IP Checkups custom patent monitoring and curation service supports Big Pharma Co’s successful launch of multi-billion dollar drug.
In an effort to develop best-in-class new chemical entities, in 2007, one of the world’s largest biopharma companies (~ $20 Billion market cap) turned to IP Checkups (IPC), a pioneer in patent research and analytics, to develop a system for the R&D team to track and monitor competitive patent information in real time.
With patent expirations related to its franchise products on the near-term horizon, a large pharmaceutical company with approximately $4 Billion per year in revenue needed to produce a new blockbuster drug in order to keep its share price from dropping. IPC was asked to assist the company in establishing a reliable, web based system for quickly reviewing and monitoring the most current competitive patent information.
It was critical for the solution to provide the research staff with all of the relevant patent documents, to not miss any patent documents, and remove all irrelevant patent documents. This combination of goals proved to be extremely difficult and not possible with available databases in light of the topics being searched.
IPC created broad patent searches using a combination of keywords and patent class codes to identify a “control group” of patent documents that were representative of the topic area. Then, IPC’s technical experts reviewed and summarized key criteria related to each of the patent documents in the control group and created technology categories in which to sort each document. Finally, IPC performed ongoing review, sorting and summarizing of the relevant patent documents to track and monitor newly published data.
IPC delivered the summarized data along with a PDF copy of each patent twice per week to the R&D team for several years. The information was delivered in IPC’s proprietary patent tracking and management software, PatentCAM™ in order for the researchers to stay on top of the most current published patent information.
IPC’s customer released its first approved product related to the focus technology in 2012. Several more product releases are making their way through clinical trials and the customer has moved on to monitoring and tracking patents in new therapeutic targets and mechanisms of action.
- $20 billion estimated product revenues over the next several years
- The R&D team has expanded three fold and the share price of the company has increased exponentially over the past eight years.
The latest chapter in an ongoing collaboration between Kathryn Paisner, IP Checkups’ Director of Research & Business Development, and Brady Huggett, Nature Biotechnology‘s business editor, is now available via the Nature website, or by clicking here.
This year’s data page approaches researcher rankings from a new angle. Instead of assessing researchers’ patenting efforts at their current institutions, we examined their overall patenting successes over the past five years. We also considered the broader impact of their research, using both H-index and patent citation data.
Researchers associated with at least one top-cited patent, published over the last five years, were included in the preliminary list. These researchers were then ranked according to the total number of their respective patents that were published during this same time period. With one exception, every one of these researchers had an H-index above 40, a threshold commonly associated with “outstanding” scientists.
The world’s top intellectual property value creators of 2015 were named in IAM Strategy 300: The World’s Leading IP Strategists. The IAM Strategy 300 lists individuals that possess world class skills in the development and roll-out of strategies that maximize the value of patent, copyright, trademark and other intellectual property rights. IP Checkups’ Founders, Irving and Matthew Rappaport, were named for the 6th year in a row. The IAM Strategy 300 is available at www.IAM-media.com/strategy300.
Recently, Entrepreneur.com published a short article on how to conduct a patent search. The author presented two options for inventors and innovators to “make sure your brilliant invention doesn’t already exist”. In the industry, this is called a patentability search. Protecting your unique and potentially lucrative idea from copycats and imitations that will cheapen the value of your invention is important, but it is also critical to do your due diligence and confirm that you are not replicating someone else’s unique invention and needlessly spending money on patenting.
The two options featured in the Entrepreneur article include hiring a patent attorney or independently conducting your own patent search. Choosing to hire a patent attorney will save you time and provide you with a valuable legal perspective. However, patent attorneys typically perform a search or outsource searches to a specialized patent search firm after reviewing the invention disclosure and drafting a set of claims. This results in the identification of prior art that is narrowly related to the specific claim language crafted by the attorney. Thus, inventors are not empowered to think broadly beyond the scope of their initial invention which results in less valuable patents because it leaves unclaimed subject matter on the table.
Furthermore, many patent attorneys recommend performing no prior art search whatsoever. This approach harkens back to a time when patent applications were available in paper format accessible only at the USPTO or by mail. Without a prior art search, there is nothing to look at to frame a claim set (other than the invention) which often leads to very broadly filed claims. Attorneys will suggest that no matter what claims are filed, the patent examiner will narrow them; this “old-school” approach usually results in:
- less valuable patents because if the broad claims happen to grant they can be relatively easy to invalidate
- higher costs to the patentee because additional office actions (communications between the patent office and the attorney) are necessary to narrow the broadly filed claims
- a larger file history with additional arguments and counter-arguments to narrow the broad claims that may come back to haunt an applicant in the case of future litigation
For those with more limited funds, Entrepreneur suggests conducting patent searches independently. The benefit of conducting the search by yourself is that it’s quite inexpensive and more aligned with the inventor’s goals in mind. There are numerous resources available – even a step by step infographic describing the process. However, with data scattered across various sources, it is tricky and time consuming to conduct effective patent searches without missing anything. Furthermore, it is difficult for an inventor to construe the potential value of the patent or the potential coverage that granted patent claims might support in light of the prior art.
If you are an entrepreneur, inventor, or an innovation manager, we have a secret to share with you: There is a third option. Use a professional patent search firm. A patent search firm with knowledgeable technical experts familiar with the legal process will conduct thorough, objective patent searches before the drafting of a set of claims. This more comprehensive approach, often referred to as a patent landscape search, will uncover new areas to which the invention could be applied. This will in turn enable the inventor to broaden the disclosure and the claims to cover a greater breadth of products and product features while ensuring the claims are still patentable. This enhanced search will also allow for easier Track One prosecution (fast tracking the patent’s examination) because of the breadth of the prior art that can be submitted to the examiner. The identification of additional key prior combined with a technical assessment of what you can arguably protect in light of the prior art will result in more valuable and less expensive patents.
Enter IP Checkups, a boutique patent analytics firm specializing in patent searching, strategy and competitive patent landscape analysis. IP Checkups offers traditional patent and non-patent literature searches including in-depth validity, prior art, freedom-to-operate (FTO), evidence of use, patentability, and patent landscape searches. Our team of highly trained technical experts have an average of 20 years in their respective fields in chemistry, physics, pharmaceuticals, biological sciences, electrical and mechanical engineering, among others as well as business and legal knowledge to assist you in getting valuable patents. Our experts apply a combination of Boolean keyword strategies, patent class code searches, and use cutting text analytic and visualization tools to provide you with comprehensive yet targeted results.
Professional searching is both a science and an art, which often is not well understood by patent lawyers or inventors trying self-searching. Hiring a professional patent search firm such as IP Checkups will provide you with objective and valuable insights at an affordable price. IP Checkups has earned its reputation by retaining quality patent search experts who perform accurate and reliable research while delivering digestible and actionable results.
Join IP Checkups at the NAATBatt 2015 Annual Meeting & Conference: Energy Storage – Electrifying the Future
BERKELEY, CA (December 19, 2014) – Join IP Checkups at the NAATBatt 2015 Annual Meeting & Conference – a “must attend” premier business development event for professionals in the electrochemical energy storage supply chain industry. The NAATBatt Annual Meeting & Conference is the place to understand where the business of electrochemical energy storage is going and where the best commercial opportunities in the industry will be.
This year’s program will examine the latest developments in electrochemical energy storage technology, manufacturing, and applications, and continue its focus on the battery industry and capital markets. Matt Rappaport, IP Checkups’ President, will present an innovative model to identify and capitalize on new revenue opportunities in energy storage technology.
During the Annual Meeting & Conference, attendees will:
- Discuss merger and acquisition activity in the advanced battery and energy materials
- Hear about near term developments in materials that will be making lithium-ion batteries more capable and will open new market opportunities for other types of batteries and ultracapacitors
- Hear about new applications enabled by emerging thin-film batteries that will create new business for battery and advanced materials makers
- Learn about new interests in the Department of Energy and Department of Defense that could drive commercial opportunity in the future
The Annual Meeting & Conference will be held at the Wigwam hotel in Phoenix, AZ on February 16-19, 2015. To register for this conference or find out more, visit the NAATBatt event page .