Patent Attorneys - A Profession in Transition

Patent Attorneys - A Profession in Transition
5/21/2009 2:36:14 PM

Traditionally, patent attorneys have focused solely on the critical legal role of prosecuting and litigating patents. In fact, the patent attorney has played one of the most important roles in the patent system. While any business, entrepreneur, or inventor will argue that patents could not exist without their innovative ideas or financial support, the same holds true for the deft drafting of a good attorney.

In previous issues, we started the discussion of “Why Use Patent Analytics?” and have identified Fortune 1000 companies, New Ventures, Investors, Lawyers, Research Universities and Governments as potential users of patent analytics. In our continuing series, we also identified four types of patent analytics that could be useful: Patent Component Analysis, Bibliometric Analysis, Expert Opinion Analysis (Subject Matter Expert), and Financial Modeling. This month we continue our tour of industries and potential patent analytic applications by turning to Law Firms.

How Can Patent Analytics Help Law Firms?
Patent Bibliometrics

Patent Bibliometrics uses both static and dynamic information, such as the inventor or the number of citations received, to determine qualitative and quantitative characteristics about a patent or patent portfolio. Progressive law firms use Patent Bibliometrics in numerous ways to help them counsel their clients. For any law firm actively helping their clients to build, manage, and leverage their portfolios, Patent Bibliometrics can provide insight into any patent maintenance and licensing decision. Because there is no clear method for determining the value of a patent, patent maintenance decisions are often very difficult. Portfolio managers and patent attorneys struggle to answer a number of questions before reaching a maintenance decision: what is the defensive value of the patent to the company; how does the outside world view the patent; how do we maximize the value of the patent in the company; and is the effort worth the maintenance fee? Patent Bibliometrics can help to quantify what the outside world view of the patent is. By looking at characteristics such as the number of citations a patent has received and comparing that to similar patents, an attorney can identify those patents in a portfolio that have greatly influenced technology. Conversely, an attorney can also determine which patents have not influenced technology very much during their lifetimes. This is a powerful tool that can help to separate the patent wheat from the chaff. More importantly, Patent Bibliometrics provides a quantitative approach to an otherwise subjective determination of which patents may be influential or which patents may be the proverbial “Rembrandt in the attic.”