Intellectual Property (IP) has undergone changes, correlating with the rapid developments in technology, inventions and open source software; it has never been more important to be ahead of the game when regarding patents and small print. We speak with Chris Holt, who has over 15 years’ experience as a patent attorney. He reveals where companies often slip up when regarding trademarks and how companies waste money by not thinking on an international level.
With data being readily available and easily accessible, how have you seen the IP world change?
There was a time not so long ago when many companies were willing to invest significant and sometimes outrageous amounts of money in creating as many intellectual property assets as reasonably possible. The adopted philosophy for many was to file first and evaluate asset value later. Unfortunately, many companies came to understand the susceptibility of this approach to lead to waste.
Information service providers have recognised that a strong commercial opportunity lies in deriving knowledge from publicly available IP data sets. For example, from public data sets the patent allowance history of most any patent examiner can be derived. This information supports the creation of knowledge about whether a patent is likely to be granted in a pending application, when a patent is likely to be granted, and whether a granted patent is likely to have any significant legal value. This and many other categories of IP analytics are rapidly changing how companies manage their IP investments.
The day is rapidly approaching when a company that does not make analytics informed IP decisions will be at a significant competitive disadvantage.
What more do you think can be done to ensure data services and products are better protected against copyrighting? How do you see the IP scope evolving in the next few years?
Information service providers that specialise in analytics based on publicly available data sets should probably accept the fact that there will be some competitive risk. There are important areas beyond data content where it is important to invest enough product development dollars to maintain a competitive edge.
For example, a constant stream of quality innovation is a great way to hold competitors at bay. Customers appreciate having the latest and greatest capabilities. If you are always one step behind the cutting edge, you will not succeed.
Another weapon against competition is insistence on a high data quality standard. Much of the data that comes from public sources is messy and requires significant clean up. Customers will always prefer a provider that goes the extra mile in this area.
Finally, excellent customer service is critical. Companies appreciate easy accessibility to experts that understand the data and tools with which they are working. They appreciate customised insight into how certain analytics can be incorporated effectively into their own workflow.
What do you think is the best way for companies to ensure they adhere to all the small print of another organisation’s patent and trademarking?
This really becomes a question of risk management. A company could spend unlimited resources and never completely eliminate all risk in this category. A good approach is to periodically assemble a group whose task it is to brainstorm all areas within the business where an IP encroachment might arise. Depending upon the sophistication of the group in terms of IP knowledge, it might worth hiring an IP specialist come to speak about the range of areas in which IP challenges might arise within the specific context of the business. It might also be worth having an IP specialist help to create an understanding of the level of risk associated with each item on the list.
There will likely be some items on the list where risk will be easy alleviated. For example, it may be as easy as finding and complying with a competitor’s brand style guide to perfect a product reference within a piece of marketing material; it might be worth getting a quick legal opinion as to the appropriateness of the product reference. Other items on the list may present a bigger challenge, for example, if it is desired to ascertain whether a new product concept might infringe a product of another, it could be a good idea to consult with a patent professional.
What do you think is the best way to keep on top of the IP sector on an international basis?
I think an excellent approach here is to periodically invite an IP professional to give a presentation from all jurisdictions where you have a market outside your own jurisdiction. Most law firms would likely be willing to provide someone to provide this service for free or for a reasonable fee. If you have an IP attorney in your own jurisdiction that you trust, he/she should be easily able to help you find a reputable attorney in almost any other jurisdiction.
How often do companies disregard the differences of international IP, and only consider it on a national basis? What problems can this pose?
As part of my role as a patent analytics specialist, I am in a position to easily compare how long it takes companies inside and outside the US to obtain patents in the US. What we often see is that companies outside the US tend to gravitate to use the same strategy negotiating with the examiner as they utilised in their own jurisdiction. This can be a drastic mistake. For example, some companies in Japan make very small claim amendments that rarely are effective in the US. This significantly prolongs the process of getting a US patent and therefore increases the cost. There are information tools in the market now that make it easy to see examples of claims that have been previously allowed even by a specific patent examiner. A little bit of understanding can go a long way when it comes to spending money as efficiently and effectively as possible.
Again, having someone speak to you specifically about the differences is a great way to stay aware of possible caveats.
What should companies look for in regards to their IP property solutions?
Companies seeking solutions to enhance their IP workflow, should work with a provider that is committed to this space, in terms of investment in new IP solutions, product enhancements, customer service and support.
Being that trusted advisor and thought leadership provider in the IP space is mutually beneficial as it allows for a dialogue between client and service provider, which in itself promotes innovation leading to better IP solutions for IP Professionals.
Is there anything else you would like to add?
LexisNexis IP Solutions is organising a webinar on 2nd March where Chris Holt takes a closer look at foreign filing at the USPTO, he uses statistics on art units, examiners, Office actions, RCE’s and law firms which reveals insight in how the USPTO works and how you can benefit from this knowledge for your own filing strategy.