Locate every patent in the portfolio

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1 Derwent Innovation Evaluate portfolios for mergers, acquisitions, or licensing Where is the value in the patent portfolio of a company targeted for acquisition? Does our patent portfolio complement the portfolio of a company in a potential merger? Is there any low value or dead weight in a patent portfolio? If so, how can we license or sell those low value patents? Derwent Innovation makes it easy to evaluate entire patent portfolios. Powerful tools help you quickly focus on high value patents, evaluate complimentary portfolios, and identify potential license opportunities. Locate every patent in the portfolio Add a comprehensive set of assignee fields to your search Locating complete patent portfolios is difficult, as assignee data may be misleading, incomplete, or contain errors. A search strategy that searches company information in multiple assignee fields helps ensure comprehensive results. Two Assignee/Applicant fields let you search based on both corporate hierarchies and simple key words Assignee-Current US helps ensure you find patents from mergers or acquisitions Attorney-Agent/Correspondent helps locate pre-2014 US applications that omit assignee information US Reassignment Assignee-Latest searches US reassignments for the most recent recipient Assignee Code-DWPI searches based on unique codes assigned to companies by our experts Tip: Click the Templates button and select Save as Template to save these fields for further assignee research. Locate the specific company you want to research Corporate Tree shows how an assignee fits into a corporate hierarchy that accounts for mergers and acquisitions, which helps you research companies that no longer exist as standalone entities or whose patents have been reassigned. 1. Click the Browse button next to Assignee/Applicant 2. Enter the name of the company you want to research 3. Review the corporate hierarchies that display and select the matching companies 4. Note: Selecting a higher-level company (in bold) automatically selects all lower level companies 5. Click Save to add selected companies to your search

2 Blueprints for Success - Evaluate portfolios for mergers, acquisitions, or licensing 2 Ensure your search finds all mentions of those assignees Corporate Tree covers all US and EP granted patents and EP and WIPO applications. Enter the names for the companies that you want to research into the other search fields to make sure you find all potential patents, then click Search. Users with access DWPI should also click the Browse button next to the Assignee Code-DWPI field and add the appropriate DWPI assignee codes to the search. Tip: Make sure you use the OR operator between all your fields and all every company name. Add all family members to your search The Retrieve INPADOC and DWPI Family tools locate all the patent family members for the records in your results, which helps ensure a comprehensive search. 1. Click the button above your results 2. Select Retrieve INPADOC or DWPI Family Your results will now include all the family members for the records found by your initial search Remove any unwanted patents found by your search Some search terms may find patents you didn t want as the company name may also be an inventor s surname (e.g. Phillips) or another company may share a name with your target company (e.g., our example also picked up the Aluminum Company of America). Focus your results just on the company of interest and thus avoid including unwanted documents in your review 1. Click the icon to zoom in on the Optimized Assignee visual that displays by default on your Results Dashboard 2. Select the bars on the chart that correspond to the companies you want to include 3. Click the Filter Results button Your result set now contains only the patents from the Optimized Assignees you selected.

3 Blueprints for Success - Evaluate portfolios for mergers, acquisitions, or licensing 3 Evaluate potential value in the portfolio Limit your research to patents currently in force (alive) Patents only add value to a portfolio if they can be enforced. Predictive Data makes it easy to focus your research on patents currently classified as Alive (in force). 1. In the Results Dashboard, select the Dead/Alive visual 2. Select the Alive and Indeterminate items in the visual 3. Click the Filter Results button Your results update to only show patents predicted as Alive (in force) or Indeterminate (not enough data to predict). Note: Indeterminate patents are often new patent applications for which sufficient data is not available to accurately predict a patent s status. Evaluate future potential for the portfolio The ratio of applications to granted patents in a portfolio (pendency ratio) helps indicate how aggressively the company is pursuing new technology, which may affect future value. Select the Grants/Apps visual Review the ratio of active applications to current granted patents A high number of active applications indicates aggressive filing by the company Apply other filters to evaluate the pendency ratio based on other factors, e.g., aggressiveness in specific markets or technology sectors. Focus on high value patents in specific technology sectors The visuals on the Results Dashboard make it easy to focus your research on patents with high potential value. The Count of Citing Refs-Patents field helps you focus on patents with high citation counts, as that may indicate influential patents IPC-4 character lets you focus your research on technology areas relevant to your company Estimated Remaining Life focuses your research on patents predicted to have significant remaining life, as you have more time to extract value Select the citation ranges, technology categories, and remaining life range you want to research, then click Filter Results. Tip: New patents have high remaining life, but often have fewer citations due to the limited time those patents had to impact the technology field. You may want to first research patents in the portfolio with objectively high citation counts. Afterwards, click the Reset button focus your results on patents with high remaining life, and research patents with relatively high citation counts.

4 Blueprints for Success - Evaluate portfolios for mergers, acquisitions, or licensing 4 Review the results for potential high value patents Your results now reflect influential patents with high remaining life. These are likely patent from which you could extract significant value. Continue to use visuals in the Results Dashboard to focus your research, e.g., on specific sectors Click a hyperlinked publication number to open the record view and review claims for individual patents Click Export to download detailed information about the patents for further review or collaboration Use the Results Dashboard visuals or exports in Excel format to share your research or create reports Tip: See below for useful Analyst level features that can help you evaluate potential value in your portfolio. Identify patents for sale or license (dead weight) Locate potentially low value patents 1. Return to the search results for the target company 2. Use the Results Dashboard to focus on patents that may have limited value compared to their fees: Grants/Apps: Focus only on Granted patents Dead/Alive: Focus only on Alive patents Count of Citing Refs-Patents: Select only patents with low citation counts (little influence) Estimated Remaining Life: Look for patents with 10 or more years remaining 3. Click Filter Results to see matching patents 4. Click Export, select Excel 2007, and click Create 5. Click Available Now and open the Excel file Locate citing patents with adverse citations (closer art) Citation examiners for EP and PCT patents file prior art search reports with reasons for references. References types X and Y indicate not novel or obvious patents, which suggest closer art. That is, patents with those references are highly similar to patents in the target portfolio and may indicate licensing potential. 1. Click the Derwent Innovation logo, click the Patent tile 2. Click the Publication Number tab and paste the numbers from the Excel file into the box 3. Click the Specialized Search menu, select Patent Citations Forward, and click Search 4. Click the Search within your results menu and select Relevance Category 5. Enter X OR Y and then click Subsearch

5 Blueprints for Success - Evaluate portfolios for mergers, acquisitions, or licensing 5 Identify target technology sectors and potential licensors Review the Results Dashboard to identify potential paths to remove the low value patents from the portfolio. The Assignee visual reveals potential licensors, that is, top entities that cited patents as closer art The IPC-4 character visual shows you the general technology sectors most interested in these patents Evaluate potential value in the portfolio Discover new or abandoned lines of research (text clusters) Text clusters group records in your results based on common text in selected fields 1. Click the Reset button on the Results Dashboard to go back to your original results 2. Click Analyze, Text Clustering 3. Select the DWPI Abstract-Use fields and click Create The text clusters from your results display on the left. The top level clusters display the major concepts in the results Expand top level clusters to see related concepts Look for concepts that do not match the other main focus of the portfolio; these may represent new or abandoned lines of research Use DWPI Title to review the Uncategorized section for unusual or novel patents in the portfolio Explore overlapping or complimentary technology Add your portfolio and create a ThemeScape map focused on use ThemeScape maps, available to users with Analyst subscriptions, can quickly compare your current patent portfolio to another company s portfolio. 1. Scroll up to the search form above your results 2. Edit the search to include your company; you may need to add an additional Assignee/Applicant field to use Corporate Tree again 3. Click Search, then click Analyze, ThemeScape 4. Enter a Name, then click the Field Options tab 5. On the Field Options tab, remove the Abstract (English), Abstract-DWPI, and Title fields from the Chosen Fields list 6. Add the Abstract-DWPI Use field to the Chosen Fields list, then click Treatment and select Both 7. Click Save and wait for the map to process

6 Blueprints for Success - Evaluate portfolios for mergers, acquisitions, or licensing 6 Compare your current portfolio with the target portfolio ThemeScape automatically creates groups for the assignees listed on the records included in your map.. Open the Groups panel and select all the automatically created groups under Optimized Assignee Use the color picker tool ( ) to select the same color for assignees that belong to the same parent company Review the map to see areas of overlap between your company and the target Look for areas where your portfolios differ to locate patents that may complement your existing portfolio Use the other automatically created groups to further analyze the map, e.g., focus on only Alive patents, focus on specific markets, focus on technology sectors, etc. Learn more with these additional resources Identify License Opportunities in Your Patent Portfolio Last updated: July 25, 2018