The Competitive Intelligence and IP interface

How 5 minutes can save you from losing your shirt by Carel Smit and Wessel van Wyk - Smit & Van Wyk IP

In the time that it takes you to drink a cup of coffee, you could find out which products your competitors are going to launch, who their top R&D personnel are, and which countries they're expanding into. Usually, that sort of information is expensive to get, but the Internet is opening up a wealth of information to savvy entrepreneurs and businessmen who know how to use information contained in publicly listed databases to their advantage. The trick, of course, is know which databases to use.

Competitive Intelligence

Competitive Intelligence (CI), briefly, is the black art of knowing more about your key competitors than they know about you. Unfortunately, most CI analyses done in South Africa do not make use of some of the cheapest, most easily obtainable information available out there, which is usually 100% accurate. The magic ingredient missing from most current CI analyses is intellectual property searches, such as patent, designs, and trade mark searches. A large number of CI analysts pay no attention to the immense amount of information contained in, for example, published patent applications.

Perspective

Approximately 80% of information published in patent specifications is published nowhere else on earth. Seen in perspective, this means that 80% of some of the most advanced technical information is only available through patent databases, most of which are free. This means that published patents constitute one of the greatest sources of untapped information available to users, who are frequently oblivious to the wealth of information available at their fingertips.

Patent searches

Patents are 20 year monopolies granted to an individual or corporate entity for developing a new and inventive concept. All of the information contained in a patent specification, including technical details, names of inventors, date of filing, technical drawings, discussions of related documents, etc. is published as soon as a patent has been granted. As such, patents are an extremely valuable information resource, as there is a duty on patentees to disclose all of the details of their inventions to validly qualify for their patent monopoly rights. Failing to disclose the best method of performing the invention puts an invention at risk of being revoked in certain countries, as does omitting the names of all the inventors, which can be used to your advantage. This makes patents a great place to see which business subsidiaries your competitors are using to file patent applications in, who their most prolific inventors are, which fields of technology they are abandoning, and which fields they're actively pursuing.

Considering that there are more than 70 million patent documents searchable free of charge and pre-classified into major technology groups, you would be wise to take 5 minutes a day to see what your competitors are up to. Doing so has never been easier or cheaper, but do not, however, think that a regular search using search engines will find these records - most can only be accessed through specialized databases belonging to the US, Australian, UK, Canadian, Chinese, Korean, Japanese, and European Patent Offices, although Google recently launched the Google Patents initiative which allows you to search the full text of granted US patents using a Google interface.

When it comes to patents, there are several general kinds of patent searches that can be conducted, but the most useful searches are novelty searches, name searches, validity searches, and the more complex infringement (freedom to operate) searches.

Novelty searches

Your company is thinking of expanding into a new market, such as cellphone-based lottery systems. Cursory Internet and subject matter journal searches have revealed that your line of thinking may be original, as no-one else has done what you're thinking of doing. However, these types of searches will not necessarily pick up patents relating to your field of technology. While companies frequently publish the results of their research after having obtained provisional patent protection, they are often discouraged from doing so by their research institutions or commercial partners. The impact of this is that huge amounts of R&D is only represented in patent databases. Do not be complacent about the fact that there are no Internet articles or journal publications disclosing your intended line of development - research groups frequently disappear off the map for several years, with their only output being in the form of patents, not publications, prior to product launch.

Tremendous time and money savings are to be had by expanding your initial searches to include patent searches - your goal is to build on the ideas of other, instead of re-inventing the wheel. Novelty searches can be seen as state of the art searches, which allow you a bird's eye view of patents relevant to your research and from which you may glean a wealth of information and, importantly, establish who stakeholders in your intended area of development are. Such searches may be conducted by your patent attorney or you may wish to do so yourself. Bear in mind that patent searching is a specialized field which may present potential pitfalls to the novice searcher. However, if you merely want to conduct a cursory search, it is often worth doing so yourself by visiting the websites listed at the end of this article and doing key word searches. You can keep a list of your keywords and conduct so-called "watching searches" each month to keep track of developments in your field. Of course, even with over 70 million searchable patents worldwide, you may not be able to locate possibly anticipatory documents in unlisted databases or which fall outside the searchable time periods available for each of the online databases.

The most important consideration to bear in mind is that no novelty search can be absolutely conclusive or exhaustive. Due to most countries having a so-called "absolute novelty" requirement (including South Africa), it is possible that a fairly obscure novelty-destroying document may lurk in an unreachable corner of the world - this could have an impact on the eventual patentability of your invention in most countries of the world. Novelty searches will most likely not be able to locate all such documents, but will give you an impression of how densely patented your field of invention is. If there are no direct hits, it may be worthwhile to at least obtain provisional patent protection for your concept before proceeding.

Infringement searches

Your initial searches showed that there you may be backing a winning horse, for which there exists an international market. You have a great product and want to now produce and sell it in South Africa, the USA, and Europe, for example. The next step would be to conduct an infringement/freedom to operate search through the records of each jurisdiction. This is done to ensure that you do not step on your competitors' toes when commercializing the invention. Your initial on-line search will have highlighted the most important inventions to side-step, but you would be wise to hire the services of a patent attorney in assessing your risk of being sued for infringement in each such jurisdiction. While this adds to the product development costs, it's cheaper than having to stave off a legal action for infringement in a foreign country. Infringement searches are usually only limited to patent records spanning the past 20 years or so, as patents in most countries expire after twenty years.

Validity searches

Your research group has located a patent filed in South Africa or other countries which hampers the commercialization of your product or process. You suspect that it was not novel at the time it was filed, as you were active in that field. Validity searches may then be conducted through patent and literature resources in order to locate any anticipatory material published directly prior to the filing date of the patent application. Should you locate any such material, you would have to enter into litigation with the patentee, in order to have such a patent revoked.

Name searches

You have conducted a preliminary keyword search through patent and scientific literature databases, but you have not located any relevant publications which affect your research. Alternatively, the searches have located numerous hits and you do not have the time to scan through every abridgement. However, if your are aware of the names of any researchers or inventors active in the particular field, it is usually possible to find patents filed in their names quite easily. This may also be done with the names of the possible applicants (patent owners).

The problem with South African patents

A big caveat - most South African patents are not available on-line, as the South African Patent Office (resorting under CIPRO, the Companies and Intellectual Property Registration Office of the DTI) has manually indexed patent abridgement cards which have to be searched manually. The name index records, however, are in electronic format, but only from mid-1996 onwards. Conducting a subject matter patent search through the official records at CIPRO is thus laborious and time-consuming, and one (or one's patent attorney) needs to go to CIPRO in person to conduct searches. While there are new databases available, but these do not necessarily constitute the original SA records.

In South Africa, name searches are of particular importance, due to the fact that the name index records are more easily searchable and more up to date than the manually indexed abridgement cards kept at the South African Patent Office. Because all records are open to public inspection (this obviously does not include pending, unpublished patent applications, which remain secret until published), the abridgment cards kept at the SAPO are often incomplete or indexed incorrectly. This makes name index searches a particularly powerful way of locating patents. An obvious danger with such searches is that the name of the inventor or the applicant may inadvertently have been misspelled, which (although patent attorneys sometimes check alternative spellings of names) could result in a very relevant patent not being located.

The way forward

Visit the websites listed below and, using keywords or the name of your competitors, see what is available and who is filing what - you are guaranteed to be surprised. Inventors frequently find that certain aspects of their inventions are not novel, which allows the patent attorney drafting their patent specification to focus on those aspects of the invention which are patentable. In addition, entities involved in collaborative R&D frequently find that their collaborators are actively pursuing patent protection for their ideas, leaving such entities exposed. Similarly, trade mark searches can also be conducted to determine which company holds the rights to a product or service.

Visit the following website for more information on patent searches:

Smit & Van Wyk IP: www.svw.co.za

CIPRO: www.cipro.gov.za

World Intellectual Property Organization: www.wipo.int

US Patent and Trademarks Office: www.uspto.gov

Patent Information Users Group: www.piug.org Smit & Van Wyk IP is a full service intellectual property firm based at the Innovation Hub in Pretoria. Carel Smit and Wessel van Wyk can be contacted at mail@svw.co.za, or 012 844 1000.