Unlocking the Competitive Intelligence Hidden Within Patent Portfolios
How a software giant leverages LexisNexis Cipher custom classifiers to understand their competitive landscape
Jared Engstrom, Head of Patent Development, talks about the growth in Red Hat’s portfolio, how he has used Cipher custom classifiers and how the Cipher Portfolio Optimisation model has improved their understanding of the competitive landscape. Jared manages Red Hat’s portfolio, the harvesting of new invention disclosures as well as moving them through the patent process. He is also responsible for the strategy around what patents Red Hat files, how they are maintained and how they are used to protect the company and support the open-source community.
What types of strategic business questions do you need to consider?
You need to understand where your risk is as a company – for many companies, it’s tied to your products and offerings and the revenue you generate. Understanding that risk naturally helps you understand where to build fortifications and defenses.
In our case, we have a patent portfolio used for defensive purposes only and understand where we have risk exposure due to the markets we operate in and what other companies do in those spaces. We need to answer these questions at a fine level of granularity.
How have you answered that kind of strategic business question in the past?
We recently hit an inflection point. As a smaller company over the previous 10-15 years or so, we were largely concerned with building up the size of our portfolio. We also knew we had a handful of key threats out there, so much of our time and energy was focused on ensuring we were well-prepared to defend against those particular threats.
As we’ve hit this inflection point, where we’re a bigger company with a sizeable patent portfolio and in many more markets and tech spaces, we’ve got to have a broader view of patent risk in general. We need to answer questions about our risk and ensure that we align our defensive measures in each of our relevant spaces proportional to the relative risk.
Cipher has helped us answer strategic business questions specifically by presenting the data to us in a way aligns with our own view of the world.
Cipher’s way of approaching classification is particularly useful because it’s customised to the way Red Hat views the world in terms of technological taxonomy.
What was your approach, and how did that change when Cipher was introduced?
We did do an analysis in the past, where we looked at other companies. We assembled a spreadsheet of 100+ companies that we thought either had products that were similar to ours or they competed in some of our spaces. We did a bunch of manual analysis that took us months and months to build, and it gave us some insights about where some of our risks were, but it was static data and hard to update and maintain.
Once we learned about Cipher, it was sort of an ‘aha’ moment where we realized that we could dynamically monitor, measure, see trends, and better understand what the world looks like, but do it through our lens, through our taxonomies. Seeing the world through that lens gives us a better ability to act on that information because we are already familiar with it and know it aligns with our business strategy.
How did you find that process of taking your view of the technologies of interest into a Cipher taxonomy?
The process was straightforward. We defined the technologies and provided examples of patents that met the definitions for the different technology areas. We were under some time pressure to finish the project before the end of our last fiscal year, and we managed to work through the whole thing in what I think was less than a month. And it wasn’t a full-time effort on the part of the Red Hat team. The Red Hat team certainly put in a lot of time and effort, but the Cipher team did all the heavy lifting. It would have taken us several months of nearly full-time effort to do that on our own.
How did you get over the trust and confidence issues required to share that data more broadly inside your business?
Red Hat, as a technology company, understands the value of technology, understands the value of good data and understands the power of artificial intelligence.
We also had quite a bit of our own historical data and manual analysis that we could compare against the Cipher results. So it was fairly easy to get comfortable with the results as the Cipher results lined up pretty well with our own. Cipher also provided insights into things that we weren’t aware of.
You referenced there that you got some insights from Cipher and the optimization model that maybe you hadn’t been able to access before. Can you talk about that?
In our own manual analysis, we did some exhaustive research on 100+ companies to see what patents they had, their revenue, and their litigation history – all those sorts of data points you need to understand the landscape. But it’s impossible to research every company on the planet, and it’s hard to know whether you’re missing anybody that you should be aware of.
Sure enough, in our Cipher analysis, there were two or three or four companies that weren’t on our radar, and we are now conducting more in-depth research and analysis to understand how those companies might or might not be a risk. We wouldn’t have known about them if it wasn’t for Cipher.
The Importance of Competitive Intelligence in Disruptive Technology Environments
How the IP team at BAE Systems uses LexisNexis Cipher to help communicate the importance of IP internally and identify disruptive technologies
Chief Counsel for Intellectual Property and Technology Law, Dr. Bobby Mukherjee, at BAE, explains how his IP team uses Cipher to help communicate the importance of IP internally and identify disruptive technologies to provide competitive intelligence.
What impact do you think disruptive technologies such as robotics, autonomous, cybersecurity, and drones will have on BAE’s business strategy?
It’s important to recognize that there is an intensely competitive landscape in our sector, and when I talk about competitive pressure, I look at it from two angles. The first is in terms of the new products that are coming into our landscape. Secondly, we have new players coming onto the scene.
Robotics, autonomy, cybersecurity and drones are key areas for us and for our competitors. It’s important for us to stay ahead of the game, not to be complacent. It’s important for us to understand which areas are key to our business strategy. What are the business priorities? What are the product strategies and the capability gaps? From that, what are the technology areas and intellectual property drivers? I think it goes in that order.
IP strategy in isolation doesn’t mean anything. It has to be anchored in the wider business product strategies, and that means working very closely with your key stakeholders across the company, your technologists, your business development people and so forth.
Cipher has been world class for us. It’s easy to use, it provides very powerful visual representations of what we own and importantly what our competitors have.
Which other technologies do you see as being disruptive?
Developments in human-machine interfaces. When we talk about autonomy, the reality is that there will be more combinations of human-machine interfaces. The barriers to entry are very relevant in that regard. We know that companies like Amazon are working in this field, so with respect to the movement from traditional to non-traditional players, it’s really important that we understand what the landscape is and what IP rights are out there, not just for the traditional players, but also for the non-traditional players.
Additive layer manufacturing (ALM) is also a key area. We are active in that area, and there are a lot of other people who have done significant work in ALM. There are other areas, such as energy storage and management.
Again, if you look at our operations across the enterprise, one of the challenges we have is leveraging that capability across the enterprise in the most effective way and ensuring that we don’t have duplication of effort and investment. It’s remarkable what we do in terms of the world-leading capabilities for governments and our commercial customers.
How have these changes in disruptive technologies fed into a change in your patenting strategy?
We have always been able to articulate our patenting strategy over the years in terms of understanding the key technology areas that we should focus on and biasing our patenting towards those areas. The patenting strategy has, of course, a geographical dimension as well as a technological dimension.
We are building our portfolio within the constraints of our budget, but we also prune where we decide there is no longer any value. Active portfolio management is a critical element of this.
To have a coherent patenting strategy, you have to be clear about the business technology strategies. One of the ongoing debates is how many patents should we be filing. What is the right portfolio size for our organization? We have to create the right portfolio for our business and use it to drive business value. That is the underlying requirement. There is no point if we do not drive business value using our intellectual property portfolio.
So, the notion that we must have 50 patents filed yearly or 150 or 200 is a red herring. I would argue it is all about business value, and it’s about articulating that business value. How we measure that value is a separate question. It may be licensing or leveraging the patents in campaigns to help with the business. It might be enabling a freedom-to-operate strategy. We can use our intellectual property for business advantage in all sorts of ways.
There are a large number of disruptive technologies: robotics, autonomy, cybersecurity and drones are key areas for us and for our competitors. The list also includes in human machine interfaces and areas such as energy storage and management. Now more than ever, it is important to monitor patent trends. It’s important for us to stay ahead of the game, not to be complacent.
How does BAE Systems measure and report the value of IP to the business?
We are on a journey. We have a remarkable diversity of businesses, from electronic systems and applied intelligence at one end, which is pretty fast-moving, to the maritime, submarines and air business at the other end. The strategies involved in each area will differ according to the different technology lifecycles. As a profession, we can miss the value point because capturing that value in tangible terms is difficult, but that is not a reason for us not to try and address that question.
Looking at it simplistically, sometimes the value comes from figuring out what happens if you don’t do what you’re going to do. There was one example where we knew that if we did not clear the way, we might have been prevented from delivering a key piece of kit on a major platform. The value was providing the platform. Unless you think about what would happen if we did not do what we’re proposing to do, the value does not emerge.
We need to get into that mindset regarding every activity we do because that will help us focus on the priorities and the essential things. If we can’t figure out the value, maybe there isn’t any value, and maybe we shouldn’t be doing it. I think that is the right approach, and it makes the message much clearer when you present it at different levels of the organization. Otherwise, we could be viewed as a peripheral part of the organization with no value, which could not be further from the truth.
What’s your view of the importance of communicating IP issues to the Board?
It’s extremely important to communicate with all levels of the organization. It’s impossible to achieve optimal IP management or maximize returns for the business from IP without engaging at the top and grassroots levels. To do that, you need an endorsement from the top, which we have.
It’s important not to obfuscate or make things sound more complicated than they really are. Cut to the chase, bring it to life with real examples, and tailor it according to the business needs, and that’s what we do. We have the dialogue, learn from our business colleagues, and hopefully, they learn from us. But it’s important to have a culture of continuous improvement because unless we do that, we can’t move forwards. Communication is key. Visuals are powerful. We have dashboards presented to the Board every month. This draws people in, and they question and probe. It’s all about engagement and having a discussion.
If you don’t have the dialogue, you can’t achieve your objectives. You need to be part of the strategic dialogue. In the past, IP people have often been isolated. They are often viewed as being part of an esoteric function that doesn’t have much to offer to the broader construct. That couldn’t be further from the truth. We also have a strong team with a commercial focus, and all these things come together. Developing those soft skills is important, and communication is a key part of that.
In summary, whether you are communicating with the board or whether you communicate with an inventor or a business development manager, use plain language and develop a common language. Let’s ensure we all speak the same language and get the basics right.
How do you communicate the importance of patents to R&D and engineering?
Let me give you an example. Sometimes we get questions from the business like “What are you doing with this patent? Why are you not monetizing it? Why don’t you sell it?” My answer is that the patent is the IP right protecting the technology. You need the technologist involved in the dialogue to decide whether or not it’s something that should be sold and for what value. It makes no sense to say that the patent is the preserve of the patent attorney.
Many patent attorneys may think they are the High Priests, but they are not. This is all about protecting the technology, and patenting is one way. It’s a strategic decision that must be made in conjunction with the business. We should have a seat at the table, but let’s not forget why we’re here – to create value for the business.
You’ve been a strong supporter of Cipher. How does better information help, and how has Cipher supported you on that journey?
Cipher has been world-class for us. It’s easy to use and provides compelling visual representations of what we own and, more importantly, what our competitors have. This is feedback on Cipher that we’ve had from my team and the business. We’ve talked to our key stakeholders in the business and asked them to try it out and see how useful it is: are there things you don’t know that you could find out by using this tool? The feedback from virtually everyone has been that Cipher provides valuable insight. Understanding the landscape and what is going on is important because that is a vital element of the wider strategy.
It’s about having the right strategy, the right organizational layer, the right resources, and knowing what landscape you are operating in and where you’re going. That feeds into all the other things we’ve touched on earlier. It’s important to engage with people in the business and get that feedback, to work closely on these things and not to operate in isolation. We’ve enjoyed being a partner with you.
There are a large number of disruptive technologies: robotics, autonomy, cybersecurity and drones are key areas for us and for our competitors. The list also includes in human machine interfaces and areas such as energy storage and management. Now more than ever, it is important to monitor patent trends. It’s important for us to stay ahead of the game, not to be complacent.
How a Leading Data Storage Company is Keeping Up With Patent Technology Changes
Seagate’s Chief Intellectual Property Counsel, shares the secret to his team’s success
As Chief Intellectual Property Counsel at Seagate, Bob Pechman has seen the sector transform from hard drives to a proliferation of technologies and near-infinite demand for data storage solutions. He explains the pressures of supporting the business during this period of rapid technological change and how LexisNexis Cipher classifiers help see patent technology changes through Seagate’s own technology lens. Bob runs the Patent Group at Seagate and has all IP attorneys, including patent agents, report through him. He took over that role at Seagate in the summer of 2013.
What kind of pressures are you currently facing in the patent team?
It’s the typical stuff, budget primarily, and aligning what we’re doing with the IP portfolio with what the business goals are and what’s happening strategically with the business. And getting the right kind of attention from the right executives.
With those kinds of strategic alignment questions, how have you gone about answering those questions?
It’s hard. Depending on what the business vision is at the time. When I took over, the business was very data storage, hard-drive centric, and we understood that industry well our place in it. It was all a matter of building piles of patents and, in the right areas, maintaining our technology leadership.
But as data storage keeps evolving beyond data centers and into new types of storage where you need to capture lots of data close to where it’s being created. It’s creating a lot of different opportunities and a different type of customer base.
Where before you could refresh what we were looking at every few years, now we’re in a situation where what was important a month ago might not be important today. We have to make decisions about our portfolio based on the realities of the moment. We’re in a totally different situation.
Our issue was how to fit other companies’ portfolios into that same framework that we use and there’s just no other tool other than Cipher that can do that.
The process was pretty straightforward and even simpler the more useful data you can provide. We’ve also scoped other classifiers where we started completely from scratch, where the Cipher team had to do more work up-front, but even that process went smoothly.
Has the speed of technology change meant that you’ve had to change your approach to how you review your patent portfolio?
Yes, how we look at it and how we communicate it, because if we’re not moving at the speed that the business is, then we start to become irrelevant. It’s been a definite challenge.
The hard part, too, is that not everything that we’re trying to do, or every path you follow from a business perspective, ends up panning out, especially when you’re looking for emerging opportunities. It’s difficult to be able to get actionable information from our IP portfolio or about competitor IP quickly and easily.
We have needed to change our approach and not pour over every single project. We can start with a high-level view – good enough information – because many of these questions that are being asked from the business folks aren’t relevant in a few months because their project has gone away or we’ve decided to move in a different direction.
You get these demands to produce answers to questions, but what questions are being asked might be super important today, and then tomorrow it ends up not being. The challenge is needing to move quickly and nimbly but not wanting to put inordinate amounts of effort into the analysis.
How has Cipher helped you meet some of these challenges of patent technology changes?
Primarily we’ve been playing around with how we break down our portfolio. Our issue was how can we fit other companies’ portfolios into that same framework that we use, and there’s just no other tool other than Cipher that we have that can do that.
How did you find the process of communicating to the LexisNexis team what your lens was and then being satisfied that we’ve captured that?
The process was pretty straightforward. It’s a lot more straightforward the more data you can provide, and where we have useful data, it’s quite a simple process. We’ve also scoped some other classifiers where we started completely from scratch, where your team had to do more work up front, but even that process went pretty smoothly – they did a nice job.
On the first pass-through, you’d get a couple dozen or so cases on the edge to give you a gut feeling of whether they’re in or out, and you spend a few minutes giving that feedback and then you’re pretty much good to go.
I do appreciate that the LexisNexis team is obviously very into this stuff, very interested in what clients have to say and, how we’re using it and what our questions are. Your team is really open to it and not just from a customer service point of view. You can tell that the people really enjoy the conversations that we’re having, and they make it pretty easy.
Did you have any concerns about Cipher’s supervised machine learning?
I’m not sure we had concerns that it wouldn’t be any good, but we did look at some technology areas where we were very comfortable with what our knowledge was about the IP landscape and scoped those out with some classifier sets with Cipher, partly to see what Cipher could deliver compared to things that we already do, but also to validate that Cipher was generating similar kinds of data.
A Global Energy Services Company Finds Value in AI Speed for Patent Analysis
How the Director of IP at Centrica leverages LexisNexis Cipher Classification
Director of Intellectual Property at Centrica, Charles Clark, discusses the efficiency gains from using Cipher and the tasty bits of data gleaned from using Cipher’s AI speed for patent analysis over conventional search. While British Gas remains a core part of its business, Centrica is expanding rapidly into home energy management and faces unique pressures as it transforms into a technology company.
Charles splits his time equally between the Ventures team, scouting for new technologies and the business-to-business side of the Centrica team. He helps them with partnerships and new technologies such as battery storage or solar panels. His role is centered around helping the business to understand the value of innovation and the value of partnerships with technology companies and helping them to capture that value and enable them to bring it to the bottom line.
What are the kinds of pressures that you face in the patent team?
The technology challenges that we face at Centrica are concerned with the use of new technology coming into the energy sector. Energy is being disrupted hugely at the moment and will continue to be in the future by new technologies that make it easier to manage our energy use and reduce our carbon consumption. Having that ability with Cipher classifications to look across all the technology spaces that could potentially impact energy is of huge importance to us.
The pressures from the patent side are also focused on building a patent portfolio. We have the usual monetary pressures, and the pressure of helping the business to understand the value of intellectual property is a continuing educational piece. I also work with the teams that report to the executives and help them understand and appreciate IP. That’s been a success. I am now speaking to Senior Managers and executives within the businesses who are coming to me and saying, “What is the IP in this particular project? How can we protect it? How can we make the best use of it?” It’s been a challenging process, but I feel that we’re starting to get really good traction right now.
What Cipher gives us is speed to enable us to look at the vast amounts of the patent data through a different lens, in a much quicker time than would be possible, without the use of artificial intelligence, with just using normal searching techniques.
How has Cipher’s AI speed for patent analysis helped meet these challenges?
Cipher classification looks at the IP data through a different lens than the more traditional search engines. For example, we can build classifiers that are looking at a scope of technology rather than doing your more classic Boolean keyword searching that may miss or pick up some stuff completely unrelated to the areas we want to look at. Looking at the landscape through a business opportunity lens gives us a different aspect than more conventional search engines can do.
What’s your experience of working with classifiers compared to, say, Boolean?
We can build a classifier (using Cipher’s AI speed) that sits across all the other codes already embedded in the patent system. Maybe you see those as verticals. We can build a horizontal filter that sits across all of those, giving us another dimension to assemble data from the vast amounts of patent data out there.
How have you found engaging with the LexisNexis team?
The LexisNexis team has been an excellent support to us at Centrica in building our classifiers and understanding our business to get the results that we are looking for, which would not be available from a more classical approach. They take the time to understand our technology. They probe what it is we’re trying to achieve as a business and apply that to a classifier. It’s an intricate process building the classifier, and they will refine a classifier until it works for us as a business and enables us to get the results that are going to be the most useful – that, obviously, requires our input from the business side and their expertise with the technology classification.
The value of the system is being able to cut across the silos that traditional patent classification codes have used. It enables us to take a new look at the data through a business lens, a commercial lens, as opposed to simply a patent lens.
How would you explain the value of Cipher to other members of the IP community?
This has been a very interesting learning curve for me to understand how AI works and how it accelerates the process. It helps us to get to an answer quicker. It is not looking for specific keywords but looking for themes and concepts. And because questions are sort of blurry at the edge, I find the approach very interesting. Because where data might have been cut out in a more traditional search, that blurry edge can be quite informative. It’s that slightly blurry edge that is the tasty bit. It’s almost like going from Newtonian mechanics to the new world of quantum mechanics back at the turn of the last century. And it’s bringing that new dimension around the understanding of the universe.
Cipher gives us AI speed for patent analysis, enabling us to look at huge and vast amounts of patent data through a different lens in a much quicker time than possible, without the use of artificial intelligence, with just using normal searching techniques. The AI adds that extra dimension of speed – for us, that’s critical.
では目的はどうか。知財活動の目的はPowering Business with IP Data Science、つまりデータ分析を通して事業に貢献することだ。料理だと、日々の食事と、特別な時のレストランなどにおける食事の提供があり、これらは作り手もやりかたも異なる。しかしこの両方を手がける特別な料理人がいる。それが大使館など公邸にいる「公邸料理人」である。大使やその家族に向けた日常の食事と、外交を支援するための、賓客を招いた会食のどちらも手がけ、メニュー作成、買い出し、調理、在庫管理まで担当する。
もともと当社ではこうしたフィルムをモニターやディスプレイのサイズに合わせて切削加工し、顧客であるパネルメーカーに提供していた。パネルメーカーはパネル製造工場で、このフィルムを貼り合わせて使っていた。しかし一枚のフィルムの中にわずかでも欠陥があると製品すべてが不良品となるため、材料の歩留まりが極めて良くないという問題があった。そのためディスプレイ単価が下がるにつれ、状況が悪化することが2007年当時には予想されていた。そこで当社の経営陣は、フィルムを切削・加工した状態でなく、ロール状で供給し、フィルムを張り合わせる装置やラインを顧客のパネル製造工場に組み込んでいただく事業モデル(RTP/Roll to Panel製法)を考え、顧客に提案した。
Siemens leverages LexisNexis® PatentSight® to integrate its IP activities into the company’s innovation process and measure the quality of its patents.
How Patents Became A Managing Board Agenda Item At Siemens With PatentSight
Siemens leverages LexisNexis® PatentSight® to integrate its IP activities into the company’s innovation process and measure the quality of its patents.
“In a digital world, patents document a company’s contribution to a digital ecosystem in which businesses work together to create solutions through partnerships and licensing. But companies can only share and license something they own.
To protect their ability to make money from their contributions and their competitive advantage, they must establish their IP rights. Siemens needed a different approach to IP rights and a different understanding of how to create these IP rights.”
Siemens leverages PatentSight to increase quality of patents…
…and create value for the business
Siemens is a digital pioneer focusing on the areas of electrification and automation. The company partners with its customers to unleash their business potential using energy-efficient, resource-saving technology and digital know how.
For more than 170 years, the name Siemens has been synonymous with internationality and worldwide presence. Siemens is a global powerhouse positioned along the electrification value chain—from power generation, transmission and distribution to smart grid solutions and the efficient application of electrical energy—as well as in the areas of medical imaging and laboratory diagnostics.
Siemens operates in production and manufacturing plants worldwide. In addition, the company has office buildings, warehouses, research and development facilities or sales offices in almost every country/region in the world. Siemens currently holds more than 100,000 patents and in 2013 was filing applications for more than 3,000 new patents annually across its lines of business. Based in Germany, Siemens is a multinational engineering company with annual revenues of €86.85 billion and 385,000 employees around the world in 2019.
Business case
When Beat Weibel joined Siemens in 2013 as the Chief Intellectual Property (IP) Counsel and Group Senior Vice President, Siemens consistently ranked number one or number two in the number of European patent filings. The company still is today.
However, when Weibel joined the company he saw right away that Siemens, like many large technology companies, was focused primarily on the quantity of patents, not their quality. This is a strategy that Weibel viewed as less effective in a digital world.
“Companies previously used patents to establish IP rights and block competitors from benefiting from basic innovations,” says Weibel. “In a digital world, patents are more often used to document a company’s contribution to a digital ecosystem in which businesses work together to create solutions through partnerships and licensing. But companies can only share and license something they own. So, to protect their ability to make money from their contributions and their competitive advantage, they must establish their IP rights.”
Adds Weibel, “I felt that Siemens needed a different approach to IP rights and a different understanding of how to create these IP rights.”
In particular Weibel felt that the focus on quantity over quality reflected a disconnect between the development and IP teams at Siemens. Inventors would invent first and then call on their colleagues to prepare and file patent applications. Siemens was not evaluating the quality of its inventions before filing patent applications. The upshot was that Siemens was spending huge amounts of time and money obtaining and managing patents with limited knowledge of whether they represented business value or created competitive advantage for the company.
For Weibel, the way forward for Siemens was to shift from a quantity-driven IP strategy to a value-driven IP strategy.
Beat Weibel, Chief Intellectual Property (IP) Counsel at Siemens
Beat Weibel, Chief Intellectual Property (IP) Counsel at Siemens
Tackling the challenge of proactively integrating IP activities into innovation processes
“Instead of waiting for inventors with good ideas to bring them to our patent attorneys, we sent our patent attorneys out to talk to researchers and developers to better understand how what they were working on might contribute value to our businesses,” says Weibel.
“This was a bit of a challenge. It required our attorneys to understand our businesses and business models so they could recognize the innovations with the most potential to add value and actively place IP rights on these sweet spots.”
According to Weibel, it took time, but Siemens’ patent attorneys rose to the challenge. The company’s innovation and IP activities are now aligned behind a value-driven IP strategy and the IP group is proactively involved in the company’s innovation process.
Beat Weibel, Chief IP Counsel at Siemens
Beat Weibel, Chief IP Counsel at Siemens
Finding the right patent quality measure
Integrating innovation and IP strategies was just the beginning. Another essential element of the shift to quality over quantity was selecting a metric for determining whether the change in strategy was successful. In other words, the company needed a way to prove whether the quality of its patents was improving over time.
Beat Weibel, Chief IP Counsel at Siemens
Beat Weibel, Chief IP Counsel at Siemens
“You can only improve what you can measure. The best measure of the quality of a patent is going to court, but just 5 percent of patents ever go. We needed an indirect measure and a tool that would help us measure the quality of each patent and our entire patent portfolio and track quality changes over time compared to our competitors.”
For this, Weibel turned to PatentSight, a LexisNexis company that provides business intelligence software, analytics tools, and insights into the strength, quality, and value of patent portfolios. PatentSight is known for its Patent Asset IndexTM, an objective measure of global technological strength and innovation. The measure takes into account both the number of patent-protected inventions and their quality, or value. The method allows the identification and profiling of patent gems businesses can leverage to create value from innovations. The Patent Asset Index is defined as the aggregated Competitive Impact of all patents in a portfolio. It can be calculated for the overall portfolio of a company, patents related to a certain technology, and any other group of patents based on selected criteria.
“PatentSight is quite a good match for Siemens,” says Weibel. “The tool came out of a university and has an academic objective, not just a commercial one. It allows us to track patent quality over time compared to our competition, taking changes such as acquisitions and divestitures into account. And the indices used to measure quality take into consideration differences in markets such as the U.S., Germany, and China.”
Excellent data quality is key
The foundation of the Patent Asset Index is excellent data quality, which the company achieves by maintaining a proprietary global patent database. To populate the database, PatentSight compiles patent data from more than 95 authorities worldwide, including more than 100 million patent documents, about 700 million drawings and illustrations, and nearly 100 million PDFs that are searchable and quickly downloadable.
To ensure the data is accurate and reliable, a highly skilled team of experts continually tracks factors that can affect the ownership of patents—and therefore who holds commercial power over them—including corporate structures, mergers and acquisitions, company name changes, patent transactions, and others. The team also checks for the validity and remaining lifetimes of patents. This ensures that analyses focus only on active patents, pending patent applications, and valid patents.
Siemens’ patent quality improvement in the Internet of Things market
An example of how the shift to a focus on quality is working is Siemens’ patent portfolio strength in the highly lucrative and competitive Internet of Things (IoT) market between 2016 and 2020, as objectively measured by the Patent Asset Index.
Portfolio strength is defined as the aggregate strength of all the patents the portfolio contains. The strength of each individual patent family is measured by its Competitive Impact, which is determined by both Technology Relevance and Market Coverage. (See Figure 1).
Between 2016 and August 2020, Siemens increased its IoT patent portfolio strength by 47.2 percent and was the only player in the market that showed clear average patent quality improvement.
Source: LexisNexis® PatentSight®
Source: LexisNexis® PatentSight®
Beat Weibel, Chief IP Counsel at Siemens
Beat Weibel, Chief IP Counsel at Siemens
Patent quality captures the attention of the managing board
“The managing board trusted me and the PatentSight tool when I told them we could harvest more valuable inventions and create broader and more important patents by changing our strategy and measuring quality improvement compared to our competitors.”
The benefits to Siemens of a patent strategy focused on quality over quantity, supported by PatentSight, are many. For starters, Siemens now realizes a better return on investment for its patents. For example, even though the company still files roughly the same number of patents each year, the quality of its patent portfolios is higher and continually improving.
Moreover, and of even greater importance, according to Weibel, patents now play a much larger role in the strategic development of the business. For example, the IP team can now make recommendations on where the company should invest more in research and development to create new opportunities such as acquiring new customers or new joint venture partners or to improve its competitive advantage in key regions or markets.
Not surprisingly, the transformation of patents from a necessary cost with little perceived return on investment to a strategic tool for creating business value and competitive advantage, has caught the attention of the Siemens managing board. After Weibel’s presentation reporting initial results of the shift to a value-based IP strategy, he’s now invited back to present to the managing board once or twice a year.
“It would be easy to go into the boardroom and say we’re number one in the number of patents we have, but I would rather report on how we can better protect our competitive advantage even in places like China because that makes a bigger difference to the business,”
says Weibel. “I was lucky that the managing board trusted me and the PatentSight tool when I told them we could harvest more valuable inventions and create broader and more important patents by changing our strategy and measuring quality improvement compared to our competitors.” Adds Weibel, with a smile, “Of course, now the board expects to see quality improvement every time.”
McBee, Moore & Vanik IP Leverages PatentSight To Enhance M&A Decision Making With IP Due Diligence Insights
How an IP law firm leverages LexisNexis® PatentSight® to make complex patent insights consumable by client’s Senior Management.
“They can now say, OK, I see that figure and I understand what it’s saying, but I also understand how the data created that, and then you can have a much better discussion.”
McBee, Moore & Vanik IP, LLC leverages cutting edge tools to increase efficiency and production for their clients
McBee, Moore & Vanik IP is a boutique law firm based just outside Washington D.C. The firm specializes in Intellectual Property (IP) law, with a focus on biotechnology, chemistry & materials science, medical technology, and pharmaceuticals. The partners provide a full range of patent prosecution and counselling services to corporations and help acquisitive companies understand their relative position in the innovation ecosystem.
McBee, Moore & Vanik IP has long differentiated through its use of advanced technology. The firm went completely paperless back in 2014 and has operated a remote working model since 2016.
C.G. Moore, founding partner, explains the importance of technology to the firm:
“We are very much interested in leveraging technology to let us work from anywhere, increase our efficiency, increase our production, minimize errors. And we’re always trying to improve on those counts.”
Business case
When one client came to C.G. for help with IP due diligence for a potential merger, his passion for leveraging advanced technology to improve client service was to prove invaluable.
The objective was to help the client understand its IP value relative to that of its merger target. In addition to the usual due diligence procedures, the client asked C.G. to use PatentSight to see if the IP analytics platform could help provide insight.
Already aware of PatentSight from its use by other clients, C.G. has been waiting for an opportunity to put the platform to the test. Using PatentSight, he and his team were tasked with providing the client’s in-house IP Council with the insights they needed to help their board make a decision on the merger.
“Another client was interested in understanding the relative value of their intellectual property because they were bringing in a lot of patents, they were looking to get acquired, acquire others or generate a lot more IP. Basically, do a lot of different things in the intellectual property space that require an understanding of the relative value of things.”
Chester G. (“C.G.”) Moore, Ph.D., J.D., Partner at McBee Moore & Vanik IP, LLC
Chester G. (“C.G.”) Moore, Ph.D., J.D., Partner at McBee Moore & Vanik IP, LLC
The challenge of delivering patent insights to management
As any IP expert knows, evaluating the strengths and weaknesses of a patent portfolio can be a time-consuming and laborious affair. Manual processes require legal teams to comb through large amounts of patent filings, prosecutions, and citations to find the information they need.
In the past, such analysis has been enabled by nothing more than a spreadsheet, making it slow, error-prone, and difficult to scale.
Even once the patent analysis has been completed, presenting insights and findings in a way that is easily understandable by the board can be a challenge.
Without expertise in analytics and IP law, the analysis can be opaque and hard to understand.
“It’s very, very labor intensive, it’s kind of a black box process. Their job then is to take all of this IP voodoo stuff and explain it to their bosses.
So, their bosses are going to say, well, why is this valuable? Why should we keep funding you? ”
As a result, IP analysis has traditionally played an under-valued role in due diligence. This is a lost opportunity for firms, as the value of an IP portfolio can make the difference between whether a firm should consider a merger.
C.G. Moore and his team were therefore challenged to deliver their insights to the clients’ IP Council in a way that both the Council and the management board could see value in and easily understand.
Translating IP language…
…into actionable insights for mergers & acquisitions
“PatentSight helps us think about things differently and expand the conversation.”
C.G. Moore and his team leveraged the PatentSight platform to run a comparative analysis of the client’s IP portfolio and that of its merger target. This analysis assessed and scored the two firms’ patent families against the key performance metrics at the heart of the PatentSight analytics algorithm: Market CoverageTM and Technology RelevanceTM.
The resulting Competitive ImpactTM score enabled the platform to index the patent families of the two firms and uncover hidden insights into the strategic value of a potential merger.
For C.G., one of the benefits of the PatentSight platform is that it adds a further element to the due diligence process, and gives him and his team intelligence against which they can review and test what they found in their analysis of licenses and prosecution history. As such, PatentSight is an important factor in a complete toolbox through which legal firms and in-house IP Councils can assess the potential value, liabilities, and scope of a merger.
What’s really beneficial about the platform is that it generates a set of clear metrics that make it easier for everyone at the client’s firm to get on the same page – whether IP experts, or not.
Making sense of large volumes of data from disparate sources, PatentSight provided a set of intuitive visualizations of analytical results. In combination with the disclosure of how the results are obtained, that facilitated C.G.’s conversations with the client:
“The difference here is that the methodology has been published and the base assumptions are known. They can now say, OK, I see that figure and I understand what it’s saying, but I also understand how the data created that, and so then you can have a much better discussion.”
C. G. Moore, McBee Moore & Vanik IP
C. G. Moore, McBee Moore & Vanik IP
The simple workflow enabled by PatentSight allowed C.G. to look at the firms IP data in different ways, ask different questions, and repeatedly test assumptions.
And thanks to PatentSight’s simple to grasp visualizations, the client was able to quickly feedback to C.G. where the analysis needed to go deeper and where it could be reined in.
He was thereby able to hone the data analysis on-the-fly to tailor it more exactly to the clients’ needs:
C. G. Moore, McBee Moore & Vanik IP
C. G. Moore, McBee Moore & Vanik IP
As a result of the PatentSight analysis, C.G. was able to identify a number of key insights into the client’s firm and its merger target.
These included
pertinent information on the relative size of the two company’s portfolios over time,
relative value of the portfolios over time,
technology overlaps,
the pace of patent filings, and
the relevance of the technologies (i.e. which patents are for important inventions).
The Patent Asset IndexTM score provided by PatentSight shows the exact value, size and potential of portfolios and highlights which patent families were and weren’t protecting assets that would be useful to C.G.’s client.
McBee Moore & Vanik IP and its client’s IP council used PatentSight to reduce highly complex information into easy-to-understand and digestible charts, adding value to the due diligence process and thus helping the client’s management to make a decision on the merger.
The result
As a result of PatentSight’s analysis it was clear that IP was the major asset for both the client and the target firm. Consequently , the business was able to make the decision not to proceed with what would have been an unsuitable match.
By providing another view into the risks and benefits of a potential merger, PatentSight can save time and effort, while helping firms allocate resources better and answer the most important questions more thoroughly.
And unlike other solutions on the market, PatentSight is completely transparent. The working of the algorithms and how it reaches its conclusions are open for all to see, so when the platform provides an insight, firms understand exactly how that insight was reached.
This means that lawyers like C.G. can present their conclusions with complete confidence that the analysis stacks up.
PatentSight – A unique approach to IP analytics
Evaluation of technological fit Objectively evaluate upcoming merger or acquisition targets based on the quality of their technologies, potential risks and technological suitability. The Patent Asset Index™ helps in assessing patent quality and reveals the true strength of the players in technology fields, enabling you to identify the key patents that require explicit attention.
Easy-to-grasp visualizations PatentSight Business Intelligence helps you effectively communicate your findings with powerful insights and visualizations, enabling you to turn your patent department into a strategic consulting unit.
Transparent approach The PatentSight methodology and KPIs are entirely transparent. How the algorithm works and how it reaches conclusions is open for all to see, so when the platform provides an insight, firms understand exactly how that insight was reached. The methodology has been published and the base assumptions are known, giving users full transparency.
” We hadn’t seen anything that could do what PatentSight can do not nearly as easily. PatentSight is really quite easy to use, it’s very intuitive.”
C.G. Moore is now a complete convert to PatentSight. In part, this is down to the sheer usability of the platform and the breadth of analysis it enables:
Built with Shorthand
Built with Shorthand
Built with Shorthand
Built with Shorthand
Built with Shorthand
Built with Shorthand
