This real-life case study shows how a resourceful patent attorney involved an outside patent search firm to deliver comprehensive patent landscape analysis reports every quarter. The reports were both efficient and timely, facilitating the attorney’s end-client to keep an eagle eye on their technology space.

The Challenge

Keeping an Eye on the Competition

In order to keep tabs on their competition, a corporate end-client had asked their outside law firm attorney to prepare a competitor landscape analysis every quarter. The analysis was to capture all new patent filings relating to their main product technology area. At the client’s request, the IP attorney handled this task personally, beginning with the list of known competitors provided by the end-client. He checked for new applications on publicly-available patent resources like the United States Patent and Trademark Office (USPTO) web tools and Google Patents. Search queries were focused on the known assignees, and the search was limited by the filing date.

Limitations and Time Constraints

Limiting the search to specific assignees meant that previously unknown established players and new up-and-coming competitors would not be captured. Additionally, the task was very labor intensive, and there was potential for delay during busy quarters. Further, the attorney suspected that there may be better ways to present the results so that the end-clients could glean important competitor insights more quickly.

The attorney made the client aware of the limitations of the existing approach and recommended involving a professional firm of patent landscape search and analysis experts to broaden the search scope and ensure more comprehensive coverage and analysis on a routine basis.

Engaging a Trusted Patent Landscape Analysis Partner

The attorney sought the help of a trusted patent search and analysis firm known to be well versed in the technology domain, and with proven expertise in delivering a solid and insightful work product. Having engaged TPR for several other ad-hoc patent searches, the attorney had confidence in TPR’s technical capabilities and deliverable.

The Solution

Skilled Patent Search Analyst to Build Comprehensive Search Strategy

To meet the desired outcome for the quarterly patent landscape analysis reports, the attorney engaged TPR. The project was assigned to a senior TPR patent search analyst on the Engineering team. He had been a professional patent search analyst for over 20 years, was a registered patent agent, and held degrees in mechanical and electrical engineering. As an expert in the given technology domain, he was well-accustomed with the relevant IPC/CPC patent classifications and the most appropriate commercial databases for the patent landscape analysis project at hand.

A robust search strategy was developed to capture all potentially relevant patents, including those from new and unknown competitors.

Identifying New Competitors

During the patent landscape analysis, the TPR patent search analyst identified many relevant players. The search covered 20 years into the past to capture all active and historically relevant patents as well. In this way, many previously unknown players in this field were identified.

Deliverable – Analysis plus Visualizations

TPR analysts have gained a wealth of knowledge in competitor analysis over the years, through collaboration with IP attorneys, R&D scientists, and engineers. This experience allows them to recommend options which would provide clearer and more actionable reports.

Previously, the attorney had to spend additional time grouping newly located patents by “features of interest”. The TPR patent search analyst used the given features to broaden searching, and provided notes for each reported reference indicating whether those features were present. For further insights, the patent search analyst provided a subjective ranking of references as a guide during review. Provided in an excel spreadsheet, the results were easy for the attorney and client to assimilate.

A summary chart was prepared, showing all assignees and counts for total publications, as well as split counts for each feature of interest, for an at-a-glance result set summary. TPR also prepared a series of visualizations in the form of graphs and charts to easily describe meta-data about the result set.

For an additional layer of confidence, TPR also provided a full search overview with the results. In this overview, the patent search analyst stated explicitly which databases were used for searching, what classifications were covered, and what keywords were used.

Once the patent landscape report was completed, a debrief call was scheduled between the attorney and TPR. During this call, the attorney was able to walk through the report, make certain that he understood the strategy so that he could confidently explain it to his end-client, and asked for “tweaks” to the deliverable so that it was easier to present. Once this call was completed, the attorney was prepared to immediately present the competitor patent landscape results to his client.

The Business Impact

Meeting Objectives and Confidence in Results

As hoped, the patent landscape analysis was more thorough than what the busy attorney could have accomplished on his own.

The competitor patent landscape analysis completed by TPR met five major objectives to give the attorney and end-client a fresh view of the competitor patent landscape with eagle-eye clarity.

1. Capture relevant new publications from known competitors
2. Identify new players not known to the end-client
3. Present results in an easy-to-understand, insightful and actionable format
4. Quarterly updates delivered on-time
5. Peace of mind and confidence in the analysis and findings

Quarterly Updates to Stay Well-Informed

Once the attorney presented the search results and analysis, the client asked that TPR conduct their future competitor patent landscape searches on a quarterly basis. The project preferences were saved so future landscapes would match their preferred format. Most importantly, this task was no longer on the attorney’s desk, and he could be confident that that the patent landscape analysis would be updated regularly while he worked on the other matters for his client.

If you have questions about patent landscapes, our TPR search team is available to discuss your IP research needs. Contact us.

TPR is the premier U.S. search firm for high quality patent and non-patent literature searching and analysis. As a recognized leader for over 25 years, TPR is widely known for its exclusive range of subject-matter IP Search Experts, high performance search results, an impressive global reach, and a passion to go the extra mile to locate critical information. TPR has a team of U.S. based IP Search Experts and can also conduct foreign language searching on-the-ground in Europe, China, Japan and other locations. Clients across engineering, high-tech, life sciences and chemistry turn to TPR for Validity/Invalidity, FTO/Clearance, Patentability, IPR, Due-Diligence and Landscape/White-Space search projects.

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