Licensing and change of ownership in

international patent legal status data

Catalina Martínez CSIC – Institute of Public Goods and Policies (IPP) Madrid, Spain 14 November 2011 OECD-KNOWINNO Workshop USPTO Headquarters, Alexandria, VA, United States

Motivation

There is an emerging market place for patents, but measuring it is still quite challenging (Yamagisawa and Guellec 2009).

One underexploited source of data are the official records of patent sales and licensing maintained at patent offices.

Some recent developments indicate that registering licensing and changes of ownership might become more important in the future, for example:

▫ 2009 change of law in Spain: reduced information requirement to register licenses

▫ 2011 Court decisions in the UK: i) Schutz v Werit; ii) Lundbeck v Infosit. (Section 68 of the UK Patents Act, Assignees not awarded damages and/or costs for infringements occurring before the transaction was registered)

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Background and aims

Pioneering work by Carlos Serrano using data on assignments from USPTO (2007, 2008, 2010, 2011) shows that this kind of data can lead to very interesting analyses and results.

Examples of other studies on specific countries:

▫ France: change of ownership (Ménière and Dechezleprêtre 2011)

▫ Brazil: licensing (Zúñiga and Martínez 2011)

The aim of this project is to take a look at the information available on patent licensing and change of ownership in an international database maintained at the European Patent Office, the Inpadoc Legal Status database, and find out to what extent we can rely on it to analyse and compare national markets for patents

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EPO Inpadoc legal status database (PRS data) POSITIVE:

• EPO product 14.1 contains legal status data also known as PRS data (Patent Register Service) and includes records from over 40 international patent authorities

• Since April 2010 (version used here) : Records linked to PATSTAT, table tls221 sold as a separate product with different national PRS codes linked to patents.

NOT SO POSITIVE: • Scarce documentation, non-exhaustive, changing over time. Some detective work, SQL

skills and country-specific knowledge needed to find all relevant information.

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EPO classification of PRS codes by theme

Excel files of “recently used PRS codes”, posted online and updated regularly, include a classification made by EPO of codes into 20 different concepts (with a disclaimer*), however this classification may be too broad and non-exhaustive.

* Disclaimer: “Utmost care has been taken to provide accurate data in this table, however, the EPO cannot guarantee that this table is 100% correct and we cannot take responsibility for either the absence or the erroneous ocurences of any legal event”.

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1. Lapses (non payment of fees) 2. Expiries 3. Withdrawals. Refusals, etc. 4. Nullification of Parts of Original Rights / Limitation 5. Reinstatement / Restoration 6. Fee Payments or In Force 7. Opposition Proc. / Re-examination / Appeals to the Court 8. Request for Examination / Search Report / Examination Proc. 9. Time Extensions (e.g. Payments, Completion of Specs., etc,) 10. Change of Owner / Applicant

11. Change of Representative Term Extension of Rights (e.g. SPCs) 12. Change of Classification 13. Licencing / Exploitation 14. EA, EP, AP, OA entering nat. phase (Translations) 15. PCT entering (non-entering) nat. phase 16. Divisional and Additional Applications / Partition 17. Notice of Publications 18. Corrections / Amendments/ Modifications in 19. Specifiation 20. Errata 21. Miscellaneous or Ambiguous

Solution: re-classification of PRS codes

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WLIC willingness to licence

LIC licence

COW change of ownership

ULICOW undefined

WLIC+ WLIC- LIC+ LIC- COW+ COW- ULICOW+ ULICOW-

EP

111L licenses

111Z registering of

licenses or other rights

R11L Granting of a

licence (correction)

RAP1 transfer of

rights of an EP application

RAP2 Transfer of

rights of an EP publication

US PA

Patent available for licence or sale

AS assignment

AS assignment

XAS not any more

in US assignment

database

CH PLI

licence

PLIA cancellation

of licence

PUE assignment

PUEA assignment of

the share

….up to 28 patent offices out of a total of 40 offices present in the PRS-PATSTAT April 2010 database

Reading the full list of definitions of PRS codes country by country Looking for additional information for validation

Checking there is data associated to codes for time period of interest

Willingness to licence

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8 national offices (BR, DE, DD, FR, GB, LT, PL, US)

Willingness to licence – licences of right

8

Not included in graph: DE codes with data only until 1980. DD finished in 1990. GB only two records, maybe other relevant codes in ULICOW (undefined) category excluded from graph because it is not possible from title to distinguish between licensing and change of ownership (work in progress). LT only 9 records. France abolished licences of right in 2005.

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France (0.34%)

United States (0.07%)

Poland (0.06%)

Brazil (0.03%)

Licensing

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16 national offices (AU, CH, ES, FI, FR, GB, HU, IE, IL, LT, NL, NO, NZ, PT, SI,

US)+ EPO + Eurasian Patent Organization

Licences

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Not included in graphs: Offices with less than 50 records in the whole period (FI, IE, IL, LT, NO, PT, SI, EA, GB). GB has only records after 2006 in licensing category, but might have more in ULICOW (undefined) category (work in progress). US data is organised differently (USPTO assignments database).

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France (2.89%)

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Spain (0.27%)

European Patent Office (0.17%)

Switzerland (0.08%)

Netherlands (0.08%)

Australia (0.05%)

New Zealand (0.09%)

Hungary (0.07%)

Change of ownership

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22 national offices (AT, AU, BE, BR, CH, CN, DE, DD, ES, FI, FR, GB, HK, IL, LT,

LU, MD, NL, NZ, PT, SI, US)+ EPO + Eurasian Patent Organization

Change of ownership

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Not included in graph: DE old data. DD finished in 1990. Remaining offices with less than 4000 records in the period (AT, BE, HK, IL, LT, LU, MD, PT, SI). US data is organised differently (USPTO assignments database).

0%

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European Patent Office (18.4%)

France (11.6%)

Switzerland (10%)

Netherlands (6.5%)

New Zealand (6.5%)

Finland (6.2%)

Spain (5.5%)

Brazil (4.6%)

Australia (3.9%)

China (3.1%)

United Kingdom (0.6%)

How can we go from “change of ownership” to patent

sales”? Discarding events unrelated to market transactions

PATSTAT only has names of applicants/owners as of the latest patent publication.

▫ Original applicant names are replaced by names of new owners if the latter are published and updated in DOCDB before PATSTAT is released

PRS data generally only has names of new owners, but for some offices it also provides names of former owners:

▫ United States

▫ United Kingdom

▫ Australia

▫ Brazil;

▫ Switzerland

▫ Hong Kong

▫ Israel

▫ New Zealand

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Information present in the PRS-PATSTAT data

YES NOT ALWAYS

Date of the event Order in sequence of events

Name of new owner

Name of original owner

Research questions

How have markets for patents evolved across countries in recent

years?

▫ Characteristics of market participants ▫ Technology areas ▫ Characteristics of the patents traded ▫ Volume of patents traded ▫ Time trends

Do we find some commonalities?

▫ Growth ▫ Emergence of new types of traders

Are there significant differences? What determines the differences? Do different policies matter or it is all about culture?

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Conclusions

PRS data has a lot of potential for the analysis of patent licensing and sales across countries. Sales seem to be better represented than licensing.

However, it requires a lot of work to get it right, especially to understand PRS codes and underlying events in order to discard events unrelated to market transactions. It is essential to get validation and additional information from national sources.

Work in progress.

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