Patent portfolio analysis using Licensing Profiles - Case studies on patents filed by Oxford University
24 Aug 2021 - In an earlier blog, we discussed inwards and outwards Licensing Profiles for patent portfolios, and gave case studies for Canva, Tile and Tinder. We showed how these could be used to suggest Inwards-Licensing risks and Outward-Licensing Opportunities, and then reinforced this with a case study of patent litigation against Apple.
But what if a patent portfolio has a range of quite different patents for different technologies? For example a university or research institute? In these cases, it makes more sense to look at individual patents, as each may have a quite separate Licensing Profile.
We will provide a case studies based on four different patents filed by Oxford University. Oxford has filed many patents, but we selected four of their more highly cited patents, each with a number of years left before expiry to use as case studies.
So let’s look at these four patents.
We need to also consider related patents also filed by Oxford
However there is a catch. Some of these highly cited patents should really be grouped with other and very similar patents also filed by Oxford. We often see that patent applicants choose to protect developments with more than one patent family - with the related patents filed at the same time or later.
For example, the first patent we will look at is US9683043 for PD-1 specific antibodies and uses thereof filed on 12 September 2008. If we look at this patent in Ambercite, we will quickly see that there was another patent family filed by Oxford on the same day with the same title. This is unlikely to be a coincidence, so we will analyse these two patents together.
1) Two patent families for PD-1 specific antibodies
US9683043B2 and US9181342B2 were both filed for PD-1 specific antibodies in 2008. Programmed cell death protein 1 (PD-1) is an inhibitory receptor that can slow T-cells responding to cancerous tumors, and so it can be desirable to block these receptors for patients with cancer.
According to Google Patent, US9683043B2 has 139 forward citations and active family members in the US and Japan, while US9181342B2 (and its simple family) has 77 forward citations and active family members in Japan, Canada and Europe.
The above image only shows the highest scoring five companies citing these patents - if we were to look at all of the companies in the list (and we have removed self-citations), we would see a total ”Total Licensing Potential” of 5375. From experience this figure is much higher than normal, suggesting that this pair may be important patents. While I could not find any publically available documents showing that these patents have been licensed, it is entirely possible that such documents are confidential.
There are a number of PD-1 commercial therapeutics available, including from Merck, Bristol-Myers Squibb and Genentech, with Novartis also working in this area.
2) Four patent families for photoplethysmographic imaging
US9615749B2 was filed for Remote monitoring of vital signs based on photoplethysmographic imaging in 2012, and has 99 forward citations. Photoplethysmographic imaging is the use of skin imaging to infer body health - for example pulse oximetry, which is fully commercialised. Ebay is now advertising these from as little as USD10.
We looked for similar patents filed by Oxford University, and found three other patents in the same area. The resulting licensing profile for these four patents is shown below, and the total Licensing Potential is 10,718.
3) Five patent families for high-volume DNA analysis
US7939270B2, Delivery of molecules to a lipid bilayer was first filed by Oxford in 2005 for a means of high-throughput chemical analysis, which can be used for DNA sequencing. The patent has European family members and 113 forward citations.
We also identified four related patents families owned by Oxford for similar technologies. When we analysed these four patent families, we produced the following Licensing Profile - there was a total Licensing Profiled of 2162.
The top-scoring patent on this list is Oxford Nanapore, which appears to have been established to commercialise this technology. This company was founded in 2005, and some of its staff are listed as inventors on the patent. Oxford Nanapore is advertising portable DNA/RNA sequencing systems from as little as $1000, with higher volume sequencers from $50,000.
4) 24 patent families filed for perovskite solar cells
US10069025B2 was filed for a Optoelectronic device in 2013. This patent family has 241 forward citations, and family members in Japan, South Korea, Europe, China, Brazil, and South Africa.
This patent claims an application for perovskite semiconductors to improve the efficiency of solar cells. We looked for other patents filed by Oxford for the use of perovskite semiconductors for solar cells, and 24 patent families in total. The analysis below is based on these 24 patent families.
Compared to the previous analysis, the Licensing Potential values are much lower, with a total Licensing Potential of 478 - much lower than 10,718 for the second case study.
This initially puzzled me, as solar cells are an important area of technology, and a preliminary search for patents for the application of perovskite for solar cells found over 5,000 patent families. The eighth company on this is Oxford Photovoltaics, which has been set up to commercialize this technology. And yes, Merck has filed patents in this area.
However, our Licensing Potential takes into account (in a broad fashion) whether a technology has been commercialised. And for the area of perovskite solar cells, this does not appear to be the case, due to concerns about durability. And of note, none of the patent owners in the above Licensing Profile appears to have commercialised this technology.
This does not mean that perovskite solar cells will not be commercialized in the future - those 5000 patent families suggest that people are trying very hard to do this, and potential benefits would be enjoyed by all of us.
Learnings
This blog gave a case study of four different technologies protected by patents filed by Oxford University. Without discussing these individual case studies, we can see that:
Individual patents should be analysed by grouping them with similar patents filed by the same applicant.
Outward Licensing Profiles can suggest which companies are filing similar patents, and how strong their interest for this technology.
The Total Licensing Potential can suggest the ‘total size of the prize’ - and hence patents (or groups) have high commercial potential.
The traditional approach for portfolio analysis is to look at the forward citation count, but in contrast, this approach gives a much richer and more commercially focused perspective.