By Ruth Fisher, PhD and Stephen W. Cheung, PhD*

Introduction

Creating a Patent Database

Mapping Concept Chains for Commercialized Products

Identify Patterns or Clusters in Research

Determine the Lay of the Land For Existing Research Areas

Determine the Lay of the Land For Potential New Research Areas

Determine Center Progress over Time

Discussion

Introduction

Managers of research and development (R&D) centers tasked with commercializing technologies face a dilemma. Only a small portion of the center’s discoveries are patentable. And patents generate prestige for both the institute and the researchers. As a result there is a strong desire to patent any discovery that is patentable. However, filing for patents and paying maintenance fees is costly, and the great majority of patents cannot be monetized. The challenge facing center managers, then, is to direct researchers to focus their attention on new discoveries that generate patents that are more able to be monetized.

Proper management of a center’s patents must surely start with generating a database containing descriptive elements of the center’s patents. After such a database has been created, a center manager can progress more easily into various types of patent mappings. If used effectively, patent mapping can serve as a tool for R&D center managers to effectively direct researchers to generate discoveries that are more able to be monetized.

Creating a Patent Database

Research cannot be managed if a center manager does not have a proper understanding of the center’s portfolio of patents and research efforts. The first task any new center manager should undertake is the construction of a database containing descriptive elements of the center’s patents (both assigned and in process) and research efforts.

The United States Patent and Trademark Office (USPTO) database contains most of the patents filed globally (applied for and issued), since the US is the most profitable market for most technologies. The following data elements relevant for managing a center’s research portfolio are available from the USPTO database:

• Patent Number
• Issue Date
• Title
• Abstract
• Claim(s)
• Current US Classification (Patent Classification Code)
• International Classification (Patent Classification Code)
• Related US Application Data (Prior Art)
• Foreign References (Prior Art)
• Other References (Prior Art)
• Referenced By (Other Patents Citing This Patent)
• Application Number
• Application Date
• Inventor Name
• Assignee Name
• Assignee Country

Creating a database of center research information containing these basic elements should be a relatively quick and straightforward process. Rough assessments of patent groupings may be assessed by sorting the database on classification codes and dates.

More sophisticated patent mappings are generated by creating technology concept or value chains, by connecting technologies with one another based on their roles as inputs into other, more developed technologies. Such mappings, which display technologies along the fundamental-to-applied technology continuum, are taken up in the next section.

Mapping Concept Chains for Commercialized Products

Starting with a commercialized product, one can assess the entire concept (value) chain associated with that end product. The concept chain starts with identifying all of the patents and technologies embodied in the final product. These are identified as the green bubbles in the right vertical panel of Figure 1.

Figure 1: Concept Chain Associated with End Use Product

Using patent issue dates, patent classification codes, prior art cited in each patent, etc., one then maps out the development chain of concepts/technologies associated with each patent. Start with the most developed (the commercialized or applied patented concepts) (the orange bubbles depicted in the middle vertical panel of Figure 1, which may or may not be associated with existing patents). Then continue to move “backward” to the least developed (fundamental) concepts/technologies associated with each patent (the blue bubbles depicted in the left vertical panel of Figure 1, which may or may not be associated with existing patents).

R&D center managers may utilize the types of concept chains depicted in Figure 1 in several ways to direct research.

Identify Patterns or Clusters in Research

Center managers who are interested in assessing the coherence of their center’s patents may utilize a concept chain patent mapping of the center’s patents, similar to that displayed in Figure 1. The center manager accomplishes this, first, by identifying all existing patents in the center’s research areas. Second, the center manager arranges the existing patents into a concept chain, from most fundamental to most applied. Figure 2A and 2B present sample final diagrams.

Figure 2A: Identifying Patterns in Research

Figure 2B: Identifying Patterns in Research

Suppose after mapping out the patents in the research areas, the center manager identifies his center’s patents as being associated with the thick bubbles in Figure 2A. Such a clustering of center patents in the area of Technology 1 would suggests that the center has a particular strength of expertise in that area.

Alternatively, after mapping out the patents in the research areas, suppose the center manager identifies his center’s patents as being associated with the thick bubbles in Figure 2B. A lack of clustering of the center’s patents as shown in Figure 2B would suggest that previous center management had not done a good job in managing the center’s research toward producing coherent technologies.

Of course, a mapping of the center’s patents may also reveal that many of the center’s technologies are not associated with other commercialized technologies. These types of “dead-end” patents are generally not commercializable, at least until their end use applications become more fully identified.

Determine the Lay of the Land For Existing Research Areas

Center managers who are interested in a particular research area can map out the existing concept chains to identify overcrowded, up and coming (“hot”), and/or potentially underserved research areas. The center manager accomplishes this by identifying all existing patents in the research area and arranging the existing patents into a concept chain, from most fundamental to most applied. Figure 3 presents a sample final diagram.

Figure 3: Establishing the Lay of the Land for Existing Research Areas

The solid bubbles in Figure 3 represent established concepts and technologies. The dashed bubbles in Figure 3 represent potential developments of existing technologies (new research areas) that may eventually lead to commercializable products. The top horizontal panel in Figure 3 thus represents a developed area of research; the middle horizontal panel represents a hot or up-and-coming area of research; and the bottom horizontal panel represents an underserved area of research.

Once the lay of the land, as that displayed in Figure 3, has been established, the next step for center managers is to establish:

•  Which institutions are associated with each of the established concepts, that is, who are the research center’s competitors?

•  Which of concept areas might the center be able to pursue, that is, where does the center’s actual and potential expertise lie?

•  Given the established concepts and the requisite new developments, how likely is the center to be in successfully developing new commercializable products?

Determine the Lay of the Land For Potential New Research Areas

Center managers can also use concept chains to determine whether or not a proposed avenue of research should be pursued. The center manager accomplishes this in a similar manner to that established in the previous section, Determine the Lay of the Land for Existing Research Areas. The center manager identifies all existing patents in the research area and arranges the existing patents into a concept chain, from most fundamental to most applied, as in Figure 3.

Suppose a researcher proposed pursuing an area corresponding to one such as Developing Technology 2b in Figure 3. Should the center manager accept the proposal? The complementary technology required to pursue Applied Technology 2 has, indeed been established. However the more fundamental concept, Concept 2C, still awaits development before Applied Technology 2 can be generated. This suggests that pursuing Applied Technology 2 may not be in the short term interests of the center.

Alternatively, suppose a researcher proposed pursuing an area corresponding to one such as Developing Technology 3a in Figure 3. If the center also has the expertise and resources to simultaneously pursue Developing Technology 3b in Figure 3, then supporting research in those areas might, in fact, be a promising use of center resources. Otherwise, the lack of requisite complementary expertise will inhibit the center’s success in that area.

Determine Center Progress over Time

By updating concept mappings over time, center managers can establish the progress of the center. 

•  Research chains that are being completed by the center over time represent progress and areas for continued support.

•  Research chains that are being populated more quickly by competitors may represent areas that should be cut back by the center.

•  Research chains that are being established by others that connect to the center’s areas of expertise represent new potential areas of research.

Discussion

Of course, the diagrams presented in the sections above are extremely simplistic. The end user technologies that generally come to mind, such as smart phones and laptop computers, embody hundreds, if not thousands, of patents and other technologies and know-how. Even the major component technologies contained in such products as smart phones and laptops -- such as processors, memory modules, operating systems, touchscreens, cameras, and GPS systems, just to name a few – themselves contain tens or hundreds of patents and technologies.

Generally speaking, all but the very largest research centers or companies will tend to cover only component or sub-component technologies that are licensed out to be used in larger systems. Additionally, single, isolated patents generated by research centers within specific technology areas tend to be of little value, due to (1) the prolific numbers of patents existing within many of even the most narrowly defined technology areas, and (2) the uncertainty surrounding the validity of any given patent (assuming the patent has not been upheld as being valid during the litigation process).

It follows that center managers’ attempts to use patent mappings to help guide research should

►  Focus on the most narrowly defined possible component or product areas, and

►  Encourage research that clusters within those narrowly defined areas.

In other words, rather than identifying end-use products presented in the diagrams above as smart phones or laptops, research centers should focus instead on technologies such as component modules that provide new functionalities for existing smart phones or laptops. This will increase the likelihood that center researchers will end up generating commercializable patents.