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The role of patents in supporting business critical decisions and strategic direction in the commercial world is well established. Businesses routinely conduct patentability searches to assess the likelihood of obtaining protection for their innovation, and use freedom to operate/infringement searches to assess and mitigate business risk when considering moving into new markets. Increasingly, patent analysis is being used to identify competitors and/or potential partners, to spot opportunities in emerging technology spaces and to direct future research and development efforts.

But the role of patent information is generally less embedded and less well understood in the world of academia. It is more common that the knowledge concerning patents is confined to the Technology Transfer Office. Yet there are a wealth of good reasons why patents are important right across an academic institute and multiple ways in which patents can be used to support the strategic and operational objectives of a university.

With growing pressures on funding, universities have a need to commercialize and exploit their heavy investment in knowledge and innovation. More and more this means aligning activities to address unsolved problems and develop innovative solutions to unmet needs. This in turn means extending the reach of the institute across the lifecycle of innovation moving out from just the discovery phase to increasing involvement in protection and commercialization phases.

Patents are a critical component of translating the value of a good idea into commercial return. Empowering a University and its various substituent’s (researchers, students, technology transfer office, DVCR, metrics officers, library, etc.) is vitally important in order to research, access, analyze and provide value based on patent information.

lifecycle of innovation

Figure 1: The Lifecycle of Innovation

 

Why patents?

The information contained within patents is a rich source of both technical and commercial intelligence. This is a result of the principles embodied within the patent system.

Patents are essentially a deal between the inventor and the government whereby the individual is given the right to exclude others from practicing or otherwise exploiting their invention without permission. In return, the individual must fully disclose how their invention is achieved, thereby contributing to the sum of human knowledge.

Patents therefore provide full technical descriptions of claimed inventions, which can be analyzed to determine emerging technologies and hot spots of interest in current research.

They also disclose ownership information for both inventors and assignees and provide a valuable source of information about technical experts and competitors or potential licensees and/or partners.

They are also regional rights that apply only to the specific country or region in which protection for the invention is being sought. Therefore, the countries in which patent applications have been filed for an invention can provide insight into markets of interest to the owner of the invention.

Patentable inventions should also be novel (in other words not publicly disclosed before a patent application has been filed). This means that patents contain detailed technical information which often cannot be found anywhere else. Studies have shown that up to 80% of technical information described in patents is not disclosed anywhere else, including scientific literature1 . Thus patents provide a valuable source of largely unique detailed technical information.

Challenges

As legal documents, patents can be hard to read, hard to understand and hard to find. They are generally written in legal language designed to ensure the broadest coverage for the invention at the expense of clarity of explanation. So, what most people would call a chair becomes, in patent-speak, a substantially horizontal seating platform supported by a plurality of legs with a substantially upright structure for torso support.

Since they confer regional rights, they are also published in the language of the country where protection is sought – French patents are in French, German patents in German, Chinese patents in Chinese and so on. Add to that the sheer volume of publications (over 50% of which are now Chinese) and it becomes clear why using patent information poses problems. Solutions exist through the use of value-added patents information that provide English titles and abstracts regardless of the language of the original patent and consistently summarize the novelty, uses and advantage of the invention to allow quick scanning.

How patent information can be used across the academic institute

Research students and faculty

Researchers traditionally rely on scientific journals, conferences and colleagues to keep up to date with developments in their field. Patents provide a valuable additional source of largely unique detailed technical information that can help you stay current and at the forefront of your technology field.

Before starting any R&D project, a thorough study of the state of the art is essential to make best use of valuable R&D budgets. Analyzing potential markets for solutions developed through R&D including technology landscaping and assessment of the competitive environment is also invaluable in guiding and informing R&D and commercialization strategy.

Figure 2: Technology landscape for Infusion Pumps
Source: Thomson Innovation ThemeScape

 

Research Office

The commercial and technical intelligence available from patents can help the research office spot emerging research and technology trends and identify potential industry research partners and collaborators.

Citations can also be used to track the downstream development of a technology and who is building on existing work and thereby help identify potential licensees or partners to approach.

Figure 3: Assignee analysis
Source: DWPI on Thomson Innovation

 

Library

Patent information can help support the intelligence needs of the University across the spectrum of prior-art research, identification of emerging technology and research trends, and support in preparing invention disclosures for the commercialization office.

Figure 4: Results list display
Source: DWPI on Thomson Innovation

 

Commercialization Office & Technology Transfer

The value of patents in translating academic research to commercial return depends on successfully identifying industry partners, potential licensees and understanding adjacent and overlapping technologies. Patent information can be very valuable in providing commercial and technical intelligence to inform these aspects.

A key technique for identifying potential partners or licensees is to review patent citations. By analyzing later-published patents that cite the invention of interest, insight can be gained into who and how others are building on the core technology, giving a glimpse into the evolution of the original invention.

Citation map for USD696712S1, Wearable visual sensor and transceiver apparatus to Monash University

Figure 5: Citation analysis to identify potential partners or licensees
Source: Thomson Innovation

 

Later inventions by Google and LG Electronics cite the original Monash University patent indicating they are building on Monash University’s technology and could be potential collaboration partners or licensees.

Conclusion

Using patent information, especially value-added sources, can help a University reap maximum benefit in directing research and commercialization activities.

By exploiting the richness of value-added data to analyze the information in patents using the full range of techniques available across the entire organization, Universities can benefit not only through improved commercialization opportunities for their research investment, but can also realize enhanced understanding of market and technology trends to better focus their activities.

To learn more about how patents information can be used right across the institute to support the strategic and operational objectives of a university, please sign up for our webinar.

References:
1 Technology Assessment and Forecast Reports, Eight Report, USPTO Dec 1977