We all know that studying patent citations can reveal a lot of insights – Be it understanding the strength and potential of a patent, or figuring out the strategies being followed by companies. But that is not it. Studying patent citation data can also reveal some sophisticated insights that can help an organization expand its business and/or its patent portfolio.
If you were looking for a way to strengthen your patent portfolio and/or your market position, you have arrived at the right place. In the next few hundred words, we are about to reveal a strategy that could help you achieve your portfolio strengthening/market domination goals. But first, let us look at a small study regarding backward citations — the patents that have been cited during prosecution of your own patent.
In 2016, two researchers at National Taiwan University published a paper that examined and entailed the complementary relationship between acquired technologies and self-owned technologies. In essence, they tried to determine whether or not externally acquired technologies can be fully integrated with technologies owned by an organization.
For the paper, they studied the portfolio of Taiwan Semiconductor Manufacturing Company (TSMC) — the largest semiconductor foundry in the world. Among other facts, the study highlighted that TSMC had built its portfolio of photovoltaic technology by acquiring patents. Now, that wasn’t the noteworthy insight here, but this: Most of the patents that TSMC had acquired were those that had been cited during the prosecution of their own patent applications.
In fact, TSMC had not confined this strategy only to photovoltaic technology; rather they had acquired numerous patents related to other technology areas; chiefly, those patents that had been cited by their own patents/applications.
Now, one could surely think: “Perhaps, this is an outlier scenario”. But hey, stop right there. I must tell you that TSMC is not alone; a whole bunch of other companies is following these same steps. The list of examples contains big shots like Google, Weatherford, and many more.
Yes, these companies go on to acquire patents, which were cited as references during the prosecution of their own patent applications. This valuable yet much-underlooked strategy makes sense too, for multiple reasons. Instead of blatantly stating the reasons, let us try and understand this strategy with the help of examples.
Note: To make this article short and sweet, we will have a look at few cases for two of the prominent companies (Google and Weatherford) to gain an insight into how this strategy has been (read: can be) used to strengthen a company’s patent portfolio.
How Google employs the citation tracking strategy?
We analyzed Google’s patent acquisition strategy and figured that it takes into account the patent citations made by an examiner during the prosecution of its own patent applications.
Let me give you three instances:
Case I: In 2007, Google filed a patent application numbered EP2076853A1. During its prosecution on Dec 23, 2009, IBM’s patent US6718365B1 was cited by the examiner. Following up on this, on Aug 17, 2011, Google acquired the cited patent (US’365) from IBM. Thereafter, it withdrew its own patent application. (Perhaps the patent acquisition sufficed its purpose here!)
Case II: US6073130A (owned by AT&T) was used by the examiner as a prior-art in the prosecution of a number of patents filed by Google (some of them being US7412708B1, US8645391B1, and US8825471B2). In March of 2017, patent US’130 was acquired by Google from AT&T.
Case III: Google had acquired Patent No. US8024223B2 from IBM in 2011. Patent US’223 was cited by the examiner in the prosecution of a patent application by Yahoo!(US20090325602A1). The latter application was granted in 2013 as US8452855B2. Following up on this in 2014, Google went on to acquire the US’855 patent.
Did you notice something here?
The third case indicates an anomaly? Google kept an eye on where its patent US’223 was being used by the examiner as a prior-art, probably with the aim to identify potential acquisition targets. A tactical addition to the original strategy – Companies can track the patents in whose prosecution its own patents are being cited by an examiner to identify potential licensees/acquisition targets.
Also, it is not to be neglected that each of the patents acquired by Google in the above three scenarios was related to core technologies of Google, namely Search Engine Optimization and Distributing Advertisements. Thus, these acquisitions sure look like a calculated move from Google’s front, as the acquisition of each of these patents went on to bolster Google’s patent portfolio.
Weatherford Technology Holdings
For over a decade, Schlumberger’s patent US6333700B1 was being cited during the prosecution of Weatherford’s patents — last being during the prosecution of US8991489B2 (shown below). Finally, in April 2017, Weatherford Technology Holdings had the realization and went on to acquire US’700.
These were just a few examples – to maintain brevity – and there are definitely many more. Acquiring patents that were cited during the prosecution of your patents and/or acquiring patents that cite your patent as prior art can be a great strategy.
We just listed a few instances of this strategy at practice, and suggest you adopt this strategy if you want to bolster your portfolio. [A little free advice!]
Now that we are done with the strategy part, some of you might have this follow up question – How to track these citations?
Well, let me rephrase this to a much better question:
How to track patent applications to gain brilliant insights?
A comprehensive patent tracking service is the answer to this question. One that could assist you with the following:
It takes your current patent portfolio as a pivot point and tells you if there are certain patents that are continuously/regularly being cited in the prosecution of your patents — thereby indicating potential candidates for acquisition.
It alerts you whenever a patent of yours is cited as prior-art by an examiner. More importantly, you are informed if your patent gets cited and is a reason of a rejection. This hints at the potential licensing/acquisition opportunities.
You can either setup such service within the IP department of your organization, which might accrue a lot of opportunity cost, or hire a service vendor that offers such services. Since you’re here reading this, here is a tip that would save you the trouble of searching for that vendor.
GreyB provides a comprehensive patent tracking service, and we can perform this exercise based on how often you would wish to track your portfolio — even if that’s on a weekly or a fortnightly basis. With us being your service vendor partner, you could rest assured that you’d be implementing the right strategy and making the best decisions.
Having doubts about whether to go with us or not? Maybe understanding our thought process would help. Or perhaps this!
Made your mind and want to discuss details? Click here!
Authored by: Rajesh Agarwal, Manager, Patent Analytics and Priya Vashishth, Senior Research Analyst, Patent Analytics.
The patent set was already exhausted. Searching on standards for hours started feeling like inside of a spiral that keeps tightening as you go down.
In between, some references emerged undeniable as the Sun in a clear sky. The truth, however, sometimes disappoints. The references had a date after the priority date or as the same date of priority. Within few seconds dark clouds again covered the metaphorical Sun.
All our prayers were going to god’s spam folder. An unknown force pressed the reset button and we were back to square one.
Despite all that, we did get past the finish line.
We have worked extensively on invalidation searches, but cases like these are really rare. However, we had a good start, as we found an important lead in the very start of the search. While checking the file history of the patent, we observed that the concept of random access procedure was used in developing many standards. So we attempted to build different routes to get to the required result using that lead.
The initial two routes were:
Searching Standards, and
We started with searching patents. However, there was not much patent literature to analyze and it was clear that searching patents are going to be a futile effort. We quickly shifted our efforts on standards, hence.
Searching in standards is akin to looking for a pearl in an ocean. Since we were not able to narrow down to a particular standard, the literature became overwhelming and a big challenge. Here at GreyB, we believe that hard challenges help bring out the best strategy. That’s what happened.
Search each change request from the beginning of the development of the standard, or
Backtrack the change request from the point of introduction of the equation
Since the literature was huge, we decided to check the change request in reverse chronological order so as to observe the development of the respective documents.
On checking each change request, we identified a paper by CATT with amendments. The suggested amendments had an equation similar to the required equation. Perhaps, only a few of the suggested amendments were implemented. Maybe that’s why the updated normative text documents related to the identified change request did not showcase the required information.
However, the amendments showcased the prior knowledge of the equation and, hence became a relevant reference. The paper was dated before the priority date of the subject patent and we were able to build a strong case for invalidation for the client.
Working on this was not a cakewalk, but with firm determination and some smart maneuvers, even the almost impossible becomes possible. So was the case with this case.
Not all prior art searches are run equal. Some are complex, some are easy, and some test your temperament by pushing you to the dark abyss of self-doubt where you question your abilities and skills. This is the stage that demarcates winners from runner-ups. The thin line of demarcation that separates a winning patent search team from a runner-up is due to the thought process.
Winners don’t consider every prior art search as a sprint. They understand that a lot of time, it is a series of sprints or a mini cross country race. Further, they know very well that brute force isn’t an answer. A prior art demands you to be strategic and agile at the same time.
The story I’m sharing today is one such case. It wouldn’t have been possible to find the reference in this case if we would have used:
A closed mind approach
The patent under study was related to a cigarette filter having gas adsorbing material and certain specific composition requirements. Our objective was to invalidate the patent for Inter Partes Review.
In patents such as this, which have specific composition requirements, the task of finding prior art for inter partes review search may become a little difficult. At GreyB, challenges are considered stepping stones to success. With this thought, we started thinking – How to solve this case?
We began with a basic search to understand the level of availability of required information in the patent literature. We observed that patents disclosing filters with the gas adsorbing material were in abundant. The specific composition requirements, however, were not being met.
This meant we had to first find sources that discuss composition. We found academic literature disclosing composition information but not to the level of our requirement.
To find a pattern in increasing chaos, the senior members of the team and the members involved in the project held a brainstorming session. The agenda was to shed light on the dark and find relevant unexplored areas.
The discussion uncovered a fact that every filter (having toxic nature) has a chance to get tested by a federal agency. There were possibilities of the company submitting the test results to the federal government during the approval process. Hence, we had a chance to find relevant information on the federal agency’s website.
Similarly, we brainstormed other parameters and created search strategies. We had enough pointers to start moving. So, we explored all such options.
During the search, we learned another fact that laws in certain countries like Canada – similar to food products and drugs – mandates a cigarette manufacturer to publish the compositions on a cigarette packet.
You might have guessed what we would have done! Yes, we purchased all different cigarette packets that were available in Canada. Also, we located private testing facilities to confirm the required composition in certain filters.
We actually reversed the process to invalidate a patent. In invalidation search or Inter Partes Review search, conventional way is to spot who came up with an invention first. We started with spotting the companies that were actively practicing it.
The thought process was that out of many active companies, there is going to be one that came up with the composition. Further, another mission of the search was to not let the information hide if it exists.
After the search, we found a company having a high probability of using the same composition in its filters. We focused the last leg of the search on the company.
A deep dive uncovered a relevant document disclosing filters having gas adsorbing material with the same specific composition information. The document included all the information we were looking for and its publication date was before the priority date of the patent under study.
Tada! Mission accomplished.
Be it a pure play invalidation search Or Inter Partes Review search, our objective remains unaltered – ‘If it exists, we will find it’. Some people might think our success rate could be attributed to the intelligence of the team, which could be the case, but the main reason we feel we have achieved success in our objectives is that we simply love what we do. It had always been this way, and will continue in the future too.
This is the third article of a 3 part series on Smart Business Development Strategies for IP Law Firms which discusses how to use data to build more clients for your IP law firm. The first article explains how you can spot your differentiation factor which you can read by clicking here. The second article explains strategies to get more business from existing clients which you can access by clicking here.
Also, to save you from the hassle of switching between the 3 parts, we converted this whole series into one book so that you can read/print it later. You can download the pdf by filling this tiny form below –
A few months back, I was in Atlanta, Georgia. During the visit, I met and had a conversation with Jack*, a partner at a well-known law firm. Jack expressed his uncertainty on converting a large organization into a client, who was trying to venture into the domain of Blockchain.
*Note: The name of the client is changed to ensure confidentiality.
The reason of uncertainty was not the competition but rather his inability to showcase an expertise in the new domain of Blockchain.
Since we were talking, he asked whether I had some concrete insights on the domain that he could show to the potential client? This could help increase the confidence of the client in him and would showcase that his firm is investing in knowing more about the industry.
And that was the key point. Jack is not the only partner facing this problem. In my several years of experience, I have seen time and again law firms facing issues in converting prospects into clients due to a lack of knowledge in the domain of work of potential clients.
These very law firms could have succeeded in converting prospects, had they followed up with factual data constituting concrete insights on the domain of work of a prospect. A method which guarantees a solid conversion rate.
How can you go about it? – You ask.
Well, let’s walk you through it.
What Factual Data Should We Share with the Potential Clients?
What factual data to consider while approaching a potential client is a question that perplexes every attorney. It doesn’t matter if their end client is an IP counsel of a large organization or a CEO of a small company, the problem bugs everyone alike.
Therefore, it’s important to educate your client about his industry. Here we are not talking about sending anything just for maintaining a touch point but sending really useful information with an intention to genuinely help them. When you help people with genuine intention, they automatically trust you.
Now, you might be wondering, what I should share about the industry of a potential client? After working with IP counsels of a lot of Fortune 500 companies in the past decade, I can tell you various interesting insights that an IP counsel, most of the time, wants to know. Below are few of them:
Are his competitors buying patents? What type of patent reassignments is happening in the industry?
How much competitors are investing every year for their IP?
Who are the new players (large and small) trying to venture into their domain and filing patents?
A lot of firms are following traditional methods while smart law firms and attorneys are edging their peers by following these routes. Clearly, they’re using these advanced ways of handling their clients – educating them and telling them how they can be better than their competitors.
How can you get such information?
One way to get this data is to gather and analyze such insights on your own by performing some quick searches on patent databases like Derwent (Formerly Thomson) or Innography. If you feel that you have less time, you can get access to specialized tools or platforms (like one provided by GreyB) that provide such sort of intelligence and information.
Sometimes you may not even want an access to a platform and rather solely seek the information you require. In such cases, a partnership with a company that can provide such insights will do the job for you.
Are you going to prospect a new customer? Would you like to convert by leaving an impression that you are different from your peers and will add value?
If you just nodded in affirmation and you don’t want a complete access to a platform and rather want insights for one or two potential clients, or about what your competitors – law firms, attorneys – are up to, you can approach GreyB. We would be more than happy to help. Click here to get in touch.
This is the first article of a 3 part series on Smart Business Development Strategies for IP Law Firm which discusses how you can spot your differentiation factor. The second article in the series explains strategies to get more business from existing clients which you can read by clicking here. The third part of the article is on how to use data to build more clients for your IP law firm which could be read by clicking here.
Also, to save you from hassle of switching between the 3 parts, we converted this whole series into one ebook so that you can read/print it later. You can download the ebook by filling this tiny form below –
Business development is something everyone struggles with and law firms are no exception. According to a Thomson Reuters survey, 78% of the law firms identify acquiring new clients as their greatest challenge.
You see, every business – big or small – wants a huge clientele, for which it pursues new prospects by showcasing their uniqueness and potential. And how do they go about it?
They spend numerous hours trying to craft and refine special pitches portraying them to be the best among the rest. The creme de la creme. But there’s a problem with that approach.
The problem isn’t in refining a pitch for hours. The problem is that you are not the only one who is following that approach.
What you will discover at some point, is that most of the attorneys and law firms are pitching identical value proportions via an identical speech and presentation. Pitches then start losing their relevance by adding to the noise. They become predictable and boring to the level that your pitch has no return on investment, in terms of time and resources spent.
The most obvious approach is often most boring.
What could be done to avoid being boring?
Well, I might have just the answer to your question. Stay with me, as I show you how to craft a pitch that cuts through the clutter and makes the impact you want. I would also be showcasing a tool which would help you appear way more knowledgeable than your peers and differentiate you from the rest – something everyone struggles with.
The Biggest Problem with Current Pitches – Lack of Connection
One mistake even experienced salespeople make is of not trying to connect with a prospect. Instead what they do is: talk about themselves, their value proportion and things they are good at.
In fact, the secret of a good pitch is to start with a prospect’s weak areas and the problems they might be facing.
How to spot those, Deepak if I’m pursuing a new prospect? – You ask.
Apt question! You have to do some research for that. In the majority of the cases, if you ask me, they themselves may not be aware of the majority of their problems. So when you discuss problems they face, they feel a connection. Not to mention the fact that it portrays you have done your homework beforehand, a sign that you care.
Let’s take an example. Suppose you are approaching a particular corporation which has, for example, hundreds of patents. If you want to approach them for selecting you as a potential law firm to handle their patents, you should talk about how the company can improve their patent portfolio or generate extra revenue from their patents. That should be the conversation starter.
If you pick all the patents filed in last three years of a particular company and represent the number of office action and their grant time, you can easily figure out few applications having above average office actions and grant time.
Chances are you may find applications with 13, 14 or 15 office actions. I have come across such patent applications at multiple times. Most of the companies with such patent applications are unaware of these things. They are handling so many dockets that they can hardly care or are aware that something like this is happening.
When you inform them of these cases with the reasons, you make an impact and build a connection – a connection of trust that you know their unknown struggle and also have a solution. Identify such office actions, find the reason, and in the next step provide a solution.
Now that we know the secret to craft a perfect pitch, the next question that stands is: How you will convince them that you could help them with a faster prosecution process?
How to solve the Prosecution problem?
Data is the answer. You need to have an access to few platforms that provide you the data and simplify the analysis.
One such platform is the Examiner Analysis Tool. It helps you find which examiners are tough, which examiners have a better grant rate and other important points like which examiners prefer what.
You can easily advice when an application being examined by a particular examiner is easy to receive a grant. If an examiner is tough, you can craft a strategy by studying an examiner in detail to exactly identify what clicks with that particular examiner.
This is an easy strategy if you have data. Examiner Analysis can pull out patent applications of a particular company for you, their prosecution status, and examiners analyzing them. You will be able to advise what an examiner will do next and will appear way more knowledgeable than your peers that may not be using the data in practice.
Let us take an example to drive the point home.
Examiner Analysis Tool at Work
Consider an attorney dealing with examiner Thomas Timothy, for instance. Using Examiner Analysis Tool, we found the examiner having pretty bleak grant rate of 18%. From the data, it could be inferred that the attorney’s chances of getting a patent application through his desks are low.
What would you do next, if you were the attorney in question?
Can you get the patent granted or not? If you can answer your potential client, you give him one more reason to trust you. Having access to a data analytics platform can help you figure the working pattern of an examiner and craft relevant strategies for faster prosecution.
Another benefit is that you blend your experience with factual data which works. When I say this works that means this influence the decision of the people you are pitching to.
The confluence of your experience with data analysis is a powerful combination that can help you get to the next dimension where smart patent prosecution strategies exist. When you share these methodologies with your client/prospects, you are not just another patent prosecutor or another law firm but a smart patent prosecutor from an intelligent next-gen IP law firm.
GreyB’s Examiner Analysis is one such tool that helps you blend your experience with data to build smart strategies. You can get a free one-month access to the tool after signing up here: Click here to start your free trial.
This is the second article of a 3 part series on Smart Business Development Strategies for IP Law Firms which explains strategies to get more business from existing clients. The first article explains how you can spot your differentiation factor which you can read by clicking here. The third part of the article is on how to use data to build more clients for your IP law firm which you can read by clicking here.
Also, to save you from the hassle of switching between the 3 parts, we converted this whole series into one ebook so that you can read/print it later. You can download the pdf by filling this tiny form below:
In our earlier article, we answered the question – How to craft a pitch that sets you apart from the rest?
Now the next question is whom to pitch? Or let’s put it this way: What can get us more ROI – approaching new prospects or your existing clients for more work?
I have seen this question coming up a lot in our internal discussions. I believe this is a big strategic question for every professional service which gets ignored as well. The main objective of business development is to get more work no matter whether it’s coming from a new client or from existing ones.
But before we go ahead and answer the above question, let’s have a cold hard look at a fun fact.
Yes, it takes five times to attract and gain business from a new client than additional business from an existing client. I’m not saying you should ignore adding new clients. What I’m saying is – your existing clients know the quality you deliver, they trust you, they have talked to you and would like to offer you more work if you suggest them ways to add more value to their business. You should not ignore them and strive to get more work.
Now the next question that many people pose after hearing this is – How to add more value?
Well, it need not be related to doing the same work that you have been doing for them. Instead, you will have to get creative and think what other problems your existing clients are facing which can be solved through your expertise.
In our today’s brief time together, we’ll discuss how you can go about it. Let’s get started.
How to use Differentiation to Increase Business from Existing Clients?
Let’s consider for instance Client A. He files 500 applications in a year but takes your help in filing 150 applications only. He gives 350 applications to other law firms. Since you are his existing vendor, your chances of getting those remaining applications may be higher than others.
To get the details of all the law firms and attorneys handling the remaining 350 applications, you can use an analytics tool like Examiner Analysis.
Examiner Analysis tool not only gives you details of the clients but also reveals grant rates, no. of office actions and similar other statistics of the law firms.
PS: By grant rates above I mean how many patent applications they can get through an examiner desk.
While working with different patent counsels at many Fortune 500 companies, I discovered that IP Counsels try to have multiple law firms working on their patent applications. This helps them in maintaining competition and averting chances of getting stuck with a single law firm. IP Counsels, however, don’t track the above metrics – grant rate, no. of office actions, et cetera.
As a result, even if you perform way better than a top law firm under a particular art unit, there are fair chances that you may not be getting all the applications filed by client A in that art unit. However, if you showcase to client A that- “Look at the data, we do way better than others in these art units and can save your time and money by this amount due to fewer office actions and higher grant rate”, you, for sure, will increase your chances to get more business from him.
Hence, rather than hunting new clients, first look at your existing clientele and figure out ways – using data – how you are better than others and get more work because you deserve that.
Why Differentiating yourself is important more than ever today?
Before we proceed ahead, I have one question for you.
Do you actually face problem differentiating yourself when you talk to your client? Do you have a clear differentiating factor reinforced by your experience and skills?
Well, the problem the attorney world is currently facing is of commoditization where every attorney is skilled and every law firm is better. Hence, most of them face problems when it comes to differentiating themselves. The number of years used to be a great differentiating factor, but now we live in a world where we are drowning in a sea of information and data. This, to a great extent, has decreased the value of no. of years of experience as a differentiating factor by several folds.
Today, an attorney with 20 years of experience may face problem in differentiating himself from his colleague with 10 years of experience. What does matter today is how they work as both can do the same work.
The situation becomes tough when you try charging high only on the basis of your experience. You can’t do that anymore. It was possible in the past but not in current times. The startup culture where the upstarts are disrupting juggernauts has played a fine role in ingraining this philosophy everywhere.
What you have to do is you have to give them enough facts and reasons to select you. And that means having some factual data to show them. This is one of the strategies that can be used by law firms. You can work on this to get more work from the existing clients.
I’ve also shared another strategy below on a similar line.
A strategy to increase business from your existing clients by showcasing your differentiating factor
We have discussed the importance of differentiating factor and why you should get more work from your existing clients. Now I’ll walk you through a strategy which if you implement can help you fetch more business.
Once I was once talking to one particular client who had a patent under the prosecution stage. I found the application was being handled by a tough examiner who belongs to an Art Unit with low grant rate. Thus, there were high chances of the patent not receiving a grant.
You must have been under such a situation in the past where a particular examiner proved to be a tough nut to crack.
What to do in such a situation?
Worry not as we have the solution.
What you can do here is consult your client and let him know that you have an access to a platform – Examiner Analysis (Click here to start your free Trial) – that on the basis of historical analysis on how patents are classified into different art units can help you know where your application may go. You can also let them know that the platform can let you know the grant rates of these art units.
After that, you can take a few patent applications and run them through Examiner Analysis. This will help give an idea to your client how a patent application gets classified and get assigned to an art unit.
An application gets assigned to an art unit based on specific keywords. Now you can consult your client and tell him, “ If I make these changes in the draft of the patent and replace these keywords with these, it may go into this art unit which has a grant rate way better than the one in which it was previously headed to.”
Let me help explain this with an example.
Suppose you picked an application with keywords that were taking it to TC3622. Now TC3622 is unpopular for its low grant rate. You, in the next step, figure out, let say, that if you change marketing to merchandise, the application may get redirected to TC2654 or TC2145.
Now, these two art units have an 80% grant rate as compared to the previous art unit which had only 56% grant rate. That is a big difference. These skills, again, differentiates you from all the others who are using the traditional way of patent prosecution.
You have got a smart way to prosecute the patent. Also, I can assure you that IP counsel will love to have this as one of their KPI (Key Performance Indicator) – how they can reduce the patent prosecution cost or increase the grant rate of a number of applications that can get granted.
Offering such a solution can increase your chances of being hired as compared to others by multifold. A problem solver is a ubiquitous requirement. Everyone wants to work with people with intelligent and innovative solutions to their problem. Someone who doesn’t take decisions just on the basis of his experience, but takes into account data and can figure out what could happen next.