In the spring of 2018, Intellectual Property (IP) professionals in Silicon Valley gathered for the 4th Annual Silicon Valley IP Forum, sponsored by CPA Global. The event brought together corporate and law firm practitioners looking to learn from their peers about industry trends and challenges.
Panelists speaking at the event included patent professionals from law firms and corporations:
- Ken Kumayama (moderator): Counsel, Skadden
- Deb Miedema: Technical Advisor/Competitive Intelligence Analyst, Google
- Joanna Lahtinen: Senior Litigation Paralegal, eBay
- Sean Clark: IP Licensing Director, Tivo
This year the panel conversation was centered around using business intelligence as organizations continue to seek smarter ways to interpret growing volumes of data. Over the course of the discussion, 5 significant themes emerged.
1. Business intelligence technology is helping organizations mine IP data for new insights.
IP assets are increasingly important considerations in forming business strategy and seeking out competitive intelligence. Accordingly, companies look for ways to mine their IP data and public IP records for insights. IP data is well-suited for analytics tools because of its volume, variety, and variability. Sophisticated analytics tools are the key to unlocking that intelligence and eliciting meaningful knowledge from these volumes of data.
Panelists kicked off the conversation by explaining scenarios for how they are using these tools in their everyday responsibilities. Lahtinen explained, “Business intelligence tools provide a window into what happened in the past, showing trends and patterns. Patent analytics aid in explaining why those things happened and assist us in predicting what will happen in the future.” Both views are critical for organizations to form a full IP picture.
“A single patent can be the most valuable part of any company. The more tools we have available, the better informed decisions we can make as IP professionals,” affirmed Clark.
Patent analytics in litigation
When it comes to assessing litigation threats, organizations should be using business intelligence to inform the legal team about the opponent’s litigation history and prior settlement positioning. Patent analytics will provide research about the patent, licensing, assignment, and prosecution history. Lahtinen noted, “I use Innography for background and initial research when we receive a threat. It’s great when it comes to diving into the patent itself, as well as the plaintiff’s portfolio.”
Patent analytics in business strategy
Outside of litigation, analytics also inform business strategies, shaping investment decisions in research and development or driving the search for new technology partners. For example, IP analytics can help companies understand their relative strengths and weaknesses against their competitors and enable them to understand more about the potential opportunities in new markets. This technology benchmarking capability benefits organizations by getting a sense of whether or not they are in balance with the market in terms of innovation.
Clark explained how his organization uses patent analytics, “I have worked with Innography significantly, looking for potential defensive threats but also for potential candidates for patent acquisition or IP for consideration. We want to make sure we are informed when we talk with a customer about IP, and we are always looking for more constructive ways to use IP intelligence when talking with clients.”
2. Artificial Intelligence will drive efficiencies in examining IP data, but not replace the need for human intellect.
Artificial Intelligence (AI) is making inroads into IP and patent research, with the most advanced tools integrating smart technology into ordinary patent search schemas. For example, search retrieval is faster and more accurate when searches are extended beyond traditional Boolean or term searching, extending to contextual searching. Here, search results contain similar types of documents, even if the exact search phrase is not present in a specific document. Technology like this is the next generation engine for today’s IP professionals and innovation leaders. Miedema described her use of AI, “My recommendation is to invest in AI if you really want to do a good job identifying similar patents in a competitor’s portfolio. Innography has a ‘similarity’ feature that is very useful.”
However, panelists cautioned audience members, clarifying that AI is like any other tool that humans can leverage to improve productivity and precision. There will still be the need for human judgment and interpretation in the patent research process, despite the rise of AI. Clark explained, “There are things that machines do really well, and faster than humans, but when it comes to application, machines struggle with the nuances. AI is a tool, not a threat.”
3. Business Intelligence insights are critical for communicating with and influencing C-level leaders and executives.
The role of IP has changed dramatically for companies and law firms alike. In many companies, IP is at the forefront of any litigation or business strategy discussion. IP professionals are joining C-level leaders and executives in defining the litigation strategy or future business innovation. “You don’t want your executives saying ‘Don’t we have a patent on that?’ It’s your job to educate them about the full patent portfolio,” said Miedema.
IP intelligence is vital in shaping these discussions, and savvy IP professionals know to bring analytical insights to the conversation. Lahtinen explained, “The tools are beneficial, with all the visuals they have, to help executives internally and externally understand information about a patent portfolio.” Sometimes, explaining IP value internally is just as difficult as explaining it externally. For example, if a non-R&D company buys an R&D focused organization, business intelligence can be used to explain the importance of patents to the acquiring company.
Further, when negotiating with another company’s executive team, in licensing or product transactions for example, IP analytics give information about the company, resulting in better licensing conversations and transactions. “Innography does a great job with PatentScape by helping me understand at a glance what’s in a portfolio. From overlapping areas to the expiration profile, it’s a great way to get up to speed quickly when you are heading into a licensing discussion,” said Miedema.
From outside counsel’s perspective, patent analytics are just as important in communicating with clients. Patent counsel need to know the IP landscape and litigation history for their clients and adversaries. Clark explained his expectations in working with law firm attorneys, “When I get on the phone with outside counsel, I expect them to have the exact scope of vision that I have. They need to understand the complete patent landscape, using the same business intelligence and patent analytics tools I am using, so we can have a complete conversation.” This means that outside counsel need to know what tools companies are using, as well as taking the time to learn these tools so they can make data-driven recommendations. Kumayama agreed that this creates a strong partnership with his clients, saying “we often use the visual representations of patent analytics results to communicate with clients and assist in-house IP practitioners in communicating complicated patent-related information to management”.
4. Patent analytics are playing a more important role in merger and acquisition transactions.
In buying and selling transactions, business intelligence and patent analytics are critical. Clark explained, “Historically, much of the diligence going into a merger or acquisition was traditionally more financially based. The focus now is more based upon IP.”
Patent analytics help identify potential targets and also assemble IP impacts associated with a transaction. Kumayama stated, “We use patent analytics at every stage of an M&A transaction. From assisting PE funds and other clients in better understanding the patent and technology landscape to identifying potential targets, through the IP due diligence process and in the course of assisting clients in formulating and updating their business strategies. I wonder how we did our jobs before we had IP intelligence tools.”
5. The global perspective is evolving IP practices and raising challenges when it comes to business intelligence.
When looking across international IP trends, business intelligence and patent analytics are more and more important. Whether filing and managing patents in various jurisdictions, facing international IP litigation, or seeking to validate foreign patent ownership, teams need global insights and research. Foreign IP data is complex, and it is difficult to find reliable databases to inform global legal strategies.
Miedema noted the importance of business intelligence tools to watch global IP trends, “We are paying close attention to places like China, as we are seeing companies across the board making more IP investments there. Also, we are seeing Chinese companies making more investments here in the US.”