Recently, one of our clients (A partner at a big US law firm) wanted us to identify a couple of potentially high-value patents from his list of 1800 patents. We inputted 1800 US patents into the BOS tool and picked the top 20 patents for further quick manual review. During the manual review, we got good leads for 2 patents. Out of which, 1 was selected by the client for detailed analysis. Later, we went onto creating 6 claim charts for that selected patent. Also, we got a full-fledged project to further mine this 1800 patent list. Yay!

BOS provides a list of companies that were trying to patent concepts similar to what we’re already patented by the input patents. The examiner used input patents to cite 102/103 rejections for patent applications filed by these companies. So, chances are these companies may be potential targets whose products can be reviewed in detail. Also, these companies may be interested in acquiring the input patents as they were working on trying to patent similar tech concepts.

Also, for some patent portfolios, there are some encumbrances (blacklisted companies). For that, the client asks for a list of companies. This list is quite handy to be shared with the client initially and get a quick heads up on which companies are whitelisted/blacklisted.

Example 1 – In one of the projects where we had to create charts against big companies. We needed to know what big companies are already blacklisted. The client asked us to send a list and I will check with my end client. Generally, this list can be obtained after we do a certain amount of analysis. So, how to get this list. We used BOS to get a list of tentative targets. Shared it with the client. And got a quick answer on excluding two of the listed companies. This helped us not spend efforts in the wrong direction without even starting the project.

Example 2 – we created a similar list using BOS and shared it with the client for his inputs if any of these companies are blacklisted. Based on that we quickly got an answer to exclude two of the listed companies.

Please note – this is not an exhaustive list of potential targets. This list along with some manual add-ons like competitors of companies already highlighted by BOS, major companies in the domain, etc. would provide the exhaustive list.

Recently, in some of the patent litigation complaints, we observed that the attorneys are using citation data as an indication that a company was well aware of the patent and continued to use the patented tech. Now, the companies listed by BOS also come under similar logic. In fact, a stronger logic. As it indicates a list of companies that filed patent applications similar to your patent and your patent was used by the examiner to provide 102/103 rejections to these companies’ patents applications. So, if overlap is confirmed with company (indicated by BOS), such arguments can be used for getting higher damages or faster conversion of licensing deals.

Example – We were developing infringement contention charts for one of our clients (a US patent attorney) against (a big name in cloud services). During this engagement, we indicated that USXXXX659B2 was used to provide multiple 102/103 rejections to certain patent applications filed by company X. This info was used by our client in the complaint document to argue that Company X was already aware of the 659 patent, they continued to use the patented tech in their products wilfully and should be liable for higher damages.

Example – One of our clients (Patent Licensing Specialist) wanted to identify small clusters of patents from a big portfolio (~2500) that can be used to target company X, and Y. We used BOS to identify patents from the cluster that had been used to provide rejections to patent applications filed by Company X and Z. In this way, we were able to get a prioritized list of patents from that big set that can be further analyzed in detail to create a licensing offering to companies X and Y respectively.

Example – One of our clients (a big US company X) wanted to identify if there are patents that can be of threat to them. We used BOS to identify granted patents that had been used to provide rejections to patent applications filed by Company X (including which lead to the abandonment of certain patent applications filed by company X). Further, we categorized these patents based on whether they were currently assigned to NPEs or competing companies of X. And used the past litigation activity of these NPEs and competing companies to show the patents which could be of potential litigation threats to company X.

Example – One of our clients (a patent broker) wanted to buy patents (~500) from a big portfolio (~1500). He had less time at hand to complete the deal. So, we could not use the manual approach of analyzing the patents one-by-one. We used BOS to identify patents-on-sale that had been used to provide rejections to patent applications from big companies. And removed the companies that were already blacklisted/licensed/had encumbrances. Based on this analysis, we removed certain patents that were very good in terms of market value but had the major companies in that domain blacklisted. In this way, we got an idea as to which patent could be a potential gem patent fast. 

Example – One of our clients (a big multinational company) wanted to buy patents (~10) from a big portfolio (~1500) that targeted company X. We used BOS to identify patents-on-sale that had been used to provide rejections to patent applications filed by Company X. In this way, we were able to get a prioritised list of patents-on-sale from that big set to be analysed in detail.

Example – One of our clients (a big multinational company) wanted to know which of their competitors are filing patents similar to theirs. We inputted their patents into BOS and identified companies whose patents were rejected by the examiner using the inputted patents. In this way, we were able to get a list of companies that were filing patents in tech domains where our client’s company had patented. Also, it indicated which of clients’ patents are IMP and can be used for negotiation discussion with those competitors, if required.