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McGuire Center for Entrepreneurship
The University of Arizona | Eller College of Management The University of Arizona Eller College of Management
Eller College Home > McGuire Center for Entrepreneurship > CRIE > Road Map > Auxiliary Patent Data
Commercialization Research on Innovation and Entrepreneurship


Auxiliary Patent Data

Anchoring to U.S. patent data, we envision augmenting the database with auxiliary secondary data. Below we outline some proposed priorities.

Proposed Priorities for Auxiliary Secondary Data

Patent Status (payment of maintenance fees)

How do we define a valuable1 patent or a worthless2 patent? In the literature, the status of a patent can be utilized in our research on innovation and entrepreneurship.

After a patent has been issued (granted), the firm has a responsibility to pay maintenance fees at 3½, 7½, and 11½ years. If these fees are not paid, the exclusionary rights of the patent technology become null and void.

The U.S Gazette reports the payment of fees, the late payment of fees, etc. Harvesting and organizing this data would allow us to create auxiliary data regarding the status of a active patent.

e.g., http://www.uspto.gov/offices/com/sol/og/2012/week21/TOC.htm#ref3

1. Allison, John R. and Lemley, Mark A. and Moore, Kimberly A. and Trunkey, Robert D. 2004. Valuable Patents. SSRN eLibrary: http://ssrn.com/paper=426020.

2. Moore, Kimberly A. 2005. Worthless Patents. Berkeley Technology Law Journal 20 pp. 1521—1552.

Patent ownership (transfer of title)

Optional and voluntary announcements of the transfer of ownership for a patent are available through the USPTO. Can we monitor this transfer of patents over time to understand the nature of the patent-exchange1 market?

1. Serrano, Carlos. 2010. The dynamics of the transfer and renewal of patents. The RAND Journal of Economics: 41(4), pp 686 - 708.

Legal data (e.g., validity / infringement cases)

Can we monitor patent activity in the courts? Can we collect auxiliary data regarding lawsuits, settlements, etc. using legal-related secondary data?

Can we monitor the evolution of the claim language as a patent is examined?

Financial data (e.g., 10-K reporting of revenues / losses)

Licensing data would be of utmost importance to understand the value of patent innovations. However, getting this data is a nontrivial task.

Publicly-traded firms have the fiduciary responsibility to report patent-related issues to their stakeholders. We can harvest and parse 10-K data regarding patent reporting.

e.g., Eastman Kodak

In 2010,

East Kodakman reports the following in its 10-K filing (mentioning patent 30 times):

It has been the Company's general practice to protect its investment in research and development and its freedom to use its inventions by obtaining patents. The ownership of these patents contributes to the Company's ability to provide leadership products and to generate revenue from licensing. The Company holds portfolios of patents in several areas important to its business, including digital cameras and image sensors; network photo sharing and fulfillment; flexographic and lithographic printing plates and systems; digital printing workflow and color management proofing systems; color and black-and-white electrophotographic printing systems; commercial, and consumer inkjet printers; inkjet inks and media; thermal dye transfer and dye sublimation printing systems; digital cinema; and color negative films, processing and papers. Each of these areas is important to existing and emerging business opportunities that bear directly on the Company's overall business performance.
The Company's major products are not dependent upon one single, material patent. Rather, the technologies that underlie the Company's products are supported by an aggregation of patents having various remaining lives and expiration dates. There is no individual patent expiration or group of patents expirations which are expected to have a material impact on the Company's results of operations.


On November 20, 2008, Research in Motion Ltd. and Research in Motion Corp. (collectively “RIM”) filed a declaratory judgment action against the Company in Federal District Court in the Northern District of Texas. The suit, Research in Motion Limited and Research in Motion Corporation v. Eastman Kodak Company, seeks to invalidate certain Company patents related to digital camera technology and software object linking, and seeks a determination that RIM handheld devices do not infringe such patents. On February 17, 2009, the Company filed its answer and counterclaims for infringement of each of these same patents. A Markman Hearing was held on March 23, 2010. The Court has not yet issued its Markman decision. The Court rescheduled to August 2011 a trial on merits which was originally scheduled for December 2010. The Company intends to vigorously defend itself.
On January 14, 2010 the Company filed a complaint with the International Trade Commission (ITC) against Apple Inc. and Research in Motion Limited (RIM) for infringement of patents related to digital camera technology. In the Matter of Certain Mobile Telephones and Wireless Communication Devices Featuring Digital Cameras and Components Thereof, the Company is seeking a limited exclusion order preventing importation of infringing devices including iPHONES and camera enabled BLACKBERRY devices. On February 16, 2010, the ITC ordered that an investigation be instituted to determine whether importation or sale of the accused Apple and RIM devices constitutes violation of the Tariff Act of 1930. A Markman Hearing was held in May 2010 and an initial determination was issued by the Administrative Law Judge in June 2010, which determination is being reviewed by the Commission. A hearing on the merits occurred in September 2010. In December 2010, as a result of a re-examination proceeding initiated by RIM and other parties, the U.S. Patent and Trademark Office affirmed the validity of the same patent claim at issue in the ITC investigation. On January 24, 2011, the Company received notice that the Administrative Law Judge (ALJ) had issued an initial determination recommending that the Commission find the patent claim at issue invalid and not infringed. The Company has petitioned the Commission to review the initial determination of the ALJ. A final determination by the Commission is expected by May 23, 2011.
On January 14, 2010 the Company filed two suits against Apple Inc. in the Federal District Court in the Western District of New York (Eastman Kodak Company v. Apple Inc.) claiming infringement of patents related to digital cameras and certain computer processes. The Company is seeking unspecified damages and other relief. The case related to digital cameras has been stayed pending the ITC action referenced above. On April 15, 2010, Apple Inc. filed a counterclaim against Kodak claiming infringement of patents related to digital cameras and all-in-one printers. The Company intends to vigorously defend itself.
On April 15, 2010, Apple Inc. filed a complaint in the ITC against Kodak asserting infringement of patents related to digital cameras. In the Matter of Certain Digital Imaging Devices and Related Software, Apple is seeking a limited exclusion order preventing importation of infringing devices. A hearing on the merits before an Administrative Law Judge was concluded on February 2, 2011 and an initial determination is expected by May 18, 2011. On April 15, 2010 Apple also filed in Federal District Court in the Northern District of California (Apple Inc. v. Eastman Kodak Company) a complaint asserting infringement of the same patents asserted in the ITC. The Company intends to vigorously defend itself.
On August 26, 2010, Apple filed a claim in California State Court (Santa Clara) claiming ownership of the Kodak patent asserted by Kodak against Apple in the ITC action referenced above. This action has been removed to Federal District Court in the Northern District of California. The Court has subsequently stayed this action. The Company intends to vigorously defend itself.

http://www.sec.gov/Archives/edgar/data/31235/000003123511000025/ek2010_10k.htm

In 2011,

East Kodakman reports the following in its 10-K filing (mentioning patent 63 times):

Included in revenues were non-recurring intellectual property licensing agreements. These licensing agreements contributed $82 million, $838 million, and $435 million to revenues in 2011, 2010, and 2009, respectively. In July 2011, the Company announced that it is exploring strategic alternatives, including a potential sale, related to its digital imaging patent portfolios. As this process proceeds, the Company will continue to pursue its patent licensing program as well as all litigation related to its digital imaging patents.


http://www.sec.gov/Archives/edgar/data/31235/000003123512000036/ek2011_10k.htm

Pharmaceuticals (FDA Approval Process — Orange Book)

Pharmaceuticals generally require at least two patents, a molecule and a formulation process. One product, such as Lipitor, can be worth as much as $12B per year in revenues. For this reason, understanding the stages of approval of a drug patent would enhance our ability to do innovation research.

Other data (ideas are welcome)

The success of CRIE will be dependent on its adoption by academics. Tell your friends. Create an account. Use the system. Provide feedback on what you like, what other data you would like to see, and how we can improve. Your feedback is essential for CRIE's success and ultimately better academic research using patent data.


For additional information, please contact us.

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