Craig's Corner For Counsel: IP Monitor

Wednesday, October 1, 2008 - 01:00

Managing your company's intellectual property (IP) today is complex. As general counsel, you routinely advise your company on the IP risks in mergers and acquisitions, the development and introduction of new products and services and the activities of your competitors. West's IP Monitor can help counsel take an active role in gathering and assessing this essential information.

It collects, analyzes and maps key patent and trademark information from sources like the Derwent World Patent Index® , the United States Patent and Trademark Office and other Westlaw databases. I wanted to take a closer look at it for this month's column, with the help of Mark Medice, national brand manager for West.

IP Monitor is used by corporate counsel to quickly compare a company's IP portfolio with its competitors, its industry and how other companies are handling similar portfolios. "Getting insights about how companies are evolving in the IP marketplace is critically important to help a company anticipate risks when introducing new products and when advising on mergers and acquisitions," Medice says. "It's also important for any company that wants to identify trends and monitor their competitors."

IP Monitor can be used to answer key strategic IP questions such as:

• Which patent types are subject to the greatest litigation, and where are the risks?

• Who are the active litigants?

• What technology areas are being protected by filings and grants?

• What are the international trends?

• What are the domestic trends by foreign filers?

• Who are the key buyers and sellers?

IP Monitor, part of a broader information and analysis tool called West Monitor Suite, aggregates data from docket summaries, as well as patent and trademark filings, in a way that allows for unprecedented analysis of intellectual property prosecution and litigation activity combined. "With one click, you can align the critical competitive data buried in the USPTO and international patent databases," said Medice.

With IP Monitor, you can:

• Focus your analysis by industry, company, inventor location, patent class, firm or attorney.

• View complex trend analysis in clear, easy-to-read reports.

• Link directly to patent and docket summaries for further insight.

"This type of intelligence is important to corporate counsel to enable them to provide basic information to the company around who's doing what, who has what wallet share, which companies are involved in what activities and how to better anticipate trends," Medice says. "This information also helps general counsel manage their company's IP portfolios and examine their commercialization strategies," according to Medice.

In addition to providing docket, news, and detailed company information, IP Monitor draws from these powerful Westlaw sources:

U.S. Patents (US-PAT)

The US-PAT database contains the full-text of all patents issued by the USPTO since 1976 plus U.S. patent applications beginning with March 2001 (applications were not published before then). Document types include Utility, Plant, Design, Reissue, Statutory Invention Registrations and Defensive Publications.

U.S. Patent Applications (US-PAT-APP)

The US-PAT-APP database contains all published U.S. patent applications (pre-grant publications). Publishing of patent applications began in March 2001, as mandated by the American Inventors Protection Act of 1999 (AIPA), and represents one of the most fundamentally significant changes to the U.S. patent system in a century.

U.S. Patent Assignments (US-PAT-ASSIGN)

The US-PAT-ASSIGN database contains complete records of U.S. patent assignments. Records include the number and the affected patent(s), assignor(s), assignee(s), type of assignment (full interest, security interest, etc.), date signed, date recorded, contact information, and the reel and frame number of the USPTO microfilm containing the full image of the assignment deed.

International Patents (Derwent World Patents Legal ® ) (DWPL)

The DWPL database contains over 14 million patent family documents covering more than 20 million patents issued from 40 international authorities. Coverage of patents varies by country, and extends as far back as 1963. Each document represents a patent family and describes where an invention is patented worldwide. Each document contains the basic patent and related member patent(s) information.

U.S. Trademarks (TRADEMARKSCAN ® ) (NA-TM)

The TRADEMARKSCAN - North America database (NA-TM), produced by Thomson CompuMark, provides complete information on both federal and state trademarks. Both federal and state documents contain information on trademark name, status, registration, international class(es), goods and services, assignments and so on. Federal information also includes pending applications (actual-use and intent-to-use), design codes and information about Trademark Trial and Appeal Board (TTAB) actions.