For enterprises operating in the Chinese market, one key link in a patent offence and defence strategy is the discovery of key patents of a competitor to avoid the risk of infringement or to set such key patents as targets for attack in order to one-up the rights holder.
With the development of network technologies and the increasing degree to which patent examination, invalidation and litigation cases are open to the public, patent-related information is more easily available than ever and plays a practical role in patent offence and defence. The term “key patent” relates to a patent that has major commercial value for the patent holder, and how to use existing patent data to identify effectively key patents among the several million Chinese patents disclosed every year is a difficult problem.
The main sources of patent data include the data publicly available from government authorities and that from commercial data analysis firms. The former is usually patent information mainly disclosed by administrative and judicial authorities at various levels (e.g., disclosure on the State Intellectual Property Office’s official website and on China IPR Judgements & Decisions Online of the Supreme Court). This data has undergone little processing and the search and statistical functions are limited, but it is more updated and has wide coverage. While the patent data that commercial data firms offer has undergone extensive processing and organization, the searchable and usable information is much more plentiful.
The key to searching for and identifying key patents is the setup of information search categories. The following items can serve as reference indicators for key patents.
Affiliated patents. The importance of a patent to a rights holder will be reflected in the temporal and spatial expansion of the scope of affiliated patents originating from a single basic patent.
- Patent family members: The more numerous the family members of a patent in different countries/regions, the better the indicated substantive value of the patent in a larger geographical area.
- Divisional patents: Divisional patents are an important means that rights holders often use during patent filing to enhance the probability of securing rights and seek a new scope of rights, and are an essential marker of the importance of a patent. Typical situations include one where the parent case is rejected and the object of the rights involves the rights holder’s own product, so the rights holder submits a divisional filing to secure a grant of rights. Rights will be granted in the parent case, but the object value of the rights is not very high, so the rights holder seeks a more valuable scope of rights by submitting a divisional filing. Rights will be granted or denied in the parent case and the object of the rights involves a competitor’s product, so the rights holder submits a divisional filing to pose a continued hindrance to the competitor’s business. Usually, the more numerous the divisional patents and the longer the span of time within which the filings are made, the greater the importance of the patent.
- Cited patent: The greater the number of times a patent is cited in subsequent patents, the greater the probability that such a patent is a key basic patent in its sector.
Examination of information. Patent examination of information records the actions of the rights holder, the patent examiners and, in some cases, third parties during the examination, and can reflect the extent to which attention is paid to the patent.
- Accelerated or delayed examination: The granting of a patent within a clearly shorter-than-usual interval or the occurrence of numerous extensions or even of a situation where the filing is deemed to have been withdrawn and then resumed indicates that the rights holder has expended great effort to secure the rights as soon as possible or secure them with a delay, either of which situation can signify that this is a key patent.
- Public opinion: If a third party files an opposition to a patent during the examination process to prevent its being granted, this would normally indicate that the patent concerns the fundamental interests of the rights holder or a third party.
- Re-examination (appeal) information: A patent that has gone through a re-examination process is usually a patent that the rights holder deems to be valuable and unwilling to forego lightly.
Duration of maintenance. As the annual patent fee markedly increases with the increasing duration of the patent maintenance period, the period for which a patent is maintained after being granted indicates the extent to which the rights holder values the patent. Based on statistical data, a patent that is still being maintained more than six years after its filing date usually can be deemed to be a relatively key patent.
Dispute information. A patent that a rights holder uses to institute a legal action or administrative intermediation is necessarily a key patent of the rights holder. Similarly, a patent for which a petition for invalidation is made is a patent that a competitor deems to be valuable to the rights holder and, thus, also a key patent.
Agent information. The demand of rights holders for varying grades of legal services, including patent filing, has gradually become the trend, and they will select different patent attorneys depending on the importance of a patent. Accordingly, the information on the patent attorney can also serve as an auxiliary means of identifying key patents.
Other information. This includes information on the operation of a patent, such as information on its transfer, licensing, pledging, use as a capital contribution to acquire an equity stake, mark or state/industry standard patent, and such legal and technical information as the number of patent claims, the type of claims, the patent’s technical field, etc. Such information may not be readily available and may not necessarily have great relevance to the degree of importance of a patent.
By appropriately combining the foregoing types of information into search entries and giving them the appropriate weight and using various patent information databases to conduct searches and analysis, it is possible to carry out conveniently and efficiently a preliminary selection of key patents. With respect to the accurate setting of the search parameters in the analytical model, they can be obtained and verified based on deductions made from a large quantity of actual case data. Of course, such an analysis only has a reference and preliminary selection function, must be revised in different application environments and cannot substitute for more specific legal and technical identification and analysis processes.
Li Hui is a partner and patent attorney at Sanyou Intellectual Property Agency