Patent Mapping

1. Patent Mapping Representing complex patent “landscapes”; creating actionable intelligence. May 2005 © 2005 Falco-Archer, Inc.

2. “Frankly, it’s beyond me why any company in this day and age would even attempt to do R&D without the insights that patent mapping gives you. It’s like trying to navigate your company’s future blind, without a map.”--Paul Germeraad, former VP of Research, Avery Dennison,in Rembrandts in the Attic, page 101 Patent mapping (c) 2005 Falco-Archer, Inc.

3. Effective April 28, 2007, Falco-Archer's operations are now consolidated with those of Neopatents, a full service IP management consultancy. Neopatents' web site is: www.neopatents.com. The rest of this presentation follows on the next slide. Patent mapping (c) 2005 Falco-Archer, Inc.

4. Falco-Archer, Inc. • Value proposition: Assess and strategically manage intellectual property (IP) to generate value and mitigate risk • Clients: companies, law firms, investment firms and certain (catalytic) philanthropies worldwide • All industries, all technologies. • http://www.falcoarcher.com Patent mapping (c) 2005 Falco-Archer, Inc.

5. Falco-Archer, Inc. • Sampling of services: • Organization-appropriate IP strategy development and deployment, including interim and contract IP management • IP policy development • IP process integration and improvement • Licensing and other IP agreements • Advisory services, e.g., senior management, boards • IP related competitive intelligence (including rational patent mapping) Patent mapping (c) 2005 Falco-Archer, Inc.

6. Patent mapping (c) 2005 Falco-Archer, Inc.

7. Patent mapping (c) 2005 Falco-Archer, Inc.

8. Definitions - Patent Mapping • Basic patent mapping • Data compendiums: grouped output of raw database information, e.g., patents by assignee (owner) • Example… Patent mapping (c) 2005 Falco-Archer, Inc.

9. LeRoy Walters, Georgetown University, NAS STEP. http://www7.nationalacademies.org/step/STEP_Projects_Proteomics.html Patent mapping (c) 2005 Falco-Archer, Inc.

10. Definitions (cont.) • Rational patent mapping (preferred) • Interpretive distillation of large amounts of often complex patent data into one or more high-value representations useful in making business decisions. • Tell why and how patent data is relevant to a context. • The goal is to generate actionable intelligence from raw patent information, enabling timely, informed decisions. • Example (visual representation only; written analysis omitted)… Patent mapping (c) 2005 Falco-Archer, Inc.

11. Patent map for the malarial vaccine antigen, MSP-1 Patent mapping (c) 2005 Falco-Archer, Inc.

12. Rationale – Why Patent Map? • Management of risk • Collections or “landscapes” of patents generate potential blocking risk (e.g., infringement risk from patent monopolies) • Blocking risk is increasingly difficult to avoid due to: • changes in patent laws and enforcement • globalization of patent laws and enforcement • changes in how patents are competitively utilized Patent mapping (c) 2005 Falco-Archer, Inc.

13. Rationale – Why Patent Map? (cont.) • Management of risk (cont.) • “Not knowing” doesn’t matter; “should know” applies • Infringement liability is not mitigated by ignorance. • Sarbanes-Oxley provisions governing management of intellectual property (IP), like patents, and IP risk. • Management for opportunity • Collections or “landscapes” of patents show potential opportunities to acquire or share patent monopolies. Patent mapping (c) 2005 Falco-Archer, Inc.

14. Rationale – Why Patent Map? (cont.) • Patent landscapes are increasingly complex; accurate, but easy to digest/manage (“plain English”) representations are needed • Raw numbers • As of 5/3/05: 41,617,445 published patent records (global) • 4.2% increase per year in patent filings worldwide • http://www.european-patent-office.org//tws/tsr_2003/ Patent mapping (c) 2005 Falco-Archer, Inc.

15. Rationale – Why Patent Map? (cont.) • Patent landscapes are increasingly complex (cont.) • Information overload • US5625670 to NTP (just settled infringement suit with Research in Motion (maker of the Blackberry) for US$450 million) : 276 claims • WO04092209 “S. pneumoniae Antigens” to Intercell AG: claims thousands of amino acid sequences… • Patents and patent applications running hundreds of pages are not unusual • As of 5/3/05: 540 separate, published families of patents and patent applications re: SARS; 28,951 re: HIV/AIDS Patent mapping (c) 2005 Falco-Archer, Inc.

16. Rationale – Why Patent Map? (cont.) • Knowledge Base • Patents are an outstanding but all too often overlooked source of valuable information • Technical • Commercial/competitive/market • Historical/trend • Best practices in IP management Patent mapping (c) 2005 Falco-Archer, Inc.

17. Utility – Uses for Patent Maps • Mitigate or avoid Freedom to Operate (FTO) risk • Knowledge of risk enables action, especially early • Access license and other rights, or otherwise avoid FTO risk, e.g., by off-shoring to non-patent territories. • But also: enhance innovation, improve R&D efficiency (and intensity) and shorten time to market, e.g., by prompting “engineering around”, avoiding “re-creation of the wheel”, and minimizing go to market delays. Patent mapping (c) 2005 Falco-Archer, Inc.

18. Utility – Uses for Patent Maps (cont.) • Identify synergies • Access critical product (or service) components • Identify and qualify potential partners • Destroy or weaken patent monopolies • E.g., identify uncited prior art, oppose patent grants, seek reexamination (U.S.), and/or prepare infringement “defense in waiting” Patent mapping (c) 2005 Falco-Archer, Inc.

19. Utility – Uses for Patent Maps (cont.) • Contextualize patent monopolies • Influence monopoly formation and scope by showing innovators and patent holders how and where their patents “fit” in a given landscape - an indication of relative value. • Can result in more selective patenting activity, fewer “patent thickets”. Patent mapping (c) 2005 Falco-Archer, Inc.

20. Users of Patent Maps • Innovators • Conceptualizers, e.g., new product ideation and selecting development targets • Researchers, e.g., where do we need to “engineer around” to avoid patent related roadblocks? • Product developers, e.g., selecting product components and features to mitigate FTO risk and get to market ASAP (and at/under budget). Patent mapping (c) 2005 Falco-Archer, Inc.

21. Users of Patent Maps (cont.) • Investors • Typical, e.g., VCs, but increasingly also… • Funders in the non-profit sector • Marked increase in concern over: • whether supported products will go to market and stay there, i.e., be available to those in need, and whether investments are at risk, e.g., from future patent infringement risk • Patent maps and the intelligence they embody are becoming key funding decision criterion • Patent maps developed for the non profit sector are also being shared widely within technological arenas Patent mapping (c) 2005 Falco-Archer, Inc.

22. Users of Patent Maps (cont.) • Influencers (?) • Patent maps can be used by policy creators to: • Enhance innovation and product delivery • Influence whether and how patent monopolies are formed and how they are used Patent mapping (c) 2005 Falco-Archer, Inc.

23. Process of Patent Mapping • Start early, map progressively, recursively over time • Contextualization • What landscapes need to be explored and to what extent? • e.g., product specifications • Search strategizing and validation • Something of a “black art” • Search execution and data collection Patent mapping (c) 2005 Falco-Archer, Inc.

24. Process of Patent Mapping (cont.) • Relevance categorization • Intelligence creation, i.e., matching up the data with the context; what’s important and why? • Presentation • Written (dry but informative) • Graphical (visual representations) • Example… Patent mapping (c) 2005 Falco-Archer, Inc.

25. Visual representation of patents pertaining to a series of diagnostic assays(actual data redacted) Patent mapping (c) 2005 Falco-Archer, Inc.

26. Process of Patent Mapping (cont.) • Utilization • Decision making, “course corrections” • Alerts and periodic updating • Patent landscapes are dynamic – always changing. • Ergo, patent maps must be updated • Easy to update patent maps, much more difficult to re-create after the passage of time Patent mapping (c) 2005 Falco-Archer, Inc.

27. Summary • Patent information is content rich but often complex and inaccessible. • Patent mapping is the only way highly complex patent information can be put into “plain English”, i.e., understandable form. • Rational patent mapping creates actionable intelligence from raw patent information. • Patent mapping intelligence has many applications, including avoiding undue risk, identifying opportunities and enabling key business, innovation and funding decisions. Patent mapping (c) 2005 Falco-Archer, Inc.