The Art and Science of Patent Analysis: 4 Reasons to Hire a Patent Consultant

1. The Art and Science of Patent Analysis: 4 Reasons to Hire a Patent Consultant Presented by: Mary Ellen Mogee President, Mogee Research & Analysis Associates Mogee@mogee.com Anthony Breitzman Vice President/CTO, CHI Research, Inc. abreitz@chiresearch.com At the National Meeting of the American Chemical Society San Diego, CA April 3, 2001

2. Premise • Patent Analysis is both science and art • Consulting firms like CHI and MRAA have mastered both aspects and thus represent an effective and efficient solution to your patent analysis needs

3. Patent Analysis As Science Knowledge concerning general truths…esp. as obtained and tested through scientific method Webster’s New Collegiate Dictionary

4. Patent Analysis As Science • National Science Foundation • Science & Engineering Indicators 1970+ • Concern for conceptual framework and validation • Development of science & technology metrics • Development of a research community and a body of literature • Patents as one aspect of a larger technology analysis

5. Research Findings and Implications for Practice Item: Patent or patent family counts are correlated with level of R&D Implication: To measure amount of R&D, use patent counts or patent family counts Item: Patent citation counts, family member counts, and patent renewal decisions correlate better with impact or value than do patent or family counts Implication: To measure quality or impact of R&D, use citations, renewal decisions, or family size

6. Research Findings and Implications for Practice Item: Propensity to patent and propensity to reference vary across industries and technologies Implication: Don’t make comparisons across industries or technologies Item: All these relationships are “noisy” Implication: Don’t draw strong conclusions from small differences

7. Patent Analysis As Art Science is everything we understand well enough to explain to a computer; everything else is art Poster in the art classroom at Thomas Jefferson High School for Science and Technology

8. Things My Teacher Never Taught Me Item: The number of U.S. patents issued dipped sharply in 1979, due to budget shortages for printing patents Implication: A dip in 1979 patenting does not mean a fall-off in R&D Item: Australia automatically publishes applications one month after publication of the PCT application Implication: The number of PCT applications published in Australia does not reflect the attractiveness of Australia as a patent country

9. Things My Teacher Never Taught Me Item: The Derwent code T01-S for software content was established in 1997 and not applied retroactively Implication: Patents with software content did not first appear in 1997 Item: Amp Inc. began filing under the name Whitaker Corporation in the early 1990s Implication: Amp, Inc. did not stop patenting in the early 1990s

10. Interpreting Patent Indicators: What is a highly cited patent? Consider: • US 04948292 - Paving machine having transversely and longitudinally adjustable grade sensors. • US 04935020 - Device for use in the handling of body fluids. Both are 1990 patents with 10 citations from later patents. However the first patent is cited twice as highly as expected, while the second patent is cited half as highly as expected.

11. Aventis has 29,000+ Patents; About 1% have “Aventis” in the Assignee Field. How do you find the rest?

12. Aventis isn’t an Extreme example • General Motors and Dow Chemical patent under 100+ names • P&G, Unilever, DuPont, Ford and others patent under more than 50 names. • Lucent is a nightmare to track now, and is getting worse with its Avaya and Agere spinoffs.

13. 4+ Reasons to Hire a Patent Consultant • Expertise • Experience • No Lost Opportunity Cost • Unbiased, Objective, Confidential

14. Reason 1: Expertise A patent consultant needs the expertise to: • Deal with Quirks of different patent systems • Overcome the Difficulties of searching for patents • Use known metrics as well as develop new metrics for analyzing patents • Use a variety of tools (including a number of home-grown tools not publicly available) for analyzing patents

15. Reason 2: Experience • In addition a patent consultant has the experience to know what works in which industry. And • Knows how to interpret a number of partial indicators to spot real trends

16. Reason 3: No Lost Opportunity Cost • A patent analyst works on a project until it is done. • If a project is done in-house, can the person do an adequate job, while still doing his/her other duties? • Even if the answer is yes, what is the opportunity cost to the company by diverting the person from a project in which he/she has expertise, to a patent analysis project? • With a patent consultant, you get an additional resource, without giving up any personnel.

17. Reason 4: Unbiased and Objective, Confidential, Efficient • Unbiased and Objective: Can an employee within a company easily break the news to his/her superiors that the company’s technology is mediocre? Maybe sometimes; a consultant always can. • Confidential – Our clients are a “black hole”, otherwise we couldn’t remain in business. • Efficient – If we couldn’t do it better, faster, and cheaper, we couldn’t remain in business.

18. Conclusion • Because Patent Analysis consists of both Science and Art, it is difficult to develop the expertise and experience required without doing it full-time. • Therefore Patent Analysis consultants are an efficient solution for many companies.