Toshiba: Patent Portfolio Insights

Toshiba – Study of Patent Portfolio

 

At Sagacious we provide the best solutions to our clients regarding their Intellectual Property matters. Our well-researched insights and actionable recommendations have been adding value to our clients for over a decade. We are a Great Place to work certified organization having offices around the globe.

The above infographic represents a quick overview of the existing patent portfolio of “TOSHIBA” & its subsidiaries. Neither Toshiba nor any of their personnel asked Sagacious to perform this portfolio analysis. This analysis assists corporates in optimizing & monitoring their patent portfolio efficiently. We also provide competitive watch services.

Patents are identified and analyzed through “Questel Orbit” patent database using the corporate tree tool for “TOSHIBA” & its subsidiaries. Also, the above data represents patent applications filed by Toshiba & its subsidiaries in the last 20 years (17th July 1998 till 17th July 2018).

Toshiba has filed 2,80,185 patent applications since 17th July 1998 among which 44% are alive, and 56% are dead.

To elaborate, the alive portfolio comprises of 83,344 granted patents and 40,786 pending applications.

The dead portfolio has 1,18,290 patents/applications being lapsed, 32,779 patents/applications been revoked, and 4,986 patents being expired.

Mentioned below are some of the noteworthy insights from this infographic. 

Insights on Alive Portfolio

Facts

  • 12,278 (~14.7%) of the granted patents took more than 5 years to get granted
  • 11,941 (~29.3%) of the pending applications are pending for more than 5 years

Possible reasons

  • Based on our years of experience and research in the IP industry, we believe that a patent application has an expected grant time of 5 years in majority of the jurisdictions round the world.
  • Delay in grant may be because of incremental inventions (where ascertaining novelty becomes difficult), or because of TAT of the patent office.

Remedies

  • An effective prior-art search before drafting ascertains that the application draft will distinctly convey novelty of the invention.
  • Also, it is a general practice to design around the narrowest prior-art while keeping the claim broad in scope. A well drafted application certainly wins the race.
  • These pre-emptive measures help in ensuring a better grant rate with reduced prosecution time. Thus, we recommend our clients to ensure that their searching1 and drafting2 teams work in coordination and enable each other.

 

Insights on Expected Expiry

Fact 1

  • 11,315 of the granted patents are going to expire in the next 5 years, which indicates that around 14% of the existing portfolio will expire in the next 5 years

Possible reasons

  • End of Term

Remedies

  • For a product-based company, it is imperative to monitor expiry of their Fundamental Patents*.
  • We recommend conducting whitespace analysis and technology landscaping at regular intervals to stay abreast with the market and waive the expiry of Fundamental Patents by filing more patents in the same domain (through incremental inventions)
  • We also recommend identifying possibilities for monetization before the rights and opportunity is lost. During our research we identified many cases where the company let off the patents that could have been licenced/sold or enforced.

Fact 2

  • We identified that 237 pending applications will expire in the next 5 years, out of which 131 applications are pending in Singapore & 80 in Japan. (These applications are pending from more than 15 years, and Toshiba has been paying necessary fees for them so far).

Possible reasons

  • Patent offices have different grant times and grant rates. Majority of these applications are pending in patent offices of Singapore, Japan, Brazil & Germany.
  • A known reason for delay in grant is re-examination or request for continued Examination (RCE).

Remedies

  • A well drafted application receives relatively fewer re-examinations, and it is easier to make amendments.
  • Timely response to office actions and well researched amendments in such applications increases the probability of their early grant.
  • Further, a timely decision on withdrawal of the application saves costs.

 

Insights on Dead Portfolio

Fact 1

  • 42% (1,18,290 patents/applications) of the total portfolio is lapsed
  • 2% (4,986 patents) of the total portfolio is already expired

Possible reasons

  • A known reason for patent lapse is failure to pay the maintenance fee and/or failure to respond to an office action.
  • Also, based on market orientation, our clients make a conscious decision to drop patent applications (wilful discontinuation). This is a known strategy to optimize expenditure on IP.
  • A known reason for expiry is end of the term. However, failure to pay maintenance fee also leads to expiry.

Remedies

  • A regular audit of the patent portfolio assists in optimizing and monitoring status of your patent applications. Thereby enabling you to prevent un-intentional lapses.
  • Before deciding to drop, we recommend conducting an infringement analysis3 on such applications to ensure that they have no prospects and monetization opportunities in the future.

Fact 2

  • 32,779 patents/applications have been revoked out of which approximately 0.7% were patents.
  • A patent is revoked during post grant opposition if examiner finds prior art against the subject patent.
  • An application is revoked during office action due to rejection by Examiner.

Possible reasons

  • The application/patent is not deemed novel by the patent office or the competition.
  • Ineffective prior-art search / Inconclusive draft may lead to invalidation during opposition4.

Remedies

  • An effective prior-art search is a must before drafting.
  • A state-of-art search helps in establishing the current state of technology. (Innovators find this very informative and actionable to design around their competition).

1At Sagacious we provide prior-art searching as per client’s requirements. We have more than 50 variants, 100s of formats and ∞ success stories to back up our reputation.

2At Sagacious we provide exemplary drafting services as well. We have US, EP, CN, JP and IN attorneys on board to take care of your end-to-end drafting needs. 

*Fundamental patents are product protecting patents or competition covering patents. These patents are of utmost importance. For more details refer to our F3 Guide.

3We are experts in making IoU(intent-of-Use) and EoU (evidence-of-Use) charts. Our attorneys and reverse engineering labs(in china) enable us to provide strong recommendations on such cases. Please refer to our services for more details.

4 We also have a unique contingency-based invalidity search service (which we call Silver Bullet Search) which is highly appreciated by corporates defending litigation (OR opposing their competitors’ patents) as they pay for results and not for high-volume effort for unsuccessful searches. Here, we guarantee “Killer Art” – a Silver Bullet to kill the patent.

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