This presentation was given on 27th November 2013 in Stockholm.

1. Due Diligence and the analyses
of the patent landscape
Per Wendin - Kapea

2. Agenda
• Risks of entering new product or geographical markets
• Analyses of own patent portfolio and the patent
landscape
• Ways of remedying risk

3. Infringement

4. Infringement
•
A party (other than the patentee or licensee of the patentee) that
manufactures, imports, uses, sells, or offers for sale patented
technology without permission/license from the patentee, during the
term of the patent and within the country that issued the patent, is
considered to infringe the patent.

5. Infringement
•
A party (other than the patentee or licensee of the patentee) that
manufactures, imports, uses, sells, or offers for sale patented
technology without permission/license from the patentee, during the
term of the patent and within the country that issued the patent, is
considered to infringe the patent.
•
The infringing party's product or method falls within one or more of
the claims. Test: Reading a claim onto the technology (claim chart),
see next slide.

6. Infringement
•
A party (other than the patentee or licensee of the patentee) that
manufactures, imports, uses, sells, or offers for sale patented
technology without permission/license from the patentee, during the
term of the patent and within the country that issued the patent, is
considered to infringe the patent.
•
The infringing party's product or method falls within one or more of
the claims. Test: Reading a claim onto the technology (claim chart),
see next slide.
•
Direct vs indirect infringement vs contributory infringement etc.

7. Example of claim chart

8. Global IP overview
Source: WIPO Statistics Database, October 2012

9. Global IP overview
Source: WIPO Statistics Database, October 2012

10. Patent applications
Source: WIPO Statistics Database, October 2012

11. Patent families
Source: WIPO Statistics Database, October 2012

12. Patents granted
Source: WIPO Statistics Database, October 2012

13. Patents in force
7.3 million patents in force and 5.17 million pending
applications in 2010
Source: WIPO Statistics Database, October 2012

14. Patents - geographical
distribution
Japan
Internet
China

15. Patents - technology (2011)
ICT
∼50%
Source: Thomson Reuters 2012

16. Number of US lawsuits
Source: US Government Accountability Office GAO, Aug 2013

17. Number of US lawsuits
Source: US Government Accountability Office GAO, Aug 2013

18. Number of defendants in US
litigations
Source: US Government Accountability Office GAO, Aug 2013

19. Sued by whom?
Source: US Government Accountability Office GAO, Aug 2013

20. Not cheap...
For a claim that could be worth less than a $1
million, median legal costs are $650,000. When
$1 million to $25 million is considered "at risk,"
total litigation costs can hit $2.5 million. For a
claim over $25 million, median legal costs are
$5 million.
Source: American Intellectual Property Law Association 2011

21. Damages
Source: PWC 2013

22. Damages
Source: PWC 2013

23. Distribution of cases
Source: PWC 2013

24. What can/should one do?

25. Options
Ignore
Don’t
Ignore
Wait and see
Be proactive
Solve
problem as
they come
Strategic
actions

26. Don’t ignore - strategic actions

27. Don’t ignore - strategic actions
• Create own patent portfolio - takes time

28. Don’t ignore - strategic actions
• Create own patent portfolio - takes time
• Buy patents - quick but good patents are expensive

29. Don’t ignore - strategic actions
• Create own patent portfolio - takes time
• Buy patents - quick but good patents are expensive
• Buy insurance - cost will reflect risk

30. Don’t ignore - strategic actions
• Create own patent portfolio - takes time
• Buy patents - quick but good patents are expensive
• Buy insurance - cost will reflect risk
• Join patent pool - somewhat expensive

31. Patent landscape

32. Patent landscape
•
Who is doing it?
-
A start-up
An established industry player
An investor

33. Patent landscape
•
Who is doing it?
•
A start-up
An established industry player
An investor
What will it be used for?
-
General patent landscaping (e.g. management presentation)
Cross-license agreement
Law suit/nullification

34. Patent landscape
•
Who is doing it?
•
An established industry player
An investor
What will it be used for?
•
A start-up
General patent landscaping (e.g. management presentation)
Cross-license agreement
Law suit/nullification
How much time/money am I prepared to pay? (50%-75%-95%)
-
Internal/external

35. General Patent Landscape
• ”10,000 m overview” (or lower)
• Trends
• Major patent holders
• Key patents
• Areas of high/low patenting

36. Patent landscape
Establish a view based on
-
IPC class
Key words
Assignees (eg. Competitors)
Inventors
Time/Trend
Countries
Legal status

37. Example of Patent landscape
Key word: Chain saw

38. Example of Patent landscape
Chain&saw&Applica-ons&
600"
500"
400"
300"
200"
Key word: Chain saw
100"
0"
1994" 1995" 1996" 1997" 1998" 1999" 2000" 2001" 2002" 2003" 2004" 2005" 2006" 2007" 2008" 2009" 2010" 2011" 2012" 2013"

39. Example of Patent landscape
Key word: Chain saw

40. Example of Patent landscape
Key word: Chain saw

41. Example of Patent landscape

42. Infringement - what do I do?

43. Infringement - what do I do?
• Patent vs. application

44. Infringement - what do I do?
• Patent vs. application
• Validity (here: fee paid)

45. Infringement - what do I do?
• Patent vs. application
• Validity (here: fee paid)
• Ignore

46. Infringement - what do I do?
• Patent vs. application
• Validity (here: fee paid)
• Ignore
• Design around

47. Infringement - what do I do?
• Patent vs. application
• Validity (here: fee paid)
• Ignore
• Design around
• Business solution: Cross-license/take license

48. Infringement - what do I do?
• Patent vs. application
• Validity (here: fee paid)
• Ignore
• Design around
• Business solution: Cross-license/take license
• Legal solution: Find prior art and invalidate

49. Infringement - what do I do?
• Patent vs. application
• Validity (here: fee paid)
• Ignore
• Design around
• Business solution: Cross-license/take license
• Legal solution: Find prior art and invalidate
• Withdraw product from market

50. Who pays whom?
Your
patents
Your
sales
%
%
Their
sales
Their
patents
You need patents that read on competitors’s products - not
your products.

51. Per Wendin
per.wendin@kapea.se
www.kapea.se