4.1 FtO Search
4.2 Prior Art Search
4.3 Technology exploration / License Search
Written by Dr. Marc Feron, former EPO patent examiner.
4.1 Freedom-To-Operate (FtO) analysis:
Legal opinion on whether or not a contemplated commercial production, marketing and use of a new product, process or service infringes the IP rights of others in a certain country, derived from searching patent literature for issued or pending patents in that country. WARNING: A FtO search, no matter how exhaustive or expensive, can never eliminate all risks nor reveal all potentially problematic third party IP rights (e.g. pending patent applications not yet published). Cost and time constraints tend to increase these risks. Also see: wipo-magazine: IP and Business: Launching a New Product: freedom to operate
Octimize your Freedom to Operate Analysis!
Patent litigation is best avoided when introducing a new product or process into a new market because it can be expensive, uncertain and risky. A Freedom to Operate Analysis is a precaution aiming to reduce those risks by assessing whether or not, and to what extent, the commerce of a process or product can be blocked in countries X Y Z by valid patents or by pending patents which could become valid in one or more of those countries. As a FtO search typically not only involves a patent search to uncover possibly relevant third party IP rights, and a patent register search to evaluate in which countries these IP rights are or may become valid , but also an interpretation of the scope of patent claims according to the case law of countries x, y and z, such a search can be efficiently prepared with an octisearch, but normally cannot be considered complete without a legal opinion of a patent attorney. Although the following explains how much of the patent attorney’s work can be prepared, and which third parties may become relevant for a licensing or cross-licensing agreement, the reader is hereby expressly warned against using the following methods without the expert opinion/supervision of a patent attorney, or betting the future of their business by attempting to interpret by themselves the actual scope of unfamiliar patent claims. Determining the scope of a patent always requires considerable experience in interpreting the claims, the written specification, the relevant prior art and the history of the application process. Warning: A FtO search will be useful in identifying most of the relevant and potentially problematic/blocking IP rights, especially if carried out by an experienced patent attorney. It may also be useful for suggesting negotiation partners for cross-licensing, or for suggesting which vital technologies should be patented. However, despite all precautions being taken, it is inevitable that some relevant third party IP rights might not be found, e.g. incorrectly classified applications using exotic terms, or recent applications not yet published.
Principles and procedure
Step 1: define the essential features of a technology, product or process of interest
To start an effective FTO search, please express in a text in plain English all the essential and necessary features of a technology, product or process of interest as precisely as possible. The starting point can be an advertisement pitching the merits or special features or special advantages of your product or process, and/or it can be just a list of product or device features or process steps which you consider essential to obtain the special advantages of the invention.
Step 2: Octisearch your text, identify similar prior art, then refine your text
Octisearch the text of Step 1. If you see something in the list of octisearch results that looks very much like your technology, make a note of it, this is a good start. Why? By having found a similar document, you have gained additional vocabulary and expressions to better define your technology and its distinguishing differences with that document, if any. Write up those differences and add them to your original list of features in the octisearch query. Also, it may be useful, in case of great similarity, to copy and paste from the description of the relevant prior art which you found at least the features which are common with your own technology and redo an octisearch on the thus completed writeup of your technology, product or process, iteratively until you no longer find documents that are exactly identical. Then you have probably arrived at a perhaps not very elegant, and perhaps partly redundant, but at least sufficiently complete description of your invention for octisearch FtO or patent application preparation purposes. You can therefore deduct from this process which features are essential to distinguish your invention from the prior art, and which features are essential to properly characterize the essential features of the prior art relevant to your invention, product or process (if you are still unsure what those essential features are or how to define them, a good look at the independent claims of the closest patent documents found by octisearch might suggest which features were considered essential by the proprietors of those other documents. If on the contrary, octimine reveals that all the features of your technology, product or process are known from a single document, then try to identify whether, for how long, in which association and to which extent (by which subset of essential features) they have been known. If on the contrary, octimine reveals that all the features of your technology, product or process are known from a single document, then try to identify whether, for how long, in which association and to which extent (by which subset of essential features) they have been known.
Step 3: the 21 year search: evaluate to which extent your technology is public domainThe best way to ensure worldwide FtO (Freedom to Operate) is to be able to prove that your technology was entirely known over 21 years ago (because the maximum duration of a patent is 20 years), and to keep that proof. Some very successful companies therefore almost exclusively advocate use of documented older technology and implement it very, very well to minimize risks in export markets where there is little certainty about the contents of patents in force, e.g. exports to China or Japan. It therefore makes sense to identify your product or process by its features and to search in non-patent literature (also standard textbooks) and octisearch patent literature to find out how much of your product/process was known 21 years ago. Fundamentally, this part of the FtO analysis is a prior art search. Let us imagine we found 5 relevant documents D1-D5, each disclosing all or most of the features of your product or process, 3 of which (D1-D3) are 21 years or older. Let us present these search results in tabular form in the following manner, filling out for each feature the page and line number where that feature is to be found in each document (filling out “o” if the feature is not disclosed): Two possibilities:
- If that search identifies in a single document 21 years old or older all the essential features of your product (e.g. D1 in the above table), you have hit the jackpot, you have worldwide freedom to operate (at least from the patent point of view), and any patent owner (e.g. the proprietor of patent document D4) believing he has IP rights or even any patent troll will be stopped cold in its tracks and demands by being shown that document. If you found a document D1 disclosing all features, the FtO analysis stops here, you do not need to go to Step 4 below.
- If that 21 year prior art search reveals one or more differences between your product or process and the closest prior art (i.e. if D1 were not present in the above table), it is potential patent claims in particular on that or these differences, or part of that difference, and on the problem it solves that you’ve got to worry about, especially if it is not completely obvious.
- If the differences between your invention, product or process and D2 or D3 do not seem obvious, then you may be considered (rightfully or wrongfully, we’ll see that later, but it is a situation where it is particularly prudent to ask a patent attorney to review the situation in more detail) as an infringer by the respective proprietors of D4 and D5. However, as a first step in this situation, it makes sense to search more precisely the missing feature and documents disclosing it: the patent classification fields (IPC,CPC,USPC,FI,FT) of those differences may be helpful in restricting the octisearch (please go to step 4 and also refer to the octimine application notes explaining the octisearch prior art search procedure) to find out with more certainty whether or not the differences truly are not public domain and if not, who may be holding patent rights.
- If the difference is obvious, or results from the obvious combination of two documents (e.g. D2 with D3 above) and you/your patent attorney can easily prove it by the problem/solution approach, you almost have worldwide freedom to operate, but you should not be surprised if holders of earlier IP rights making demands on you are not necessarily easily convinced that such a combination of documents invalidates their demands. Here again, assistance from a patent attorney is necessary to rapidly solve any misunderstanding and minimize the likelihood of unnecessary but costly disputes.
Step 4: octiSearch
If the difference is not obvious, you need to first identify whether there are any blocking patents of 20 years or less claiming that particular difference or one of its essential features, whether these patents are still valid or pending in countries X, Y and Z (it is rare for a patent to be maintained the whole 20 years, because the yearly renewal fees increase with time), and who owns them. This search can be initiated by octisearching the text defined in step 2 for countries x,y or z if octimine has English equivalents of all the patent documents for these countries. For instance, a reliable octisearch of US, WO and EP patent documents is always feasible. In particular, valuable patents by larger companies are almost always applied for in the US, even if they do not apply in their home countries, because of the size of the market, and the US practice of awarding punitive damages (multiples of actual damages).
Step 5: Octisearch result and patent family status/validity analysisIf relevant or potentially relevant US, EP or WO documents are found with relevant descriptions, then the general scope of the claims (which may claim another aspect entirely even if the description is similar: remember that for an fto search, unlike for a prior art search, the scope of the claims is essential) and the status (pending, granted, lapsed, territorial scope, family members in which countries, whether priority has been claimed, at what date, from which countries and which documents, examination status, patent classification), in particular the legal status of the documents must be carefully studied (DocDB, espacenet). Special attention must be given to the Global Dossier in Espacenet, if available, as this reveals what patent examiners think of the validity of the patent document and its claims, of the prior art status (this gives very useful information about which features can be considered public domain and which other companies might own relevant IP rights), where and how to look for further relevant documents (the citations by patent examiners deserve an attentive look, so do the IPC, CPC, FI and FT patent classification classes to restrict an octisearch and redo step 3 to iteratively identify with more accuracy what is public domain) and how the claims should be restricted to be valid. It is at that stage that patent documents specific to countries x,y and z are found from espacenet. In particular, the priority documents, if any, are likely to have been used to claim priority in more than one country. The validity of the priority status can also be verified at that stage, if it turns out that the priority was not validly claimed, e.g. because the priority documents were actually not a first filing, a case frequently overlooked by patent examiners under production pressure.
Step 6: claim evaluation for specific countries x, y and zoctisearch will identify patent documents with similar descriptions but normally will not be able to give a reliable opinion of the scope of the claims of the few patent documents it identifies as similar, even for those that are worded in English. This is actually where the Because in any patent the claims must be supported by the description, each patent with a similar description is likely to have claims which may be blocking for the product or process of interest. However the actual scope of the claims must be examined individually and manually for the granted claims of family members granted in countries x y and z on a case by case basis because examination may have affected the scope of the different claims in different family members. If relevant patents claiming this difference or part of this difference or an equivalent of part of this difference, then DocDB and espacenet must be consulted to see whether patent family members exist or potentially could exist (e.g. for WO and EP) for countries X,Y or Z, and whether the patents are still pending, in force or have lapsed, and how they have been amended. It is important to remember that:
- patent protection is territorial: rarely do proprietors apply for patent protection in all countries!
- patents have a limited duration: 20 years (or less, when the renewal fees have not been paid)
- patents have limits of scope (often further reduced by patent examination: Espacenet’s global dossier for a patent normally gives useful clues as to why the scope of a patent may have been reduced) normally defined by the granted claims
Step 7: Are there any valid rights?
If the patents found by octisearch (if any) have not been filed in countries x,y or z, and have no family members there, or have not been renewed, you have freedom to operate. If there are no patents, consider patenting that aspect yourself. Often, an invention is left unpatented, or lapses earlier in smaller, economically less important countries. You then have freedom to operate in those countries. And the claims of pending patents may still be restricted upon examination and thus not pose a problem any longer. If there are patent claims in force not giving you freedom to operate, you have several options:
- redesign your process or product around that patent, preferably using known technology
- If there is no way to avoid using more recent technology (e.g. necessary compliance with a recent standard) covered by patents in the country, get a license (or enter cross-licensing negotiations)
- if the patent owner is smaller, or if punitive damages are not in the legal tradition of the country, some infringers sometimes take their chances
In a Freedom-To-Operate (FtO) analysis, companies are investigating whether there are any proprietary rights that hinder the development, manufacture and launch of a product. Blocking property rights (e.g., patents, trade names, or utility models) may affect both the entire product as well as components, manufacturing methods, technical details, or design and marking elements of the product. A careful freedom-to-operate search for a specific country always takes account of the patent applications filed both internationally and regionally, since national patent rights can also arise from these.
4.2 Prior Art Search
Always try to query with documents, or preferably agglomeration of documents, which globally look like what you are looking for.
Step 1: Document identification
Find the application or patent publication number to be invalidated, for instance: JP2009291310 or DE102006047370A1, get a facsimile/PDF copy of the original publication from Espacenet, the EPO’s patent information service, read it, look at the figures and get a feeling for the technical problem being solved, and the main features of the solution proposed by reading the abstract, the discussion of prior art in the first pages of the application and the description of the front page image. (Espacenet provides a free instant machine translation service into any language in case the document is in a language unfamiliar to you, e.g. Japanese).
Older Asian patents are sometimes only available in facsimile in Espacenet, but even these can be converted to machine-readable language by free OCR software.Please also make a note of the patent classification codes (IPC, CPC, USPC, FI and FT) characterising both the technical problem and its solution, as provided by the bibliographical database of Espacenet. Espacenet often provides more detailed, updated and more reliable patent classification codes than the codes printed on the front page, especially for US patents. Do not restrict the search to these classes right away, though, because a surprisingly large number of patent documents are not classified where they should be! This is a substantial advantage of octimine over Boolean searches, especially over search methods relying on patent classification based restrictions!
Step 2: Octisearch!Input that patent number in the Octisearch field, then click on search. Please don’t use filters at this stage, not even a date nor an IPC class: the goal of the present step is to find more very relevant documents about the same idea, even if they were published too late or misclassified.
- Octimine searches in English, but will try to find an English language family member if your patent number corresponds to a document in a foreign language. If it does find one (octimine knows that JP2009291310 is in the same family as US2009/0295200 and may assume that the latter is a usable English translation of the former), you’re all set to do a so-called „single patent number search.“ Wait a few seconds for octimine to display its results after working its semantic similarity magic, and go on to step 3 below.
- If the specified patent number has no English-language family member, like JP 2003- 299551A, octimine will pretend not to know its number and unfortunately won’t tell you how to handle the situation but don’t despair! You still can do a quick and precise octimine invalidation search on all 90 million patent documents of the Espacenet database maintainedby the European Patent Office, in any language (yes, even Chinese, Portuguese or Hindi language patent documents), with the following trick.
First, get the original language text of its description and claims from Espacenet, the EPO’s patent information service. Second, use Espacenet‘s "Patent Translate", a free online automatic translation service for patents to get a free machine translation into English and then do an octimine text search by pasting the translation of the description into the Octisearch query space!
Octimine will provide excellent results on such machine translations even when they look as horrible as machine translation usually does, so do not spend any time or money on a better translation. To get more focus on the invention, it may be more effective to feed octimine only with the description of a particular embodiment (usually the embodiment selected for the front page image.
In case Espacenet is unavailable, you can also use Google Translate, or the free machine translation service of the relevant national patent information authority (J-Plat Pat for Japanese patents, which also provides info about the excellent Japanese FI and F-Term patent classification, for instance) to do an octisearch on its translated text, because octimine works very well even on very poor translations!
Step 3: Analyze the octimine results!
- Expand & explore the fields „Citations and references“ and „Similar documents“ - click "+"
- Look at the abstracts and figures in the results list, without paying attention to their dates for now:
- Are they apparently dealing with the same problem and solution?
- Are they more or less what you were looking for?
- If relevant, are their IPC classes where you were expecting them? Check the IPC patent classification on the WIPO website to find out how to interpret the IPC codes, to decide whether those new codes may be worth exploring.
- Make a note of the documents that seem most interesting, especially those which were published before the priority date, as an invalidating document (proving obviousness or lack of novelty) may already be found among them! Jackpot already?
- Also make a note of later documents which are technically very similar to the patent to be invalidated, as they can provide richer vocabulary and more options for the semantic search: this is one of the reasons why octimine offers searching multiple patent numbers in a single query: if they are similar, this offers greater semantic certainty that a similar document will be found.
- If the results seem disappointing, go to Step 5 to learn how to use them anyway!
Step 4: (Re)Iterate your octisearch !
How? With multiple patent numbers or different text sections!
The previous step(s) probably yielded several very relevant patent publication numbers that are very similar to your original document: combine them with the publication number of your original document, separating them with commas. The idea here is to have a larger pool of vocabulary and semantic descriptions for that particular invention we’re looking for, to ensure that no stone is left unturned, and no document is missed. Then re-run octimine on that combination.
If you feel octimine has missed one important aspect or feature of the invention, it may be worthwhile to perform an octimine text search on the description fragment where that missing feature was best described, and possibly add equivalent passages from other documents describing that same aspect which was mostly missed to find relevant patent numbers with that feature.
By reiterating step 4 and trying different combinations of documents or texts, you should soon get to a point where you have identified all documents that are most relevant to seeding your search.
If there is a very specific word (never a general one!) or acronym that is very specific of the technical field of interest, like MIDI in electronic music or LTE in mobile telephony, then it may be wise to include it as limitation in one of the iterations, to try to uncover more relevant documents specific to that topic.
Step 5: Present your results
To present the results of a prior art search to your clients, you can decide on the 5 most relevant documents D1-D5, by order of relevance, having at least collectively all the features of the claims of the document to invalidate, and present their disclosure in tabular form, with one line for each claim feature, on column for each document, and in each intersection of a line with a column, a citation of where the feature of that line is disclosed in that particular document, or a O if it is not disclosed.
You should also indicate which documents are logically combinable with one another according to the problem-solution approach and by which reasoning they might be combinable.
Step 6: Diagnose and Fix your Octisearch!
Normally, an Octisearch provides consistently good results, especially in cases the “similarity average” curve on the “Top IPC codes” diagram exhibits just one or just a few strong peaks (warning: the most relevant IPC peak for the invention is not always the highest!) But a flatter similarity average, or one with too many peaks can be really bad news for the relevance of the results. If the results are disappointing, you can try one or more of the following:
- Try limiting the search with one of the IPC classes written down from Espacenet at Step 1 or one of the peaks of the “similarity average” curve: you should find at least a few halfway relevant documents that way, which will allow you to iterate as per Step 4. The classification code meanings can be retrieved at “classification search” in Espacenet or at the WIPO web site. It may be wise to restrict an octisearch only at the IPC class level (e.g. B62 for cycles) subclass level or main group level.
- Try to add to the octisearch text query one or more scientific papers or standards describing the invention or one of it more elusive aspects in very narrow technical terms.
- The “similarity average” on the diagram called “Top IPC codes” (the wavy line, not the bars) is actually your best indicator of the suitability of your query for an octimine semantic search. The better clue to the truly most relevant class is a peak of the similarity average (but that peak will not necessarily be the highest peak; in fact it is often a minor peak).
DO’s and DON’Ts with octimine
Do pay attention to the peaks of the similarity average (in the Top IPC Codes diagram), their shape, their number, and the meanings of the corresponding IPC codes (Do go to the WIPO web site to find out what they mean!). If the “similarity average” line of your octisearch has rather well defined peaks, and not too many of them, then your query is ideally suited for semantic search because the technical fields it describes have been very well recognized. Restricting your octimine search to those codes (for instance simply by clicking on them in the Top IPC Codes diagram) is likely to put a smile on your face! , because inventions are classified in patent classification systems such as the IPC in terms of the technical problem they solve and its solution as technical contribution to the prior art, so that in theory, if you find the right IPC code, you also find the place where all the most relevant prior art is located.
Do experiment with segmenting your octisearch text to search with increased focus on this or that feature. In particular, a restriction to the description of just one embodiment, or just one figure, may work wonders in a long text describing 76 very different embodiments.
Don’t restrict your initial searches (whether in time, nor in terms, nor in patent classification classes): you might miss an important document which may have been misfiled, or a later document which may be of no use as prior art, but ideal as a source of vocabulary for semantically finding (in a multiple patent number Octisearch) a very relevant prior document: any document that explains precisely an important feature or group of features of the invention is good to have for an octisearch.
Don’t be tempted to octisearch the terms of the claims: these terms are often much too general to be useful in a semantic search. Do be tempted to use very specific terms instead.
Don’t be tempted to use only three or four words in octisearch, unless they are really very, very specific, and you are prepared to limit the search by the correct IPC code.
Don’t pay attention to the rather misleading bar graph in the “top IPC codes” diagram, and do not restrict the search according to the tallest bars, because in most cases they are a statistical illusion.
Don’t spend money on expensive translations if you search foreign language texts: octimine works just as well with raw machine translations. See the detailed prior art search example of JP 2003- 299551A, a patent application unknown to Google because it has no non-japanese equivalent, which any non-japanese speaker can search and invalidate fairly quickly in octimine.
Don’t be tempted to use octimine as you would a classical boolean search engine: octimine thrives on very specific technical terms and is most likely to lamentably fail on catch-all terms. Patent searchers need to throw away their old boolean search reflexes, which are downright harmful and counter-productive in an octimine search and acquire a new way of thinking to make the most of octimine (how can I provide octimine with the fullest bags of words most representative of the invention): changing your boolean search habits (a search string for searching a few relatively broad search terms) to adapt to octimine (lots of very specific words) may actually be the only difficult adjustment necessary to very effectively search with octimine.
References: Traditional patent searching approaches
“Patent Searching Made Easy: How to do Patent Searches on the Internet and in the Library 6th Edition” by David Hitchcock, published by Nolo, 950 Parker Street, Berkeley, California 94710
4.3 Technology exploration / License Search
Do not reinvent the wheel!
For any technology, quickly find out with octimine which companies are innovation leaders in which markets, how they do it, how they could help you, how old their technology is, the structure of their patent portfolio, whether including their technologies in your products may lead to IP disputes in certain countries, etc...
Whether to develop in-house or to seek an association with a supplier is fraught with uncertainty and danger, especially in cases the product or process being developed is to be marketed worldwide.
- If the contemplated development belongs both to the core business and to the development strategy of your firm, then a series of octimine FtO analyses may be helpful: please refer to the relevant octimine FtO application notes. However, since prudent manufacturers maintain a patent portfolio commensurate with their market share, read on to know how to find out which competitors seem about to enter your markets and how to pin hard numbers on their ambitions
- When seeking association with a potential supplier of relatively unfamiliar technologies, many parameters are important (price, reliability, quality, etc.) but also three kinds of information are essential:
- Is this the best technology?
- Is this technology part of the core business of the supplier? Is it likely to remain so?
- Would adopting this technology from this supplier and integrating it in our firm’s own products or processes be likely to cause license or market access problems in certain countries or potential markets of interest?
Supplier 1 CPC/IPC Country A Country B Technology 1 Patent 1 Technology 2 Patent 2 Technology 3
Supplier 2 > Country A Country B Technology 1 Patent 3 Technology 2 Patent 4 Patent 5 Technology 3 Patent 6 & 7
Supplier 3 > Country A Country B Technology 1 Patent 8 Patent 9 Technology 2 Patent 10
An Octisearch can help address these questions by quickly finding the relevant patent documents to populate this table.
Step 1: Problem definition
Identify the technology field to be explored. In our example, octimine is used by an electric bicycle manufacturer wishing to adapt or borrow inverter-based regenerative braking techniques (converting the kinetic energy of the vehicle back into electricity, so as not to waste braking energy)
Step 2: Obtaining material for starting/seeding the octisearch
- Octimine is best started by inserting one (or even better: more than one! Please separate numbers by commas) patent number describing the technology.
- In case octimine does not recognize/know the patent number, paste the patent description or a technical article describing the technology into the Octisearch field.
- If the patent description is not in English, find an English family member or paste a translation of the patent description or technical article ( Google translate quality is OK!)
- If none of the above is known, make up a sufficiently specific description! For our example, we’ll paste the words “regenerative braking inverter” into the Octisearch query field.
Step 3: Start your octisearch, restrict if necessary, find “jewels”
- Octimine was actually designed to better handle longer texts, so octisearching just three words, even very specific, is not the best way to use it. Therefore, the first batch of octisearch results may be disappointing, but our goal at this early stage is to find somewhat relevant patent documents (Jewels!) to meaningfully iterate the Octisearch query and thereby enrich the search vocabulary.
- WO20141 55720A1, see also corresponding English language family member US2016/0052399A1, looks good because it details recent regenerative braking electronics, but is not about bicycles of golf cars: because of the mention of air brakes, it may be more suited for electric trains. Let’s make a note of it, though. It may become useful.
- Disappointing octisearch results can almost always be drastically improved by further restriction, as taught in the octimine application notes for FtO and Prior Art searches. For instance, results concerning golf cars or bicycles are more easily found by applying the “OR” cutoff filter to the 1000 documents of the Octisearch to find only those including either the word “bicycle” or the word “golf”.
- After applying this bicycle/golf octisearch restriction, expanding the results list by clicking on the green "+" to see the abstracts and figures, we identify for instance the following “jewels” just by looking at the figures:
- WO2011002482A1 Electric bicycle drive system with regenerative charging
- US2009112383 (A1) Golf car with regenerative braking
Step 4: Iterate your Octisearch!
Octisearch either or both of the above patent numbers, for instance only WO2011002482A1 if you’re looking specifically for regenerative braking bicycles. This provides a fair number of relevant results.However, something is not entirely right: specifically, the “similarity density curve” is very steep and shows a knee of the curve occurring for a similarity score of about 350, with only two documents with scores over 450 above that knee, and not many details about inverter design in these two documents. Ideally, we would prefer a “fatter” peak of the “similarity density curve” above the knee, including at least 10 to 20 documents well above it, and we’ll have to adapt the query accordingly if we wish to obtain results better focusing on the details we were expecting.
Step 5: Reiterate and re-reiterate your octisearch and results analysis!
(Octimine’s first law: always try to query octimine with documents, or preferably agglomeration of documents, which globally look like what you are looking for)
Octimine’s second law: Iteratively refocus your octisearch rolling snowball, repeatedly integrating your best-fitting patent number results in the next multiple patent number octisearch query!
Let us now try a multiple patent number octisearch using what we
found: the initial patent number WO2011002482A1 (for its focus on bicycles), US2009112383 (for its focus on golf cars) together with the above-mentioned US2016052399A1, which has the advantage of focusing clearly on what we want, even if not exactly for bicycles, i.e. a modern inverter circuit set up for regenerative braking. Our goal remains to know more about the electronic circuits to be used in those low-cost, low power, lightweight applications on bicycles (no train inverters/variable frequency drives desired!). We now get a similarity curve with a less pronounced knee (at a higher similarity index of about 420) and a much fatter peak above that knee, which is a good sign:
Among the results, which are still quite car-oriented, we notice EP2711231A2 which has lots of specific electric bicycle braking details, and which therefore would be a great “seed” for an octisearch on electric bicycles.
Let’s keep our patent snowball rolling by adding this publication number to our multiple patent number octimine query (now comprising four relevant publication numbers separated by commas) and re-reiterate: the results now
become more cycle-oriented, and the
higher knee (around 480) and even
fatter peak (meaning more very
relevant results on our similarity curve now look even better!
We now notice in our list of results a number of jewels usable as octisearch seeds, i.e. numerous other documents concerning exclusively regenerative braking for bicycles (EP1415904A2, EP2481625A1,WO2012086459, WO2014200081 ) or electric motorcycles (EP2660093, EP2660096, EP2660097, WO2014064728 and WO2014064730 in Japanese; family members EP2910402, EP2910400) or electro-scooters (EP1488502). We also notice on the front page of the electric bicycle documents that those have many different IPC in the range B62 (with auxiliary electric motor B62M 6/40, B62K 11/00 engine-assisted cycles, B62L Brakes specially adapted for cycles), and this B62 IPC code helps quickly identifying documents relative to these cycle topics in the list of octimine results, without looking at the abstracts or figures.
We also notice that the range of vehicles in the results is still very diverse. But we just want bicycle documents! So as usual with octimine when we want better results, we re-re-re iterate, but this time discarding all non-bicycle documents from the query set and octisearching just the five most relevant bicycle regenerative braking documents which we found in the previous iterations.
Step 6: Re-Re-Reiterate your octisearch with your best documents!
Let’s now octisearch only the identified bicycle patent numbers of greatest interest, for instance EP1415904A2, EP2481625A1, WO2012086459, WO2014200081, reusing EP2711231A2.
Notice that in the above examples of multiple patent number searches, the addition of more patent documents in the query produced the expected effect: the peaks of the top IPC have remained on the regenerative braking IPCs where they were expected, which is good, with the advantage that the “similarity density curve” now is a lot less steep and shows a relatively unpronounced knee of the curve occurring for a similarity score of about 480, but this time with a fat peak including over sixty very relevant documents above that knee, quite a few of them concerning exclusively cycles (those with an IPC in the B62 range).
Step 7: Restrict your Octisearch for displaying usable statistics!
- When based on the standard 1000 document octisearches, the pie charts and other diagrams provided by octimine necessarily will be misleading. While the top 50 or 100 results can be expected to be quite relevant, the remaining 900 with much lower similarity scores would dominate and will pollute the results and pie charts, so they should be truncated/discarded
- In the present case, some documents among the top 100 are more related to cars than to cycles: a quick way of restricting the results to cycles is to use the filters to restrict the IPCs to the relevant IPC patent classification for Cycles (B62, see front page of relevant documents).
- This IPC restriction now yields 126 results in the IPC class B62, all with a relatively high similarity index and a similarity curve not having a pronounced knee, suggesting that all results are now statistically relevant. The set of results does not need to be truncated any further.
- The “similar documents list” now very relevant to regenerative braking for bicycles, reveals ca. 90% Japanese applicants; this is also reflected in the top applicants pie chart as follows: Honda and Shimano have ca 10% of patent families each; Sanyo, Yamaha and Kawasaki have ca. 5% of patents each.
- The results set can/should now be sequentially restricted to each of the main individual applicants by using the “applicant” filter, e.g. restricting to “Shimano” will show a list of 16 regenerative bicycle braking documents from the Shimano patent portfolio, for evaluating their respective specific regenerative braking technologies and the corresponding relevance of their patent portfolios for selecting a potential partner or monitoring a competitor. The corresponding technical fields of the technical improvements claimed in these Shimano documents can be precisely analyzed in the top IPC diagram without requiring an in depth technical analysis of the individual documents, allowing non-engineers to make sense and significance of the patent portfolio.
Step 8: Technology over time heat map; competitors strategies?
- The Technology over Time Heat Map indicates when and in which general technical fields, (these technical fields are obtained by predetermined combination and agglomeration of results from IPC fields) patent filings for the searched technology have been particularly intense.
- For the present case study (regenerative braking for bicycles) it is no surprise that the “transport” and “electrical machines” fields show substantial recent activity, not least due to the impressive development of tens of millions of electric bicycles throughout Asia (and to a much lesser extent in Europe), and corresponding patent activity.
- Prudent manufacturers typically try to maintain a number of active patents commensurate with their present or anticipated market share in that technical field for cross-licensing and cost reasons. For this reason an octisearch might be seen as a quick, cheap and very rough proxy for worldwide market share /market ambition surveys and the numbers of patent family members in different countries may be used to discover telltale signs of expansion ambitions in certain markets.
- For instance, the above patent authority graph reveals the absolute strategic importance of China, Taiwan and the US for Shimano; Note also that although the lower height of the bars for EP or DE authorities might suggest that the European market is less important, in fact all 16 patent documents have one or more European family member (either DE or EP or both), suggesting that the European market is of absolute strategic importance as well. This country/authority analysis, really reveals the enduring worldwide ambitions of Shimano in the field of regenerative electric bicycle braking since 1996, especially considering its time line of patent application filings in this field, revealing marked efforts every 7 years (2003,2010) to upgrade its patent protection.
- Thus octimine is not just usable by IP personnel, but should be also used by industry strategists and marketing specialists to monitor signs of future ambitions or expansions of the competition. Ask yourself why a company is applying for patents at great cost in a country where it has no market share: it is either (a) a patent troll or (b) is seeking a cross- licensing deal with established parties in that country, or (c) may be ready to enter that market, the number of patents giving an important clue as to the future expected market share it is planning. Either way, it may be worrying news for established manufacturers in that market.
- By clicking onto the individual technical fields and years of the Technology over Time Heat Map (in the present case it is particularly instructive to click on successive years of the “transport field”, especially for the years represented in darker colors, such as 2010 for Shimano, showing regenerative bicycle braking improvements mainly in IPC fields B60L, B62 L and M, and G06F), the other diagrams as well as the list of similar prior art are updated, displaying the main IPC codes and major applicants for that particular year, as well as the list of their patent filings, thereby providing a glimpse of the evolution of technology and of the main applicants in that technical field portion of the octisearched query. This octimine feature permits watching what competitors are up to in any specific technical field, and has the potential to quickly track their patent strategy over time in that particular field.
- Coming soon in octimine will be a heat map of IPC and CPC fields, not just imprecise general technical fields, which will visually represent in one glimpse where and when the action is or has been in those fields, but already now, by clicking through the heat map and looking at the evolution of the IPC codes over time, it is already possible to see this information: which IPC codes, i.e. which problems and solutions can be considered “hot” at any given time, and who are the major players in that field for each such solution.