrial tools manufacturing company. So we directly remove the patents which were irrelevant to their Core Business and then we analyze the remaining patent subset another way of looking into this is for example, if you have a patent portfolio, you can look into the CPC’s or the class code of your forward citation because that is an important factor when you are considering that your parent might be applicable to a particular domain when you’re you have just filed it but say in 10 years or 20 or 15 years you realize that the patents or the patent owners in other operating domains are also citing your patent because your patent is now being applied to different Industries.
So that sort of analysis you can do to obtain a patent set and use that within automated ranking tool to prioritize patents and quickly screen through them. So what we did here was after you obtain the subset, we ran that through the automated ranking tool we picked around a hundred patents for the manual analysis and in the hundred parents said we typically tag them for example, the first patent holder to wireless audio then we know that the market area applicable here will be automobile or the mobile. Similarly. The patent is related to your user interface.
We know that it might be applicable to mobile. It might be applicable to other areas. But again the restrictions in the claim allow that this patent is only applicable to say a wireless device or a handheld device for that matter. So accordingly we have created those market tags. We combined the market tags with the automated ranking tool to visualize the data in a way.
So I will just move to the analysis part how we analyze the data. So In the X-axis you would see that these are the automated ranking tool scores that we have obtained for different patents. And these are the number of patents in different Market areas. So these are all the non-code market areas for that particular automotive and Industrial Tool manufacturer.
So you will see that there are patents in the smartphone which are again in the numbers. Also, they are high and also in terms of quality these He’s orange bars are there. So the patents in the ranking of 80 and above and also in the in the score of 70 and above so they are there in this Smartphone category. Also it also has a number of patents in the rank of 50s so we can pick this technological domain or the market area to begin with and also if you see the analysis you can realize that there is a patent set in navigation and Maps, there is a patent set in Virtual assistants. So these two are also an essential part of the smartphone these days so you can club these together and you can then go back to your methodology tab and change the automatic tracking tool again in that particular aspect.
You can keep the tab on the forward citation assignees and keep a score for the top smartphone manufacturers for that matter see apple Google and so on so you can do that and again, I mean this is just an example and you can apply to this to any industry to smartly analyze the portfolio and visualize your data in acute way to indentify What are the non core parent applicability is for you.
All right. So this is something that Dhanajay has already covered. So I will just quickly walk you through this. So I mean this is the ranking sheet for the assignees. So you will see that we have the rank for the different assignees as per their patent strength as well as their quantity of the parents that they hold.
So what we can do is you can supplement this information with the revenue information to identify smaller organizations that hold stronger portfolios and those could be real acquisition opportunities, also the individual inventors or the University’s you can keep a tab on that who hold the strong patent. So like the patent that the Dhananjay discussed was for this particular sinusoidal see that in terms of quantity. This particular inventor is ranked 34, but in terms of quality it ranks 18th, so I mean we discuss one patent in the top ten patents. He had only one patent, but he might have other patents in top hundred or top 200 patents. So yeah, you can see here. he had around one parent of 50 and the in the next 50. He had only one patent. you can easily go to this guy and say like you have three four patents.
I can I mean by this portfolio of yours for this much dollars and accordingly you can settle the deal. Also this automated ranking tool can also be utilized in litigations. it can provide you some Consolidated hint for the strength of your parent before you get into the litigation. how the you can use the automated ranking tool?
Let me just give you an example say you have around 200 patents in your portfolio and the patent set and you know that this particular patent is being infringed by company XYZ and you think that you can get into the litigation but going into the litigation with just the one patent in your rank and you go into the litigation. There is a high chance that it might get invalidated and your case is gone then so what you can do is you can build the case around that patent.
For example, if you have picked a client picked a particular company XYZ, you look into other production in that particular company and you then analyze your portfolio to determine other patents in your portfolio that can also be litigated. So what you can do is you can quickly rank your whole portfolio and see where is the litigated patent ranking in terms of other patent.
So if there are the patents at the top of the litigated patent you can quickly review them to see if these disclosed similar technologies have applicability to the mark of the company XYZ is you are going to litigate against. Similarly, what you can also do is you can drag the patent against other patents in the same industry for example with classified in the same CPC or IPC and do a sort of analysis which for example where you can see what are the patents that are being used in the prosecution.
So, I mean those will be the Pioneer patent so you can associate a weight is to that factor whether the patent has been prosecuted before and in the same industry. So you would know that we’re your patents stands in terms of the patent that have already been prosecuted. So in for that matter that particular patent is a threat for you and terms of invalidation convention. you can have that sort of analysis with the automatic tracking tool acutely without going for the retail invalidation searches and on so you can use that as well.
So I mean it is believed that when you do all this sort of analysis and still your patent is Among the top 20-25 patents It is believed that it can withstand litigation and you’re a good stance to settle the deal. Alright. So, I mean that was for when you are acting as a plaintiff, but what if you have been sued by a company, so what you can do is for example company XYZ and the competitor of its sues you back.
I mean Say that some of the portfolio that is relevant to your top revenue-generating products. What to do now? So the best way is to invalidate the patent, but another way is to counter assert them because you’re operating the same domain. you should and we have been doing this for many of our clients.
We have been using their portfolio to counter sue the plaintiff. So what we have done here is for example, we can take a look at their portfolio. Also, we can take a look at the patent portfolio and the product portfolio together and then visualize their portfolio and identify some classes in their portfolio, which if we have patents in those classes, we can directly prioritize those patents because in a common Layman language. It would be like a company protects his technology through patents, and then they apply them to their products.
So if you are able to identify similar patents in your in their portfolio, it is high likelihood that those patents can be used against the product portfolio for the company. So similarly you can also formulate strategies related to classes and mind the portfolio of yours and identify the top gems from your portfolio using the automated ranking tool and then do the quick analysis of the ranking and then go on to the detailed analysis and claim charting.
So essentially why we do the automated ranking tool is to minimize our time and get the results quickly. For example, if you are in some talks with the front party you want to have some Concrete material in your hand to have that negotiation. You can use the automatic ranking tool to quickly visualize your data. What is there that you can use against your competitor and you can directly visualize the data using automatically to learn quickly to sit with the negotiations.
That’s all from my side. So I will pass the control too faiz over to you.
Faiz Vahid speaking Hey, thanks. Abhinav for that elaborate in depth in a little coverage. So I think DJ and you have covered a lot of ground on this topic for what we set out to do and I can also see a lot of questions coming in from the audience. So I think without any much ado let me quickly jump into that.
So, you know one thing that I want to start by asking is and this question is for DJ there are many tools for ranking patents and how is this methodology that you have shown different? And where does your Tech expertise come in? And how does it make it different? So start on that.
Dhananjay Kumar speaking so the first the answer to the first part of your question is there are so many tools as I explained in the presentation as well that the advantage that we have and the need that we you know felt to develop our own tool is to consider as many as parameters so that each of the parameter is indicating some Quality and based on objective we have to assign some weightages.
For example, if you have conceived a technology of let’s say 4G or 3G around 2003 and 2004, when actually we have seen 3D in the market. So if you have conceived a technology around that period and it is going to expire in 2024, so during this entire period now some other Technologies coming into picture. We are currently using 4G and we are talking about 5G so you know, the technological reference of 3G is going to get diminished.
if we want to utilize or monetize that patent and generate some Revenue out of it and ensure the ROI that we have put on the R&D of you know that 3D patent so we have to ensure that that patent should come up in the ranking list. So that’s why we have to consider the forward citation as well as pending life as well as we have to see how broad is the claim written. So all these parameters we have to consider and these parameters should be given the higher weightages and that flexible legibility is allowed in this tool and not any other tool in the market.
So that’s why this tool?, you know it’s crucial for such kind of analysis and the expert is that you said as the kind of experience that we bring we have the knowledge of Technology landscape in our domains.
As I said, we understand that when this particular technology of Telecom, for example, as I given for 3G when it started so we know that if the patent said that we are going to analyze is ETA to 3G then we have to see how and when and which parameters we have to consider and we have to give weightages. So this is how you know, our expertise comes into picture and along with the tool. We can mind the good patents in really quick manner.
Faiz Vahid: So what you are essentially saying is that base model you can build by training through existing data may be using AIX cetera, but till the Industry specific insights need to be added to this to this tool so that the ranking is much more relevant to the industry that it belongs to rather than a generic model overall.
So let me ask Abhinav on this particular aspect, when we are doing this ranking and based on your experience what type of parameters do you see are much more relevant when we are trying to find futuristic patents or like patents, which will be relevant in the future.
Abhinav Mahajan speaking So there is a two-part answer to your question in the one is how do we analyze the patent would be relevant to Future in terms of using the automated ranking tool so we can I mean get some idea based on like DJ mentioned that based on pending life and the prosecution history of the patent we can visualize the data in a way that for example, if the patent is just granted for a technology to mature. It takes like 5 to 10 years.
Yes, and if that sort of patent is there in your portfolio, there is a high likely chance that it might be like applicable do products in the market which might come in future as apart from that like I mentioned in the methodology that we discuss after the automation ranking. We basically do a quick ranking.
So in the quick ranking what we can do is keep a tab on the patents which for which we see that there is a lot of research being going on and though there are no products in the market, but there is a lot of research being seen in the market based on research papers and some contributions from the top Market players.
We can easily assess that this kind of Technology might come in future and as per the automatic tool only panning life and somewhere on the prosecution I can give you an idea about the futuristic patents, but you really need to look into the ground and see what kind of details is available in the market in terms of the research.
How the companies are proceeding with the research in that particular domain that will give you more better idea about the future applicability in the patent. And also once you do that, what you can do is you can follow the path of the strategy prosecution. So you realize that there are some research being done in the industry pertaining to your technology and you will realize that these are certain aspects of the technology that you wanted to claim but you didn’t claim in your patent application.
So you can use some input from those kind of research and modify your claims accordingly. So they are more suited to your future applicability needs.
Faiz Vahid: Yeah, I get the point. So Abhinav, continuing with you I saw in your in one of the slides. I think DJ also used that is there was a lot of weightage given to forward citations and in that particular example, I’m sure that way it can change based on different purposes, but In this particular example, there was a high weight forward citation. So why was that particular weight chosen? So I just want to understand what do you think when you actually assign weights to a particular parameter in your overall energy assessment.
Abhinav Mahajan speaking Sure as so we have seen that for our citation has been the most significant factor in identifying patents that are likely to be purchased. So in fact, if you look at the patent transactions, you will see the patent that have been sold or even listed or highlighted by the brokers in the broker Network.
You will see that they exhibit even more extreme number of forward citation. Then those that have been litigated in the same domain. So, the patent that are listed in the broker Network might have more citation than the patent that have already been litigated.
If you look at go back to I mean remember the automated ranking tool there enjoy did for the IOT or the smart home industry you would see that we saw the patent number two, which was not litigated but had more forward citation then the patent number four in the list which was litigated. So, I mean it’s a good indication that forward citation patents having large number of forward citation patent can yield some value in Revenue generation for you?
So that is the general idea why we have big forward citation as the most significant factor and second question is why only the forward citation care factor and not any other Factor, so we believe that forward citation are a proxy for industry-wide R&D investment in any technological area?
So with more investment, there are generally more products and with more products. There is a higher chance of infringement. So if the objective is to monetize or license the patents like we discussed in our slides where the infringement drives overall value so a higher number of forward citation is desirable. So that is why we have kept forward citation as the primary factor of the most significant factor.
Faiz Vahid: Well understood and let me come to DJ. We talked about patent ranking and you showed a very good example of how it can be applied in the home automation industry and also shared about you know, why, you know, even among other tools are present the patent ranking methodology that Sagacious has is relevant.
Now when we are trying to identify quality patents. Is patent ranking the only method to go ahead with or are there also other methodologies that we can use to identify quality patents?
Dhananjay Kumar So initially what we used to do before is you know companies used to categorize their patents and you know as I’ve been I’ve mentioned in its implementation that idea is to get a quick set a small set for manual analysis if the companies have smaller portfolios or significant portfolio, well categorized so that time we used to get a specific set of you know patents in specific set of category from one company.
So the set is already small if the set is below hundred then, you know, the ranking won’t do much know, it’s work but the ranking starts giving good results or becomes effective when the portfolio size becomes more than a hundred so manual analysis is the one way and the ranking is the another way when the portfolio size becomes large. So the idea is Still Remains same to get a smaller set or a prioritized list of patents. So that we optimize the cost that that that is going to incur in finding the good patent.
Faiz Vahid: Okay. Yeah, so I have several more questions actually coming in from the audience. So I have pre-selected of you which I already asked we have seven more minutes. So I will take a few more we may not be able to take up all the questions that have been flowing in but there are couple of questions that, I’ve also selected.
One of them, how do we determine if the ranking is, correct? what kind of criteria do we apply to check whether the ranking is correct? Once we do this ranking.
Dhananjay Kumar speaking Okay, so you can always assess the quality of the automated ranking tool, if you have been manually analyzing it you would have got the same result but in more time and more budget so important theory here is it’s a market validation you can if you will see the automatic ranking results. We have been using it for all of our clients and you would see that the lower part and lower-ranked patents.
We generally don’t see any products in the Good. So for the patents which are ranked higher which have high forward citation count land like I mentioned that means there is more R&D issue and there are more products in the market.
So I mean that itself and also when we begin to see the results in terms of the deal drivers for a licensing campaign, we generally see that the deal drivers are among the top 10 patents only so that itself is how you evaluate the ranking tool because it gives you the right result in the short time.
Faiz Vahid: So effectively saying that market validation is the key to that ranking, you know to check whether the ranking is correct or not exactly and Dhanajay. One of the key parameters that we are using is claim length. You know, how does that affect the ranking?
Dhananjay Kumar speaking Right. So generally we say that in our initial time in this industry. We used to study a lot about the significance of each and every part of the patent so claim generally defines the scope of the invention.
So if it is written with lesser words, then we generally say that the claim is broad so and Specifically the first claim so it is the you know base we can say that if we go into drafting practices, the first claim is what gets all the attention and gets reviewed most of the times so that is why against lot of attention and against lot of value that it the first independent claim defines the scope of the claim.
Scope of the invention as well as at the same time in general the claim defines the scope of the invention. So lesser the words the scope of the invention is wide. So that’s why we consider independent claim length of the first claim.
Faiz Vahid speaking Right, and probably there is time for me to take one more question. And this is a little long question that has come. So Abhinav I will ask you to address this. I’ll just read it out and then say you can have a shot.
So the question is that can this tool be used for assessment of the relative strength of the portfolio of SEP held by a single assignee as against the industry as a whole so and this A person is asking this particular question in reference to the planet and wired Planet versus who are we case where this was a consideration to determine the Fran royalty rates if you want to take this one.
Abhinav Mahajan speaking So if I have understood the question correctly we are I mean the question is like if you used for assessment of relative strength of the portfolio for SEP held by a single assignee.
Okay. So we’re talking about non-essential patents. Yeah. Definitely we can instead of looking at the overall industry saying can we just look at the relative strength of the portfolio of the SEP?
Absolutely. So again we can use automated tracking tool to rank the SEP as well. Again, the parameters would change here. For example, we would need to have first ample what standard we are talking about if you’re talking about say 3GPP standard we know what are the contributors for the 3gpp standard.
So if we can use the parameters like in the forward citation count if there are SEP or if they are our contributors to that 3gpp or some other standard setting organization such parameters can be used to relatively rank the patents of a single assignee in terms of SEP where the parameters will just change from a general applicability to standard essential patents where we can use forward citation count or we can also use the patent which are already declared as standard.
We can use that set as an input and we can obtain for example class codes from those patents set and identify patents in the assignees for a corresponding assignee, which are also classified in the same class code and prioritize them above others. So that way we can use the same tool for the SEP analysis for assignee. We just need to tweak it a bit depending on the needs.
Faiz Vahid speaking Great, Abhinav, DJ thanks a lot. This has been a wonderful session. I’m sure our listeners have greater takeaways from this session and we’ll be able to use several of these pointers, which you have given when working on assessing the quality of patents, both internal and external, both internal company portfolio as well as for the for the industry as well.
We have not been able to cover all the questions that we received from the audience. So regret that and but however those which we have not been able to cover will be answered in the right step. We will publish post this webinar or will also reconnect with them specifically and have those questions answered.
So thanks to both the speakers and thanks to everyone. I will repeat the initial announcement that I made regarding these team the ICT TEAM at Sagacious offering complimentary patent portfolio ranking for the participants of this webinar.
So if interested, please send an email at webinar at sagaciousresearch.com, and finally, I would like to extend a big thanks to all our listeners who helped us start on time and finish as well. So we highly appreciate that and thank you very much. Please join us in our next webinar and have a great day. Thanks a lot. Bye.