Patent research & analysis to identify salable or licensable patents

Here are some useful patent research & analysis methods to identify salable or licensable patents, responding to previous 「日本の知的財産訴訟制度の見直しに関する議論の最新情報」.

1. Technology trend research 

This research is for reviewing whether or not a subject patent is likely to be used, from the viewpoint of technology trends. For a technology that is not used in the market, a patent for that technology has less opportunity to be sold or licensed.

2. Market research

This is for researching current and future market size and trends of products or services related to a subject patent. Some investment is required to enter a new business or developing a new technologies. If the expected return does not match the investment, it is unlikely to be executed. Also, since patent royalty is often calculated based on amount of sales or the like, the patent may not attract attention when the market size is small.

3. Citation analysis

This analysis aims at identifying potential licensees or partners who may have interest in a subject patent, by identifying patent applications for which the subject patent is cited as an prior art by examiners. The applicants who have developed similar technologies may have interest in acquiring or getting license the subject patent.

4. Claim review for detectability and provability of infringement

In this review, claim language is carefully reviewed whether or not it is enforceable, – i.e. whether it can detect infringing products and prove infringement. For example, a patent for a manufacturing method may be difficult to prove infringement without accessing a facility of a possible suspect.

5. Product search & analysis

This is for searching possible infringing products and also examining whether or not such products infringe the subject patent. First, it searches public information such as product specifications and functions to identify possible infringing products. Sometimes you may need testing or reverse engineering an actual product. Then, when you successfully identify infringing products, you prepare a claim chart or EoU (Evidence of Use).

6. Research of new applications

This research is for increasing saleability or licensability by broadening the field of application of a subject patent. For applications an inventor recognizes on filing a patent application, they may be included as embodiments in the specification of the patent application. In addition, researching patent applications with the same patent classification code (File Index) sometimes help find new applications that were not recognized by the inventor.

7. Technology search based on actual needs

This is an on-demand search in response to actual needs of other companies. When a company is looking for a specific technology, it is relatively easier to make a deal for transferring such a patented technology. Generally, however, it is not easy to find such a company that needs your patented technologies.

By the way, Japan Patent Office (JPO) experimentally prepared a website that introduces patent search tools that can be used free of charge (some with limited capability). JPO also implemented the project in which SMEs can use patent search service free of charge by JPO’s burden of cost. This project uses a bidding process and chooses a patent search vendor who quotes a lowest price. It looks like patent search service is an increasingly competitive industry producing a price war.