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Articles - The Holy Grail of Intellectual Property Awareness

The Holy Grail of Intellectual Property Awareness

Christophe Sevrain, Chief Executive Officer of e-IP, LLC, outlines the fundamental issues behind the development of a successful IP portal to search for IP quickly and efficiently online

For more than 20 years, I have been licensing technologies from universities, national laboratories, corporate research groups and other research institutions to complement my own patent portfolio. The original purpose was to increase the value of my start-ups by strengthening their intellectual property, reducing the time-to-revenues, partnering with top-notch researchers, and lowering the overall business risk. Later, I created a consulting firm to help other corporations grow at much higher rates, using breakthrough strategies and a strong focus on plan execution, and to allow clients to benefit from that experience in intellectual property licensing and technology commercialization.

Finding intellectual property (IP) was very tedious 20 years ago, and it still is today. Websites such as Google Patents or Delphion only list published IP, so if you are looking for early stage patents in order to influence their prosecution, you will not find them there. In addition, there is no way to know from these listings whether they are available for licensing and, if so, in which fields of use they might be and who to contact for more information. In addition, patents are not easy to read as they are written in highly legalistic language, and potential licensees—often business executives, business development or product development professionals, and less often attorneys or PhDs—may not be inclined to read many such documents.

Other websites, such as academic institutions’ websites, are a lot more helpful in providing that type of information on their websites. Unfortunately, in order to undertake a thorough search, each such research institution needs to be visited, since each only lists its own IP. Due to the sheer number of them, unless they are at the top of the searcher’s mind, they will be omitted. To make matters worse, searchers need to learn each site’s navigation, enter keywords and request alerts (if available) on each and every website. Finally, these sites are all handled differently in terms of update frequency, searching methods, IP groupings, and whether confidential IP is listed or not, and so forth.

So, what is the solution that would make searchers find IP quickly and efficiently, by the type they are looking for, rather than by the institution? The answer is one that would generate collaboration with universities, while giving universities global visibility regardless of their size, and more value for their IP through multiple biddings and multi-field of use licenses. Since I have been searching IP for many years from many places, I have developed a list of the key features a portal should have in order to be successful. In fact, I have filed international patents on both the business process and all these features. It would have been embarrassing not to patent a concept to market patents.

Features of a successful IP portal

  1. It should be a convenient, easy-to-use, online location to provide a central depository for published as well as unpublished IP, with worldwide visibility 24/7.

  1. Such a portal should allow the patent holder to list confidential as well as non-confidential information. Indeed, more and more, licensees are looking for pre-issued, pre-published IP so that they can influence the prosecution of the patents. In fact, if academia could license IP as early as the provisional stage, it would potentially allow them to license it before incurring significant legal costs. A high return on investment (ROI) is easier to achieve when the ‘I’ is small. I can’t remember how many times I have facilitated such early licensing agreements, but these are more common than most people think. Ideally, the patent holders would have the choice to require the execution of a very rigorous online non-disclosure agreement (NDA) for the IP that they consider too sensitive to be made public. Yet, it would be viewable after that strict NDA was agreed to, which is nothing more than the click of a mouse. This convenience and speed would please many licensees.


  1. Of course, such a portal would need to be a powerful source of qualified leads for the patent holders, and it needs to provide an area on the website where said patent holders can view who has signed the NDA on which piece of IP, and even who has looked at each listed IP. Armed with that information, these leads can be followed and contacted, whether they are from South Korea, Germany or the US.

  1. It would require short, easy-to-understand invention descriptions, including what is innovative and different for that particular piece of IP, and it should provide application examples to make it easy for individuals who may not be patent attorneys to understand it.

  1. Most patents are initially available for all fields of use, unless limited by the claims themselves. One of the key trends in the industry is the increased interest in licensing technologies in several non-overlapping fields of use. Even Fortune 100 companies in the US are looking for the generation of revenues from their intellectual property assets in markets that are outside their core businesses. It would therefore be important for an IP portal to provide a simple disclosure of available fields of use, to make it easier to license IP in multiple fields of use.

  1. The ideal portal would increase the chance of having good hits, on both sides. The potential licensees would find the type of patents that they are looking for, while the potential licensors would get good leads. So, the IP depository would use powerful search mechanisms to optimize the quality of the matches. It would search through available fields of use declared by the patent holders, the IP descriptions, as well as uploaded materials in any format: Word, PDF, PowerPoint files, and so on.

  1. Timing is everything. For instance, what if you look for IP in January, but someone lists in February IP that would interest you? How do patent holders ‘fish’ past visitors still looking for that perfect invention? It is critical that each searcher has the ability to save their searches indefinitely and receive alerts via emails or other means when a new piece of IP is identified that fits their search criteria. This brings the searcher back onto the website, which can only help the potential licensors of technologies.

  1. Who has time to enter hundreds or even thousands of pieces of IP one by one on any portal? Although it should be easy for a single inventor to enter their own information in five to ten minutes, the uploading of dozens or hundreds of patents should be automated. Large patent holders either have a website, or database files, written in formats such as comma-separated value (CSV) or extensible markup language (XML) files. The IP holders should be able to provide such files to the portal operator and have that operator take it from there and upload it. Alternatively, such IP holders could allow the portal operator to ‘trawl’ their existing website and upload all their IP at once, using proprietary and secure software.

  1. Ease of use must be an important component. If a searcher is not able to simply ‘click’ on a link to email the patent holder or to go to their website, then it will detract from the power of this website. Of course, the more standard contact information such as address, and telephone and fax numbers, should be easily available as well.

  1. It must be cheap. Searchers should be able to search freely. Quality and reliability never comes completely free, and IP holders should have a choice to subscribe to such a service for an unlimited number of IP pieces, or to only pay a fee that would be low enough to pass on to the licensee when the IP is licensed. This, along with the ability to terminate any listing at any time for any (or no) reasons whatsoever, should be another key to success for such a tool.

In conclusion, volume is everything, and no site will be successful until it has sufficient IP to generate thousands of visitors per month, visitors that keep coming back, and a large volume of IP listed at all times. To generate such a worldwide universal appeal, I believe that such a system should be web-based, technically very advanced yet easy to use, with features that make both the searching and the posting of IP a very simple, fast and inexpensive process.

 

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