UKIPO (2011) - Patent Thickets An Overview

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• This page is referenced in the Patent Thicket Literature Review
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Reference

• Team, Intellectual Property Office Patent Informatics (2011), "Patent Thickets: An overview", UK Intellectual Property Office

@article{ukipo2011patentthickets,
  title={Patent Thickets: An overview},
  author={Intellectual Property Office Patent Informatics Team},
  journal={UK Intellectual Property Office},
  year={2011},
  abstract={},
  discipline={Policy Report},
  research_type={Discussion},
  industry={},
  thicket_stance={},
  thicket_stance_extract={},
  thicket_def={},
  thicket_def_extract={},  
  tags={},
  filename={UKIPO (2011) - Patent Thickets An Overview.pdf}
}

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Executive Summary

The Hargreaves Review of IP and Growth concluded that patent thickets can impact negatively on business and innovation. In response the Government committed to investigating the scale and prevalence of patent thickets, including whether they do in fact present a particular problem to small to medium enterprises (SMEs) seeking to enter technology sectors. This study is the first part of this work.

Thus the current study was initiated with three key aims in mind: 1. to begin to take the debate around patent thickets away from anecdotal and micro-study approach, toward a more generalised methodology by providing a general taxonomy for discussing patent thickets; 2. to generate an automated methodology for detecting patent thickets in published patent data; and 3. to assess whether or not patent thickets present a barrier to entry for companies, particularly SMEs, in the UK.

The phrase “patent thicket” is a descriptive term which highlights issues that new entrants to a market may face when attempting to innovate within, or enter into, a technology space having existing intellectual property rights. The most generally used definition of a thicket is that coined by Shapiro: “a dense web of overlapping intellectual property rights that a company must hack its way through in order to actually commercialize new technology”

Equal weighting is given to fragmented technological areas (areas where there are large numbers of small patent holdings), or areas where there are small numbers of large players with large patent holdings, each of which creates a thicket that any entrants into the area will have to negotiate in order to be able to operate. There is no clear consensus on terms used to describe patent thickets and the entities involved with them. If these terms were applied consistently, further debate on any issues could be conducted on a level playing field. Any change in policy associated with patent thickets should be carefully considered for its potential impact across different technology landscapes. The second aim is achieved by using the various micro studies of thicket existence which focus on patent pools, standards, blocking behaviour and products. Creating a set of algorithms and indicators will allow us to identify well-known thickets and identify where other patent clusters have similar characteristics.

Several indicators were calculated from the data, and the main patent density measures were the most useful in suggesting that thickets were present. However, it was interesting to note that some indicators potentially give more useful insight into the type of thicket present. Further work is required to expand on the indicators and their use in order to develop the toolkit for automatic detection, and perhaps categorising, of patent thickets in a generic area of technology.

Visual interrogation of patent landscapes offers an alternative method of assessing technology areas for patent thickets, as demonstrated by the analyses of the safety razor dataset. However, the complex terminology associated with some areas raises challenges in using this technique.

Following the creation of indicators, it was noted that patent applications themselves (as compared with granted patents) may also form a barrier to entry. This issue is compounded by the fact that in some jurisdictions (not the ones in the current study) the applicant can defer the examination of a patent for several years. In order to analyse whether this issue presents a problem, further work is needed to track cohorts of patents from application through to grant for certain technology areas and in certain jurisdictions.

It may be useful and perhaps more informative to analyse thickets by looking at the products which are associated with particular patents. Additional work would need to be carried out in order to start understanding how patents and products are linked, before datasets could be created.

To assess whether or not patent thickets present a barrier to entry for companies, particularly in the UK, a number of areas in distinct types of technology were selected to form the basis of the study. Some of the technology areas were chosen because they are known to contain thickets, and the areas also include traditionally relatively slow moving areas, such as safety razor blades, through to faster moving wireless networking systems. Much of the existing literature on patent thickets has its source in the United States and, as such, it is important to include US data together with European (EP) and UK data.

In order to explore some of the issues surrounding thickets in more detail, a case study based on safety razors was chosen. This is not one of the traditional high-tech areas presently associated with thickets, being more fundamentally mechanical in nature. However, there is a well known high patent density caused by the market dominance of the main players.

The data show that the companies involved are mainly large multinational companies, thus adding to the notion that there may be a barrier to entry. However, there are smaller companies present and as such there is no conclusive evidence either way, at this stage, to suggest that there are barriers to entry. The presence of an SME in a densely populated technology space is encouraging, but the key test is whether these companies can grow and develop within such spaces, and is an area which needs to be addressed in the next round of analysis.

This report has raised more questions than provided answers. Clarity and language associated with patents and claims, in particular, could be addressed. This was noticeable when attempting to visually map out some of the more complex high technology areas, such as wireless networking.

It was suggested in the Hargreaves Review of IP and Growth that one solution to patent thickets is to review the level of renewal fees charged. Work is needed to explore the issues surrounding the increasing of renewal fees, and particularly the impact any change would have on those parties who use the patent system in a non-thicket manner.

Additional research in considering the impact of the secondary market in patents should be contemplated. It seems that it would be interesting and relevant to study data relating to licensing and patent ownership for US, GB and EP data. However, this is not available at this time. A study in how this secondary market is evolving would be of value.

Review

Definition of patent thicket

"The phrase ‘patent thicket’ is a descriptive term which highlights issues that new entrants to a market may face when attempting to innovate within, or enter into, a technology space having existing intellectual property rights. The most generally used definition of a thicket is that coined by Shapiro: ‘a dense web of overlapping intellectual property rights that a company must hack its way through in order to actually commercialize new technology’."

Policy Discussion

Policy topic considered:

In response to a study that concluded that patent thickets can impact negatively on business and innovation, the UK Government opened an investigation into the scale and prevalence of patent thickets. This paper is the first of a series and considers:

• Moving the patent thicket debate from anecdotal discussions by developing a general taxonomy for discussion;
• Generating a methodology for detecting patent thickets in published patent data;
• Assessing extent of patent thickets as a potential barrier for companies (particularly SMEs) in the UK

While not the focus of the article, the authors note that:

"The differences between the US and European patent systems may serve to overall allow [The Patent Assertion Entity] PAEs to operate in the US system because of the following points: - The presumption of validity of patents by US judges and juries - The allowance of business methods and ‘software patents’ - The potential for the existence of so called ‘submarine patents’, as not all patents are published at the 18 month stage - The way in which costs are divided by the courts – both parties pay their own costs - The high costs of litigation - Where ‘wilful (sic) infringement’ is decided, high level of damages can be afforded - The payment system for lawyers can be considered to encourage lawsuits - The existence of patents of unclear scope”

Data considered:

The report relies upon an IPO database collected from publically available data for UK, US and EU to assess the existence of patent thickets of high patent densities.

• The data includes datasets limited by 20 years for granted patents, and 5 years for pending patent applications within each of the technological areas covered.
• Technology areas covered by the data include: Nanobiotechnology, Telemedicine, Dendritic polymers, Graphene, Photorefractive keratectomy, Wireless networking (handoff arrangement), Safety razors, and Fuel Cells.

Results:

The report provides “an initial insight” into whether or not patent thickets are found in a specific technology area.

• The results show that technology areas containing thickets tend to be dominated by larger applicants, though some technologies include thickets caused by multiple applicants having smaller sized portfolios.
• The study’s indicators also appear to show that there is a possibility of different thicket forms occurring where there are different types of technology linked to the maturity of that technology space.

Social Welfare Implications

The potential barriers to entry, in particular for SMEs are of special concern to the UK government, thus the generation of this study.

Policy Advocated in Paper

While not conclusive in this report, the authors propose several areas for further study including:

• Develop an economic significance test of whether SMEs can grow within such technology spaces and needs further study;
• Determine whether pending patent applications are a barrier to entry.
  • Because timing of patent applications creates uncertainty, further work is needed to track cohorts of patents from application to grant for technology areas and jurisdictions to determine the impact.
  • This effort is inhibited by dataset issues.
• Clarify language in patents:
  • New entrants to technology might find it difficult to understand the scope of patents being sought because of the language of patent claims.
  • Time and energy spent on understanding a technology area in terms of acknowledged activity coupled with a consistent approach towards obviousness could potentially reduce numbers of patents granted and increase overall densities.
• A potential method for preventing patent thickets would be to charge patent holders a renewal fee, though further research is needed.
• Additional data should be collected:
  • The authors suggest studying data relating to licensing and patent ownership in the US, Great Britain, and European patents and the secondary market would be useful, though they note that this data is currently unavailable.
  • Further work is needed to begin to understand how patents and products are linked before datasets could be created.