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Patent Mining in a Changing World

Jun 23, 2005
Edward Kahn

Patent mining is a strategic and core function for any IP-centric corporation seeking to tie technology development to business strategy and provides a foundation to help managers make strategic decisions regarding IP acquisition and technology development.

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Patent mining is one of the buzz words of intellectual property management and for many seems to promise untold riches generated from rights portfolios that would otherwise lie dormant. In reality, however, this is very rarely the case. Patent mining is no quick fix, neither is it a solution that will work in all organizations. But for those that are willing to take risks and invest time and money in the process, the benefits could be considerable.

The very concept of proactively studying one’s own patent portfolio and conveying those patent rights to anyone else (much less a competitor!), would have been alien to companies holding patents. Today, high-tech companies, like Procter & Gamble, proudly teach that they will license competitors, sometimes before the technology is even used in their own products.

In this atmosphere, patent mining should be defined in the broadest context of a technology company’s strategic view. No one has yet said it better than Dr. Joe Daniele, former Director of Licensing at Xerox, when he stated in a 1993 speech (given with the author) before the Licensing Executives Society (LES): “IP management is the direct connection of R&D to the marketplace”.

Those companies that were only willing to tentatively dip their toes into the water of change began to limit patent mining’s reach to the study of underutilized patents in their portfolio. While the pruning of the underbrush that such embryonic efforts provided occasionally led to more strategic programs, like at Dow or Proctor & Gamble, more often, the limited financial return of such efforts discouraged those companies from moving forward to discover the more significant meaning of patent mining.

That is not to say that on the tactical level, patent mining can’t offer useful information for distinguishing patents that could be licensed in non-competing fields of use, abandoned or donated – saving money and providing valuable tax donations. But it is not what should or will motivate a company, competing for internal financial resources, to devote the serious commitment the practice deserves.

Today, patent mining can no longer be limited to a self-reflective study of your own patents. It must mean the active scanning and analysis of ALL patents that can directly affect your business and technology development practice. Patent mining is a strategic and core function for any IP-centric corporation seeking to tie technology development to business strategy and provides a foundation to help managers make strategic decisions regarding IP acquisition and technology development.

Mismanagement of IP can be as lethal to competitive positioning and new product development as poorly drafted patent filings, or worse, picking the wrong technology platform. But if patent mining is more than an operational task for the IP law department, who “owns” it in a typical corporation: legal, the CTO or the CEO? Harry Gwinnell, Chief IP Counsel at Cargill Inc., says: “The greatest likelihood of success lies in establishing a business group, visible throughout the company, to identify and execute hidden opportunities”.

MINE YOUR OWN BUSINESS Companies once sent researchers to review the patents within a small section or subsection of a portfolio, with an eye on narrow freedom of action. Today, patent management application and robust search engines allow internal IP managers to quickly pull together organized sets of patents from within their own portfolios, those of specific competitors, and those patents citing relevant technical or industry terms.

With the advent of such patent analysis software, IP managers have pushed the patent mining process toward studying larger and larger patent sets. Companies, once only interested in understanding the patents within their own portfolio, are now interested in knowing about the patents held by competitors. Where patent searches

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