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Discussion of all things patent mapping and analytics.

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Most patent searching is based on keyword or semantic searching. I understand this fully and use keyword searching a lot myself.   

However from long experience, I have learnt that relying on keyword searching alone will see a lot of highly relevant patents missed or incorrectly ranked in a relevancy list of patents found.  For this reason, we recommend to all searchers that they supplement their keyword or semantic searches with a citation based search such as Cluster Searching (where the seed patents for the Cluster Search could be the best hits they find using other search methods). 

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Viagra, which is a trade name for the drug sildenafil, has been a major bestseller for Pfizer earning it up to US$2 billion annually. Sildenafil was originally tested for use in dealing with hypertension, but the side effects on penile erections were soon noticed. 

The first patent for sildenafil was US5250534, which was filed in 1992, expired in 2012 and covered sildenafil itself, but neither of its two family members cover its effect on erectile disfunction or impotence. Pfizer followed up this up with US6469012, filed in 1994 for Pyrazolopyrimidinones for the treatment of impotence and hence clearly targeted at impotence. Equivalents to US6469012 have been filed in a number of other countries, including in Europe and as a PCT patent. US6469012 is slated to expire in 2019. 

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Background

Ambercite recently published a report on the top 10 patents in Australia, which has been well received. For another perspective on innovation in Australia, we have been collaborating with Andre Vermeij of Kenedict in the Netherlands. Andre has developed an innovative approach for mapping collaboration and collaboration opportunities, and was interested to apply this to Australian patents. The resulting study is shown below - and is a practical example of what is possible when disparate companies collaborate (note that this blog is jointly published by Kenedict here).

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In my time with Ambercite I have been lucky enough to meet many patent examiners, and in this process I have become aware of how diligent the patent examination process can be - in many cases taking two to four days to search for relevant prior art. 

These days patents that are to be examined often come with a pre-existing list of prior art, for example prepared during the PCT examination phase. As an example of this, consider this Nike patent WO2014143811, for a Shoe with resilient heel. If we look up this document in Google Patent or Espacenet, we can see that it has four listed citations: 

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Leading patent analyst Tony Trippe has just written a new blog featuring Cluster Searching - check it out here or by clicking the image below: 

Trippe-Blog.jpg

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Australia has a long history of innovation, dating back over 50,000 years ago to when the original aborginal inhabitants first learned to use bushfire as a form of farming. Since then Australian innovators have added much to the world, including refrigeration, the torpedo, military tank, electronic pace maker, ultrasound and the black box (even if the 'black box' is orange in the figure below).   

blackbox.jpg

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In a recently published blog post  I discussed how rapid and simple the use of Cluster Searching can be.

Yesterday the US Supreme Court ruled on Commil v. Cisco, arguing a belief that a patent was invalid was not a defence in a finding of inducement.

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Tagged in: Cisco Commill
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One of the tasks that patent managers get called upon to do from time to time is patent due diligence during the buying or selling of companies. In theory a good due diligence assessment should include a patent attorney review of the every patent of the company concerned. Unfortunately in practice there is rarely the budget to do this, meaning that due diligence assessment is often limited to:

  • A simple legal check, namely that the patent details such as numbers are correct. While undoubtedly important, this is only part of the picture
  • A superficial review of some of the leading patents
  • A warranty provided by the vendor that they know of no IP issues. While these warranties are most likely provided in good faith, just because an IP risk is not know about does not mean that it does not exist.

I think we would all agree that a more comprehensive assessment is a good thing, but few of us have unlimited budgets. Ideally, this review would cover the following areas:

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Fujifilm vs Motorola (California Northern District Court, Case No. 3:12-cv-03587) wrapped up last week, with the Jury ordering Motorola to pay Fujifilm US$10.2 million for its infringement of claims 1, 7 and 11 of US6144763. The jury also found infringement of US6915119, but then that the asserted claims 1, 13, and 35 of this patent were obvious. 

Altogether, five patents were asserted by Fujifilm in this case:

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Cluster Searching is available for commercial access and free trials to qualified applicants. Cluster Searching is accessed via a very simple online interface, as shown below

SampleSearch.jpg

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