DIY Patent Analytics for Innovation

By Constance Leong, Goh Phai Cheng LLC

A decision whether to file a patent is not one made in a vacuum amongst inventors / R&D scientists. It is a business decision that requires business wisdom. Patent Analytics [also known as Intellectual Property (“IP”) Market Intelligence] empowers that business decision and even policy decision.

What is Patent Analytics?
Patent Analytics is a detailed statistical analysis of the patent activities in various technology fields. It is an intelligent process of mining, decoding and analysing raw wordy patent data. It identifies gaps in technology fields that are not yet adequately fulfilled, thereby alerting one to add value to these gaps and capitalise on these new opportunities. For a greater insight, you may drop in at the World Intellectual Property Organisation’s Patent Analytics workshops.

Why adopt Patent Analytics?
The first question commonly asked by inventors and CEOs is whether their invention is patentable. The second common question is whether there is an issue of infringement by making their invention (product) or by using their invention (process) without the consent of the patent owner, if any.

The law on patentability

Section 13 of the Singapore Patents Act (“the Act”) provides that a patentable invention is one that satisfies the following conditions:

• the invention is new;
• it involves an inventive step; and
• it is capable of industrial application.

Section 14(1) of the Act provides that an invention shall be taken to be new if it does not form part of the state of the art.

Sections 14(2) and 14(3) set out the state of the art as follows:

(2) the state of the art in the case of an invention shall be taken to comprise all matter (whether a product, a process, information about either, or anything else) which has at any time before the priority date of that invention been made available to the public (whether in Singapore or elsewhere) by written or oral description, by use or in any other way.

(3) the state of the art in the case of an invention to which an application for a patent or a patent relates shall be taken also to comprise matter contained in an application for another patent which was published on or after the priority date of that invention, if the following conditions are satisfied:

(a) that matter was contained in the application for that other patent both as filed and as published; and

(b) the priority date of that matter is earlier than that of the invention. Therefore, an invention may lack novelty if the specified combination of features has already been anticipated in a prior disclosure. One has to look at legal cases like Trek Technology (Singapore) Pte Ltd v FE Global Electronics Pte Ltd (No. 2) [2005] 3 SLR 389 to understand how the Singapore Courts determine novelty.

The Singapore Courts have followed United Kingdom (“UK”) precedent in approaching the determination of novelty. The UK approach is summarised in SmithKline Beecham Plc’s (Paroxetine Methanesulfonate) Patent [2006] RPC10, where the House of Lords held there were two requirements for anticipation: prior disclosure and enablement, both of which are distinct legal concepts.

The law on patent infringement

Section 66(1) of the Act provides that a person infringes a patent for an invention if, but only if, while the patent is in force, he does any of the following things in Singapore in relation to the invention without the consent of the proprietor of the patent:

(a) where the invention is a product, he makes, disposes of, offers to dispose of, uses or imports the product or keeps it whether for disposal or otherwise;

(b) where the invention is a process, he uses the process or he offers it for use in Singapore when he knows, or it is obvious to a reasonable person in the circumstances, that its use without the consent of the proprietor would be an infringement of the patent;

(c) where the invention is a process, he disposes of, offers to dispose of, uses or imports any product obtained directly by means of that process or keeps any such product whether for disposal or otherwise.

Prior art searches provided by Patent Analytics, if conducted thoroughly, can therefore help inventors and CEOs take into account all relevant prior art, assess if an invention has been disclosed in the prior art, avoid potential threats of patent infringement, decide if patenting is really worth the investment of their time and resources and, if so, to maximise opportunities for them.

Patent landscape furnished by Patent Analytics can also help with due diligence when companies embark on a Merger and Acquisition, when Governments identify world trends, local innovation capacity and high growth industries to shape national policies. Singapore Patent Landscape Report 2014 exemplifies the use of patent landscape to spot trends, including identifying Biomedical Sciences and Information and Communications Technology (“ICT”) as the two areas where patenting activities in Singapore were most intense from 2009 – 2013.

Patent landscape further identifies gaps in technology fields that are not yet adequately fulfilled, thereby alerting the R&D scientists & CEOs to add value to these gaps and capitalise on these new opportunities.

Patent Analytics service providers
We collaborate with technology patent database companies in order to provide a more comprehensive service to patent-centric technology companies.

PatSnap is a homegrown Singaporean technology company with a patent database reservoir spanning across 120 countries. Its Patent Analytics comprises robust data and metadata organised into a 3D topographical map to provide context and details to aid understanding of the following: overall landscape, recent trends, prior art, close art, available art, estimated freedom to operate, and who to watch and leverage. Most importantly, for a limited period, from now till March 2017, PatSnap offers a package that is affordable to SMEs.

Another such powerful searching tool and databases is provided by giant technology patent databases company Thomson Reuters. Unlike PatSnap, its Thomson Innovation software is complemented with a team of overseas patent searchers and translators who would readily provide a time-deprived business with customised reports.

Hong Kong-based Questel is another rich source of patent databases and tools used by large corporations. However, it does not seem to have an office in Singapore. Unlike PatSnap and Thomson Reuters whose product consultants are based in Singapore, it seems to have only a sales representative in Singapore. We think it may not be as responsive to product queries and technically supportive as locally-based PatSnap and Thomson Reuters.

In our opinion, for businesses who have the in-house capabilities, that is, persons of ordinary skill who possess a common general knowledge in a particular field of technology, to DIY and directly access the patent databases, PatSnap with its easy-to-use functions with no expectation of the user having any IP background, may be a preferred choice. On the other hand, there are businesses who chose not to bear the high risk of inaccurate prior art searches that may lead to misleading conclusions and therefore skew patent strategies. It would then be advisable for them to engage professional patent searchers and local patent lawyers, given that issues including novelty, prior disclosure and inventive steps are legal concepts a R&D scientist and CEO may need help to understand.

Conclusion
Patent Analytics is an increasingly unignorable aspect of patent strategising for technology companies, even for those who eventually decide not to file patents after reading the patent landscape of their field of technology.

However, a word of caution worth reiterating: those who DIY Patent Analytics with zero or limited knowledge of patent law may bear considerable risk of missing an existing patent or misinterpreting a patent document, resulting in perhaps being unwittingly dragged into the arena of battling a potential patent infringement allegation from an aggressive competitor or foregoing a lucrative business opportunity. That said, we foresee that CEOs of small promising start-ups, like their counter-parts in large multi-national companies and established universities, would tap on Patent Analytics more readily. Ultimately, the extent of adoption of Patent Analytics depends on long-term vision and genuine will to pursue innovation.