A young lawyer in Boston got a surprise during what he thought was the third and final interview for a job as counsel to an insurance company. It turns out that the interviewers weren't insurance executives but private investigators trying to get information about a judge who once employed the lawyer.
I. Introduction
Information intelligence, once the domain of governments, is increasingly the responsibility of industry. As the importance of intellectual property increases, industry has an increasing need to both obtain information, and protect it. Many companies do not have the resources or expertise to adequately accomplish a process patent infringement investigation. However, companies are beginning to actively pursue broader enforcement of their patents and a few private investigation companies will provide an investigation beyond the standard electronic literature and patent search. This paper focuses on the external resources which may be helpful in identifying companies that are infringing upon process patents. The detection of process patent infringement is especially difficult in instances where the same product is made in a cheaper, more efficient manner; or where the patented process is used in another industry.
A patent infringement investigation does not fall in the typical definition of patentability (determine whether an invention or process is patentable), infringement (form a legal opinion concerning a patent related situation), or validity (extended search to ascertain whether a patent will withstand an attack in litigation) searching. Historically searches have usually been performed to avoid prior art or to invalidate a troublesome patent. The offensive search for potential infringers is targeted at the finding infringers that can be forced to license or pay damages. Once an infringer is located the patent and literature searches may still be required to defend the patent and encourage a settlement.
The organizations referenced in this report are examples. No endorsements are intended.
II. Background
Companies have mostly relied upon internal resources to keep up on technology and identify potential patent infringers. Employees know the business, the key players, the technology, and often spot competitors that are infringing on process patents. Discussions with corporate patent attorneys indicate this has been, and to some extent remains, the process of choice for identifying process patent infringers. This approach however does not provide very much protection when the process is being used in a different business application. An example would be a process for petrochemicals that also has applicability in the fertilizer business. Alternatively, the patent being licenced may be a process patent in the silicon growth field that may have equal value in the fabrication of jet turbo-fan blades, since both involve the growth of single or uni-directional cellular material structures.
When a business develops a patentable process at great cost they often fail to see its applicability outside their competitive market. Without a system in place to look at all the possible applications and monitor its use, they may receive only a fraction of the compensation possible for the technology.
A disciplined internal system for monitoring process applicability and technology use could be the most comprehensive and cost effective approach for monitoring process usage. However, in those instances where a company wants to investigate for all potential infringers there are only a few organizations working to meet this need.
Most of the investigative sources to date have been patent and literature search services which look at either the patentability of an idea or ensure against infringement on existing patents. The concept of using a professional investigator for offensive searching for infringing companies in other industries has not usually been cost effective in the past but the increasing value of intellectual property is making large expenditures in the investigative field more worthwhile.
III. The Available Infringement Investigation Service Providers
Relatively few companies were found that performed field investigations for process patent infringement. The organizations found on the internet did not claim to specifically search for unknown process patent infringers but they did appear to have very closely related areas of expertise. Unless otherwise noted none of these organizations responded to a request for further information.
The Carratu web page indicates a significant amount of involvement with counterfeit products. Again, they do not appear active in the field of protecting process patents. They do claim on their web page that "We maintain unique and comprehensive in-house databases containing intelligence gathered over 25 years on international counterfeiters and infringers, their distributors, dealers and component suppliers. In addition, we have invested in Pharmatrac®, our own in-house database, designed to meet the specific needs of our pharmaceutical clients." Carratu may be a good source for determining who needs to be watched for posible infringement activity.
Agata Christie Investigation investigates patent issues and conducts counter espionage. These were two of the 31 services listed on their internet web page that appear applicable to the field of intellectual property infringement protection.
This is a collection of US and international Intelligence Community web sites. The web site is geared toward the intelligence community but is a very comprehensive collection of sites such as the Air Force Intelligence and the Department of State Bureau of Intelligence and Research. While not patent specific these sites provide a source for researching how state of the art intelligence nets are developed and maintained. A perusal of these sites is an eye opener to the level of sophistication you need in any supplier your are considering hiring to help you track down and confront patented process infringers.
Mr. Draz has worked as an investigator for fortune 500 companies. His services include Piracy, Industrial Espionage, Trademark Infringement, Theft of Trade Secrets, etc.
IV. Patent Search Providers
These providers are much more of a commodity broker. They deal in information located in electronic databases and some of the providers listed are from advertisements in intellectual property journals rather than the Internet. There are 1,000 of other providers but when a field investigation is cost prohibitive these organizations may be a more cost effective alternative. None of these organizations claimed to be able to find an infringer trying to stay anonymous but they may be capable of finding business inadvertently using a patented process. Any search provider would have to be analyzed with respect to a particular situation and this list is not even minimally comprehensive, but it may be a useful starting point for your own evaluation. Search tools are continually improving which allow ever improving data, search parameters and results analysis. These tools may help both identify infringers and identify markets for a patent that were not originally anticipated, providing the starting point for further investigation. Unless otherwise noted none of these organizations responded to a request for further information.
T&PRI reviews patents from 50 countries, worldwide journals, and non-Englishlish material. They do not identify the core databases used for the searching as internal or external, nor do they have a web site.
RWS performs literature and patent searches. Their process for this is ISO 9002 certified and they have been in business for over 35 years.
Focuses on the review of Japanese patent publications with translations. There services are largely patentability, infringement and validity searches.
GPA does not have a web site but they focuses on finding prior art in the patents or literature of non-English documentation. They appear to be focused on defending against patent infringement claims. None of these providers listed identified the core databases used for the searching as internal or external.
RightData focuses on service to investors and an intelligence service for investigating competitors. They appear to be on line data driven and may be a packager of information available from other sources such as Dialog. The most applicable service listed on their web page was a licencing opportunity survey which may help identify industries that should be watched for infringement.
Forrester also appears to be a database information searcher. Their product and service focus was on documentation synopsis and not investigation or intelligence activities. Their strategic focus was not in the field of intellectual property.
Manning replied to an e-mail request for information. They have an on line service called DR-LINK which can be used to search for prospective infringers by studying articles, press releases, etc. They also provide a "constant watch" for patents which site to a particular patent of interest, e.g. your own.
The Dialog databases can be searched from the web at this site for a fee. Patents and journals are available on-line as well as a vast collection of articles, data and documentation from a multitude of sources. This documentation can be searched but its usefulness in the identification of process patent infringers is probably limited. It is not likely that anyone knowingly infringing, or even suspecting the possibility, would publish an article of the process or its application to their industry. Dialog was previously known as the Knight-Ridder Information Co.
This company is an example of the many patent search services that are listed in the back of various trade magazines and on the internet. These businesses usually survive by word of mouth and very specialized search services. Tom Baily for example, has a Ph.D. in Organic Chemistry and refers to himself as an on-line database professional. He said in his e-mail that he did make phone calls, talk to witnesses, and review older literature in well-established libraries when appropriate.
V. Other Interesting Web Sites
Several web sites were located that contain articles and information of interest on the general topic of intellectual property protection. These sites may also be useful in developing a corporate strategy for identifying and protecting intellectual property.
This web site contains some very interesting articles on the use and licensing of patents.
Binks provides patent infringement legal expense insurance. They provide insurance for the legal costs of protecting patents. This could be useful especially to the small inventor that does not have the resources to wage the type of legal battle patent protection requires today.
Athan analyzes issues and assesses damages in infringement cases. They also work in the area of intellectual property valuation.
Interesting site with several hot links to patent related information.
The first article at this site is on "Best Manufacturing Processes". This lends some credibility to the idea that a web, Dialog or Lexus search may provide insight into potential process infringers, if the infringer should inadvertently choose to write about the infringing process.
The Patent Portal has a collection of patent related web site links. None were related to the issue of process or method patent infringement but they did provide a source for other general information.
This site has links to many intellectual property resources.
This is a relatively new site for a new organization (1998). There is not a lot of information yet but it may yet develop into a good starting point for locating an intellectual property firm in your area.
VI. Conclusion
At this time there are relatively few service companies focusing on patent process protection. Searching the net is sufficiently intimidating that some companies can be profitable by simply searching and repackaging internet, Dialog, PTO or other database information. Some "gumshoe" investigation is done by companies like Carratu but the majority do not perform many services beyond publication gathering. One reason for this is that it is difficult to get solid information on processes in use in other industries. Industry works hard at maintaining their secrets and to a large extent the internal operations of companies are secret. Some companies go so far as to have sections of the manufacturing process sealed from all but a handful of their most senior employees. However, as the contract between employers and employees has weakened with lay-offs and down-sizing the loyalty to protect secrets from use by competitors or in alternate applications will become increasingly difficult. How do you track employees that leave your company and take your trade-secret to a competing industry and use it in that application? How will you know the source of the information if that company licences the trade-secret to your competitor? This type of trade-secret, patent, and know-how monitoring does not appear to be currently addressed by industry, probably due to the high cost of investigation and the limited tools for a truly useful investigation. The increasing value of intellectual property will, however, make keeping secrets and identifying patent infringers a fertile ground for good investigators. Those organizations willing to look at the world from a vantage point other than their computer screen will probably see an expanding and profitable market.
ATTACHMENTS
The following sample e-mail was sent to selected law firms and companies.
I am a Law Student at Franklin Pierce Law Center for the summer. I am doing some research that will be posted on the FPLC web page for those practicing in the IP field.
The specific emphasis of the paper is the identification of resources which are available to detect and prosecute process patent infringers.
I am interested in any experience you may have in this area. I realize you are very busy and actively involved in the Beloit case at this time but would greatly appreciate any insight you can provide on how Beloit became aware of the possibility of infringement.
I have two other questions:
1. How does an inventor know whether his process or method patent is being infringed?
2. Where can an inventor go to have his IP protected on an ongoing basis by monitoring for illegal use?
It is not obvious at this time how these investigations can be done in a cost effective fashion. Any comments on this issue would be greatly appreciated.
Thank you
Jeff Moore
After 13 July