skip to main |
skip to sidebar
Last week Ocean Tomo sold their patent auction part to ICAP. This created some stir in the news and blogosphere, examples and very few (bloggers) actually seemed surprised. IP Law&Business , and Managing IP among others, have good pieces on the deal. That articles also feature commentary, also found elsewhere, by Ron Laurie from Inflexion Point who says that the major reasons were:
* The Ocean Tomo business model of targeting the low end of asset quality
* The difficulty to conduct diligence.
He also mentioned Intellectual Ventures' likely withdrawal from bidding at Oceant Tomo auctions as. That rumor, which fueled the debate of IV "puppetmastering" the auctions, led to another good IP Law&Business piece (pdf), an interview with IV chief of acquisitions Kevin Barhydt.
The 5$ million in cash and possible 5$ million in stock is a fire-sale price for OT, which for long time where hyped as the saviours of IP liquidity (also by myself, as found in previous posts here and here). Personally I must admit that I believed in the OT model for a while, but in hinsight it was more likely due to lack of experience. Regardless if it was IV in disguise who bought the OT patents or not, it seems as if buying patents "blindly" is not something people are less interested in doing - also likely related to the recent drop in financial strength of many firms. Regardless of that, I still would like to cast some light, in form of Ocean Tomo statistcs, on what I believe to be the death of the public IP marketplace.
Please find a Intangitopia Special Report - where 8 full Ocean Tomo auctions are analyzed inside and out in order to provide you with a better and objective view on what once was the great Ocean Tomo.
// Marcus Malek
(Follow me on twitter)
IP as a financial asset will be discussed further by prominent IP thought-leaders during CIP FORUM 2009, 6-9 Sep, Gothenburg, Sweden
Over at Patent baristas I read a few interesting articles regarding the innovation patent in Australia. Apparently the form “innovation patent” has been around since 2001 down there. I think every step taken trying to adapt the patent system so it can match today’s business climate is positive. The question is if an innovation patent model is a good way to move forward?
Function
Firstly I feel an explanation of the differences between an innovation patent and regular patent is needed. The major points as I seem them are that an innovation patent is:
- Only valid for 8 years instead of 20.
- There can be no more than 5 claims in the innovation patent.
- The innovation patent is issued without almost any examination. It can however not be enforced until it has been examined and certified by the Australian Patent Office, APO.
- The requirement for inventive step is very low.
So, in short it feels like the APO and Australian government has adapted to the new business climate where innovations have shorter life cycles and where the market opportunity passes quickly. Since a potential examination doesn’t come into place until after a grant the lead time for getting a granted innovation patent is around 1-2 months which of course is a dramatic decrease of time to grant for a regular patent. The costs are also naturally significantly lower as the lead time gets lower and the application made easier.
Since the requirement for inventive step is significantly lower than for a regular patent it is much easier to obtain an innovation patent, but it is also harder for a potential opposing party to get the innovation patent invalidated by terms of “non-inventive step”. The regular demands for novelty are however the same as for a regular patent, i.e. absolute and objective.
I guess the shortened life span of 8 years along with the restriction in number of claims is a way of trying to find a new patent model which better corresponds to the need in today’s business community where technology life cycles are much shorter and the need for almost immediate protection is greater.
Strategic uses
When thinking about the characteristics of the innovation patent I can see several uses for this type of patent. From the top of my head I can see these advantages:
- Building patent portfolio structures such as patent fences and patent blankets (which Ulf Petrusson among others talks about in his book Intellectual Property & Entrepreneurship) becomes easier and cheaper. It is easier and cheaper to create a portfolio strategy around essential regular patents.
- A prolonged patent protection could be obtained since smaller adjustments to the regular patent still could be considered enough when meeting the lower demand for inventive step. Innovation patents could therefore rather easily be filed on certain configurations when the regular patent approaches the end of its lifetime.
- If you have products that would not generally be considered patentable due to the inventive step criteria you can still obtain innovation patent leading to a better control position for that product. Also, if you have products with a short estimated life time innovation patents could be highly useful.
-Innovation patents could be used as a negotiation tool when in negotiations over for example licenses to regular patents. The innovation patents could broaden the licensing scope as well as the normative space of the licensed portfolio.
- In infringement situations innovation patents could be filed in order to establish a better case.
- Almost immediate protection could be obtained when also filing for a regular patent. This temporary protection through the innovation patent could help securing licensing deals or determine the market potential while the regular patent application is prosecuted. If it then turns out that there is no real potential the regular patent application can be dropped and costs can be kept to a minimum.
To me innovation patents seem to be a pretty good tool for the aware IP strategist if used as a compliment to the regular patent activities. I believe much could be won if incorporating innovation patent strategies into the regular patent strategy activities.
Implications on the patent system
As for implications on the patent system I can see a potential decrease in workload for the patent office since some inventions would rather be filed as innovation patents instead of regular patents. With the examination process for the innovation patent the responsibility to declare a patent invalid would rather be moved from the administrative arena to the business arena. This would demand more from each company to look after its own interests and to be more focused. I think this would be something worth aiming for and could potentially be a part of a less dramatic proposal to shorten patent offices’ lead times. A more dramatic proposal would be to take away patent examination for regular patents which has controversially been proposed by many before (for example by Bo Heiden in an blog article by IAM where he wanted to raise the debate regarding the long lead times at patent offices).
The way to move forward?
It shall be interesting to see if other countries will introduce the same type of structures in their patent systems in the future. I can see similarities with the German Gebrauchsmuster, or utility model, which also has a shorter life span than regular patents. The appreciation of the innovation patent model in Australia by the business community seems however to be mixed. According to one of the articles at patentbarista only about 4500 innovation patents have been sought the latest seven years. Either it has to do with that the IP active actors down there don’t find the structure useful or that they in fact don’t know about that the opportunity exists. Either way I think it is good that new models for the patent system are tried out since I believe we dramatically need to change the patent system the coming decades in order to make it fit better with today’s society where technology life cycles are dramatically shorter.
//Fredrik Alverén
Related articles and sites:
Australian patent office – The innovation patent
Innovation patents in Australia. The strongest patents in the world?
Australia’s innovation patent system provides real value
Life cycle of an Australian innovation patent
Posts
