Product Specific Patent Portfolio Optimization
After more than 200 years of activity, the US Patent and Trademark Office (USPTO) has issued 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 US 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 longer 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 patents 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.
The Ocean Tomo Gold Book is an objective review of Chinese company US patent portfolio holdings by product by company. For each Portfolio / Product Match (PPM), a 6 X 6 grid is created to assess patent coverage.
The six rows on the grid reflect key technology areas for the product at issue. The technologies are selected from the 4th level main group of the Cooperative Patent Classification (CPC) System jointly established between the USPTO and the European Patent Office (EPO). The top 6 (or 12) technologies are identified based on the volume of published applications and issued patents within a classification code in a particular product category.
Sample Company – Smartphone Patent Grid – 114 points
The six columns on the grid are time based and reflect the maturity of the technology. Specifically, the columns sort the patents by priority year of the first issued patent. These columns 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 is laddered. Categorizing patents based on technology and age by product provides greater understanding as to the depth of technology investment and informs risk management decision-making. 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 patents . The Grid squares are then color coded based on the number of patents owned by that company for that product:
- 0 – 59 patents
- 60 – 89 patents
- 90+ patents
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 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 identified based upon export value from China to the U.S. using data from the Observatory of Economic Complexity, created by the Macro Connections Group at the MIT Media Lab. Patent owner selection was based on 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.
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”.
The Gold Book reduces information asymmetry of the IP market. It serves as a reference for patent buyers and sellers to easily identify Chinese partners.
The Gold Book informs interested retailers and OEMs of the most desirable contract manufacturers – those that show “solid gold performance” provide their customers with proprietary solutions and a robust portfolio for patent defense.
The Gold Book assists companies seeking to map competitor patent estates providing market intelligence and other mission critical information.
The Gold Book is required reading for capital managers considering investments in Chinese operating companies.
The Chinese government actively promotes the commercial use of intellectual property including patents. The Gold Book is an efficient measure to facilitate such use.
The Gold Book is a valuable reference source to assist the government in facilitating supportive policies towards specific technology areas, such as AI, and new materials, etc. More specifically, the Gold Book can help China’s industry parks identify and recruit leading technology companies.
With evergrowing demand, foreign manufacturers 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.
Register to Access the Gold Book Platform
Registered users of the Gold Book can access additional content not available to unregistered users. Registered users can:
- observe up to 12 technology areas (twice the technology areas available to non-registered users)
- drill down within each box to view and link to the patents reflected in the count
- compare companies by product
To view the 100+ product categories and for further information on the Ocean Tomo Gold Book™, please contact. GoldBook@OTI.com.