Product Specific Patent Portfolio Optimization

After more than 200 years of activity, the US Patent and Trademark Office (USPTO) is expected to issue its 10 millionth patent in 2018. In comparison, the State Intellectual Property Office of China (SIPO), which was created in 1985, has already replaced the U.S. as the number one venue for global patent filings and expects in the next decade to receive 30 to 50 million applications!

Ranking portfolios by number of filings or active assets will no long have any meaning due to the practicality of understanding and managing the sheer number of in-force patents. In response, Ocean Tomo has created a simple framework to assist companies in focusing their patent estates on a product-by-product basis recognizing that a core set of diversified patent assets is optimal.

As the “Goldilocks Zone” has come to be known as the habitable zone around a star where the temperature is just right – not too hot and not too cold – for liquid water to exist on a planet, Ocean Tomo believes that the Goldilocks principle can be applied to patent management.

The Ocean Tomo Gold Book™ (Gold Book) was developed by Ocean Tomo in order to recognize the strength of a patent portfolio based on the number of patent families covering key technologies. It allows for an assessment of patents to assist managers in optimizing their holdings. Using the Gold Book as a platform, a company can easily identify technologies requiring further protection as well as determine patents which can be sold or otherwise monetized without undue risk.

Approach

The Ocean Tomo Gold Book is an objective review of Chinese patent portfolio holdings by product by company. For each Portfolio / Product Match (PPM), a 6 X 6 grid is created to assess patent coverage. All patents are organized by family to include all continuations and counterparts.

The six columns on the grid reflect key technology areas for the product at issue. These technologies are chosen based on SIPO patent classification as the top six patent classes related to that product.

Sample Company – Smartphone Patent Grid – 114 points

The six rows on the grid are time based and reflect the maturity of the technology. Specifically, the rows sort the patent families by the year of the first issued patent. These rows are the same for every grid regardless of product:

0 - 2 years              5 - 6 years              9 - 10 years             

3 - 4 years              7 - 8 years              10+ years old

The number of patents in each square on the chart are determined using off-the-shelf analytic tools wherein the priority date of each patent family is laddered. The top row reflects the newest filings whereas the bottom row relates to the oldest assets. Identifying patents based on category and age provides both technology depth and risk management. Patent prosecution strategy changes over time due to judicial or legislative events and the Gold Book is designed to manage the risk of such change.

Ocean Tomo populates every square on the grid by a count of patent families. Each family is counted once. The Grid squares are then color coded based on the number of families owned by that company for that product:

Portfolio Optimization

Patent owners are encouraged to file or buy additional patents to turn GREEN to GOLD Likewise, patent owners are encouraged to sell or trade patents to turn RED to GOLD . Patent owners may trade or transact patents directly. Ocean Tomo can also facilitate this activity through the Ocean Tomo Bid-Ask™ market or through private brokerage. Ocean Tomo China staff are available to assist in this process in both Mandarin and English. Patent teams will manage their portfolio to reach a solid gold performance. Ocean Tomo ranks companies within each product category based on a points standard. The Grids for a given product are ordered accordingly:

6 points for GOLD squares      3 points for RED squares      0 points GREEN squares

Patent transactions or trades made through the Ocean Tomo Bid-Ask market will be automatically and immediately recorded. The Grids affected by this activity will be shown in real time on the Gold Book online platform. Patent owners who transact directly may submit this activity to Ocean Tomo with a small reporting fee and the relevant Grids will be updated. There is a fee based appeal process by which patent owners can send patents they think Ocean Tomo failed to count or include.

Product categories were determined by the Ocean Tomo China Board of Advisors. Patent owner selection was based on public market research as well as a review of patent data. Patent owners (operating companies and non-practicing patent entities) can also submit an application to be included. Additional product categories and companies will be added over time.

Company Benefits

Assessment + Monetization

The Gold Book allows companies to easily identify technologies requiring further protection as well as determine those patents which can be sold or otherwise monetized without undue risk. By actively optimizing patents to given products, patent managers can demonstrate the value of their portfolio strategy through what has become to be known as “solid gold performance”.

IP Transaction Partners

The Gold Book reduces information asymmetry of IP market. It serves as a reference for patent buyers and sellers to easily identify Chinese partners.

Supplier Guidance

The Gold Book informs interested retailers and OEM’s of the most desirable contract manufactures – those that show “solid gold performance” providing their customers with proprietary solutions and a robust portfolio for patent defense.

Competitive Mapping

The Gold Book assists companies seeking to map competitor patent estates providing market intelligence and other mission critical information.

Investment Reference

The Gold Book is required reading for capital managers considering investments in Chinese operating companies.

Market Benefits

Promote Commercial Use

The Chinese government actively promotes the commercial use of intellectual property including patents. The Gold Book is an efficient measure to facilitate such use.

Facilitate Government Policy

The Gold Book is a valuable reference source to assist the government in facilitating supportive policies towards specific technology areas, such as AI, new materials, etc. More specifically, the Gold Book can help China’s industry parks identify and recruit leading technology companies.

Engage Advanced Foreign Manufactures

With ever growing demand, foreign manufactures routinely seek to transfer technology to the Chinese marketplace. The Gold Book provides insight into what technology is not sufficiently addressed while at the same time focusing small and medium-sized companies on important acquisitions from more advanced manufacturers.

Pre-Order The Gold Book Today

To pre-order your copy of the Ocean Tomo Gold Book 2018 at a discounted price of $750 (retail $1000) please email GoldBook@OTI.com.