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22 December 2021
Patent landscaping may not be a useful tool for assessing the strength of a patent, said David Macaskill, a partner at James & Wells in Hamilton and Tauranga.
Patent landscaping is a process for generating data about the patent scene in a country, region or continent, for a certain technology. This data shows general technology trends, top patent applications, key players for specific technical fields, information on patent protection and other patent-related activities. These aid businesses and intellectual property lawyers in making business, technical and legal decisions in connection with IP and innovation and product development initiatives such as licensing and identifying areas of opportunity.
“I believe that patentability searching is a critical aspect of securing strong patent protection,” said Macaskill. “It helps you to define the scope of the claims by reference to what is new and, arguably, inventive.”
However, being a more general approach, patent landscaping has its limitations.
“I’ve found patent landscaping a more general approach which looks at information at a high level of generalization. It can be a useful first step if you are trying to define your commercial direction or make macro-level decisions. However, for assessing patentability and defining what to claim in a patent, patent landscaping searching is not a useful tool,” Macaskill explained. “You would need to bury more into the detail to establish what is a good patent.”
Stephen Yang, managing partner at IP March in Beijing, agreed with Macaskill.
”Patent mapping or landscaping may be helpful to identify technology trends, competitive analysis and risk assessment. However, there are still a lot more work needed to identify good patents,” said Yang.
“There is also the point that patent landscaping searches are often completed based on keywords used in the patent specifications or abstracts. In contrast, the strength of a patent is assessed based on the claims. This is another reason why a patent landscape search may not be a useful tool for assessing the strength of a patent,” Macaskill added.
Macaskill revealed they’ve resorted to patent landscaping searches for their clients to help the latter assess the value of certain patent portfolios they were considering. The search provided them with a snapshot of the industry and enabled them to focus on areas to better assess the value of the patent portfolio.
Espie Angelica A. de Leon
