BARDEHLE PAGENBERG is an intellectual property Law Firm that has serviced clients for over 40 years in Germany and world-wide across the full spectrum of IP requirements, including advisement on IP strategy; supporting the acquisition of entire portfolios with freedom-to-operate and due diligence; patent prosecution and litigation; as well as trademark and design prosecution, licensing, competition, and anti-trust activities.
To deliver the highest standards of advice and opinion to their clients, the BARDEHLE PAGENBERG team needs access to best-inclass research and information resources.
The exponential growth of intellectual property around the world (and the resulting manifold increase in available data) means technology plays an increasingly important role in helping experts to perform this research.
Dr. Patrick Heckeler, associate patent attorney at BARDEHLE PAGENBERG, is hands-on in the prosecution and litigation of patents. He was also part of a group tasked with evaluating potential tools to support the firm in conducting patent portfolio analytics.
The evaluation team started by identifying a number of key use cases their chosen IP analytics software provider would be required to support:
• Drafting and Prosecution: Identifying prior art when drafting new patent applications in order to expediate and support prosecution activities.
• Infringement: Developing evidence to support defensive or offensive strategies around patent infringement for their clients.
• Searching and Analysis: Though BARDEHLE PAGENBERG typically engages external search specialists to conduct projects, the internal team needed a way to quickly perform ad hoc searches or to build upon results returned by external specialists on their own.
• Freedom to Operate and Due Diligence: When clients are seeking to buy or sell portfolios, the BARDEHLE PAGENBERG team need to quickly conduct wide-ranging analyses to support due diligence activities.
• Developing IP Strategy: The BARDEHLE PAGENBERG team also wanted a product that could inform and support their advice for clients interested in creating or refining their IP strategy.
The team at BARDEHLE PAGENBERG evaluated a number of IP analytics providers, testing the capabilities and coverage of each software product, including manually comparing data points for accuracy. The evaluation team were impressed with the data quality and coverage of CPA Global’s Innography IP intelligence software, and commonly found Innography more accurate than the European Patent Office (EPO) and national patent databases in Germany and the United Kingdom.
Upon comparing results from identical search queries returned by various other systems, the evaluation team found that the volume of the returned results was by no means a reliable indicator of quality.
One test involved a comparison of search results for applications made by a sample company to the European and German Patent Offices in a particular year. Search results from the DPMAregister indicated that 433 applications were made, while Innography returned a total of 390. Closer examination, however, revealed that of the 433 results obtained from the DPMAregister, 187 were actually grants. Innography had revealed an accurate number of applications in addition to more than 100 additional relevant applications.
Comparisons the EPO register followed a similar pattern, with a search of the EPO register returning 402 applications and the same query in Innography revealing 292. Subsequent analysis of the respective results revealed that the EPO data contained 38 duplicates, 92 PCT applications and 153 grants. Innography had in fact revealed over twice as many relevant, accurate results than the EPO register.
In addition to the quality and reliability of the Innography data, the BARDEHLE PAGENBERG team also preferred the clarity and structure of the user interface. They found Innography made it easy to organise their efforts by project in a way that was both intuitive and convenient. The decision was clear to the evaluation team, which moved forward, acquiring multiple Innography licenses.
INNOGRAPHY IN PRACTICE
Access to Innography was rapidly rolled out to relevant users across the firm to address all the identified use cases:
• Drafting and Prosecution: BARDEHLE PAGENBERG’s attorneys now routinely use Innography for prior art research when drafting applications and to support prosecution activities.
• Infringement: The access Innography provides to prosecution histories — particularly the ability to highlight where amendments have been made — helps the team to uncover potential proof of invalidity
or grounds for rejection.
• Search and Analysis: The team routinely utilises Innography to conduct their own searches and also to rebuild search queries that extend upon results returned by external search specialists. This is particularly useful when helping clients with offensive IP strategies to see datasets in various ways.
• Freedom to Operate and Due Diligence: The BARDEHLE PAGENBERG team leverages the analytical power of Innography to support due diligence research, providing valuable insights about what IP is available and covered within the transaction. This includes viewing assets by PatentStrength® against other competitors’ portfolios, or against specific technology landscapes of an asset or portfolio.
• Developing IP Strategy: Attorney’s at BARDEHLE PAGENBERG rely on Innography to analyse the IP protection strategies of their clients’ competitors. The software surfaces competitor activity and behaviour, providing detailed views of filing strategies and geographic coverage, thus offering vital intelligence to underpin appropriate strategic decision making for the firm’s clients.
Commenting on the experience of onboarding Innography within the firm, Dr. Heckeler stated:
“With so many use cases, many colleagues across the firm are using Innography. The training and support we received at the outset were excellent and anticipated many of the use case scenarios and questions we had about the software. Ongoing communication between our team and the team at CPA Global is strong. We’ve requested additional functionality and have seen a quick response, including the delivery of new features that will help us derive maximum value from the software. We are getting great feedback from colleagues and clients, confirming that Innography is a really effective tool for IP law firms.”
In addition to being empowered to offer new services to clients, the firm’s attorneys are delivering complex analyses with confidence that the work can be quickly and accurately completed. They’re also leveraging Innography to help identify and target new clients. Innography’s portfolio analysis capabilities can help attorneys reveal hidden champions within any IP arena. Identifying target companies creates an opportunity to approach them and demonstrate value that comes from specific IP legal help and support.
Another simple, but impactful benefit the team has identified is the ability to directly copy or highlight passages in the patent PDFs. This eliminated the time-consuming and cumbersome necessity of manually converting documents into machine-readable form, a time-consuming and cumbersome task because publications downloadable via Innography have already been through the OCR-process. Dr. Heckeler concluded,
“Using Innography is helping our people respond with speed and agility to our clients’ requests. The software helps colleagues within the firm to collaborate on projects, to expedite delivery and support the quality and integrity of the service we are able to offer our clients. But, beyond that, Innography has built-in visualisation capabilities that make information much easier to share with clients.
"Because patent law is often complicated, making information accessible and understandable via fresh visual formats can help to facilitate important conversations to support client decision making. Just a couple of clicks in Innography can take a complicated dataset and bring it to life.”