IAM: more than patents, beyond trade marks, way past IP.
Fresh thinking from Watermark.
Competitive Intelligence =
Competitive intelligence has entered a new age of
opportunity. In recent years it has received increased
attention and is now accepted as vital for developing and
maintaining a competitive edge in a rapidly changing
Core to this opportunity is the continuing growth of
online resources, enabling a level of information access
considered unthinkable only a few years ago.
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‘How much is my IP worth?’
It is reasonable for the holder of any IP to ask how much that IP is worth, and it is a
question that we are being asked more frequently. The question is particularly relevant
for entities whose value resides primarily in their IP, such as innovative and creative
start-up ventures, and small–to-medium enterprises (SMEs), which often have a
valuable IP asset portfolio yet own comparatively minimal tangible assets.
Start-ups and SMEs typically require one or more injections of capital before their IP
supports a commercially applied product or service. Unfortunately, they are often seen
as high risk ventures.
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Watermark is Australian owned and
a leading provider of Intellectual
Asset Management services.
Our services include: Patents, Trade
Marks and Designs, Intellectual
Property (IP) Commercial and
Litigation Legal Services, Research
& Development and Tax Incentive
Advisory and Business Information
and IP Analytical Services.
Watermark boasts a 153 year
history and employs over 110
Did you know we are nation wide?
Melbourne: +613 9819 1664
NEW SOUTH WALES
Sydney: +612 9888 6600
Perth: +618 9325 1900
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Evidence in Patent
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In this issue:
The Watermark Journal
Volume 31 Number 1
Please address correspondence to: The Editor, Watermark, PO Box 5093, Melbourne, VIC 3001, Telephone 613 9819 1664, Facsimile 613 9819 6010, Email firstname.lastname@example.org
Competitive Intelligence = Competitive Edge
Of equal significance is the rapid expansion of the type of
information available online. It is now possible to search,
organise and analyse scientific and technical publications,
patent publications and patent prosecution histories,
business news, commercial information and corporate and
government disclosures in an unprecedented manner.
How can competitive intelligence assist you?
While all of these information sources are important, for
many businesses developing an awareness of the patent
landscape can be invaluable. According to a study1 carried
out by the European Patent Office, approximately 80% of
scientific and technical information can only be found from
patent documents, making them a unique source of technical
information and competitor business strategy. Further,
publication of a patent document will often be the first
public disclosure of information on a particular development.
Clearly, competitive advantage may be obtained if patent
publications are monitored and analysed, so as to uncover
activities in a particular field and, vitally, to uncover them
Key outcomes from an awareness of patents
Identify competitors and partnering opportunities
Searching and analysing patent filings can identify obvious
competitors in a particular industry space. It can also
identify companies with similar technology or synergic
technology currently being used in other industries, which
may highlight potential partners or joint venture opportunities.
Gaps in a company’s patent filings may signify areas where
the company needs to licence or partner. Based on a
competitor’s granted patents you may also need a license
from them to commercialise your developments.
Determine importance of a technology to a competitor
If a patent application is filed in the name of a company
and in numerous countries, then the technology is likely
better funded and more important than an application filed
in the name of a single inventor and filed in a single country.
Further, the filing of additional patent applications in the
patent family or multiple related applications may point to
ongoing significant development efforts.
Continuous monitoring of newly published patent
Watching the development of your competitors’ technology
can identify changes over time in the focus and intensity
of patent filings and also identify new technologies and
future trends in the industry. As patents contain a wealth of
technical information, often such information can be utilised
in guiding your developments - of particular value early in a
Assess competitors’ development efforts and direction
Foreign patent family searches can indicate geographical
regions that a competitor is targeting. If these regions are
changing, this may indicate the level of importance of the
development or that the competitor is abandoning certain
Patent information may be combined with other information
released by a competitor to help identify its key focus areas.
Other information includes published technical papers,
technical conference presentations, corporate press
releases, announcements by management and regulatory
Invest for the future
While patent searching, patent landscaping and analysis
involves some financial outlay, it should be considered as
a sound business investment. According to the same EPO
study1, 30% of R&D investment is wasted on redeveloping
existing inventions – ‘reinventing the wheel’. One reason
for this is the lack of awareness that something had been
prior patented, often because the patent was the sole
vehicle of publication. Further, the technical information in
patents provides solutions to problems. Being informed
of these solutions soon after their publication may provide
information that can directly and immediately impact on your
Therefore, while competitive intelligence is partly an exercise
in due diligence, it is also an opportunity analysis. Most
companies can benefit from competitive patent intelligence,
whether it is focused on simply increasing awareness of
the global landscape in a particular industry or specifically
targeted to key competitors and their development
As part of our services, Watermark provides comprehensive
patent searching, patent landscaping and analysis services
to help clients develop their competitive edge through
By Dr Grant Jacobsen
Contact Grant: email@example.com
From page 1
The Watermark Journal
Volume 31 Number 1
is my IP
Australian investors are widely viewed as being more
conservative than their foreign equivalents, and so these
entities are often forced to source funding from overseas.
The consequence is that ownership of IP may transfer
Perhaps if investors could have more certainty and
confidence in the value of IP assets, risk may be mitigated,
promoting investment in local innovation. Similarly, knowing
the value of IP can better allow SMEs to make strategic
decisions around their IP. There is no shortage of IP valuation
methods available. Yet IP valuation is a tool that appears to
be rarely used in either of these decision making processes.
IP valuation methods, much like providing a legal opinion,
involve much exercise of judgement after scrutiny of facts.
There is a lack of uniformity and repeatability; no generally
accepted methodologies that can be consistently applied to
reach the same valuation. A further prohibitive factor is cost.
IP valuation rarely comes cheap and given the variability of
assessment methodologies, it can be seen as providing a
poor return on investment for many SMEs. Further, some
companies fail to place a value on IP simply because
intangibles sit uncomfortably, if at all, on the balance sheet of
a business. IP often barely rates a mention, despite the fact
that adding value of IP would add to the bottom line.
Practical ability to value and use IP as a tradable asset
is a concept that has been analysed in detail by a panel
of experts, at least in a European context, in the report
‘Intellectual Property Valuation’ recently published by the
European Commission. Interestingly, the report discusses
valuation of IP in raising finance, recognising that SME’s face
a different experience in securing funding to large corporates
with a strong trading history. The report recognises that
a solution is needed to ‘fund the commercialisation of
innovative ideas, with the value of the IP asset acting as
collateral.’ Overcoming barriers to lending against IP assets is
discussed as an attractive prospect – this is a concept which
would surely be of interest to local innovative start-ups and
SME’s whose value resides in intangible IP.
The report recommends a number of possible policy actions
at EU and/or national level to reduce barriers to efficient use
of IP valuation, including:
• establishing a data source containing anonymous
information on IP transactions to provide access to data
and comparable transactions to enhance the IP valuation
process and provide more accurate analyses;
• creating an organisation to oversee IP valuation practice
to provide uniformity about how valuations should be
approached and what skills and expertise valuers should
• introducing a risk sharing loan guarantee scheme for
banks to facilitate IP secured lending, allowing IP to be
used as collateral; and
• introducing an additional reporting section for IP in
financial reports to allow IP to be recognised and
measured in financial statements.
These are bold recommendations, yet if implemented,
could do much to dispel the image of IP valuation as a
mysterious dark art. Unfortunately, we are some time away
from this. Barriers to efficient, regular use, or even use at
all, of IP valuation, are likely to remain, particularly by startups
and SME’s in the Australian IP market. Presently, at
least from outward appearances, Australian policy-makers
arguably have more interest in digging holes (physically and
metaphorically) than in strategies to help finance and support
For now, IP holders seeking investment must work to
understand and explain their IP in a language that investors
will understand to convey the real value of the IP.
Watermark provides IP asset management services, and
can advise on the benefits and drawbacks of IP valuations.
Please contact us (firstname.lastname@example.org) if you have any
queries relating to IP valuation matters.
By Carol Kane
Contact Carol: email@example.com
From page 1
The Watermark Journal
Volume 31 Number 1
• Overseas version
In April 2013 the Raising the Bar legislation implemented
new regulations for patent opposition procedures, including
changes to deadlines and extensions of time for serving
Parties involved in oppositions need to ensure their actions
are diligent so that they meet the relevant deadlines or,
alternatively, have a basis on which to obtain an extension of
Under previous regulations, an extension of time was
available for serving evidence providing IP Australia was
‘reasonably satisfied’ that it was ‘appropriate in all the
circumstances’. In practice, the extension of time would be
allowed if the applicant demonstrated progress in evidence
preparation or that settlement negotiations were occurring.
Consequently, patent opposition proceedings became
protracted and could extend over a number of years.
Aiming to speed up the process, the new regulations allow:
• three months for the Opponent to file evidence in
• three months for the Applicant to file evidence in answer,
• two months for the Opponent to file evidence in reply.
In the event that any of these deadlines cannot be met, an
extension of time can only be obtained by the relevant party if
the Patent Office can answer ‘yes’ to the following questions
based on material provided in the extension application:
1. has the party (and their attorney or agent) made all
reasonable efforts to comply with all relevant filing
2. was the failure to file the evidence in time despite the
party (and their attorney or agent) acting promptly and
diligently at all times to ensure the evidence is filed in
3. were there exceptional circumstances that warrant the
IP Australia has now issued a number of decisions based on
the new regulations.
Extensions of time have been refused where:
• insufficient information about steps taken was provided1;
• the expert was on anticipated extended holiday leave2;
• no action was taken to prepare evidence while a
settlement proposal was being considered5.
Extensions of time have been granted where;
• settlement discussions have been occurring and are
close to resolution4;
• experts have been identified and subsequently been
found to be unsuitable or unexpectedly unavailable3.
Exceptional circumstances do not include:
• the attorney incorrectly assuming the evidence deadlines
were those applicable under the previous regulations5;
• a requirement to provide further and better particulars1;
• an attorney reading and understanding the new
• anticipated extended holiday leave or work
The Opponent and Applicant (and their attorneys) must
therefore work consistently and quickly to prepare and file
their evidence. Experts must be promptly engaged and
instructed, and their report(s) prepared and affidavits/statutory
declarations finalised in a timely fashion. If an extension of
time is required, full disclosure of all actions taken must be
provided. Reasonable efforts will be determined on a case
by case basis but do not include unexplained delay, delay
in engaging an expert, delay in engaging a further expert (if
required), delay in an expert providing evidence or delay in
provision of instructions to the legal representative.
If the patent applicant decides to amend the patent claims
during the opposition procedure this may lead to a stay in the
proceedings and should thus be considered as a strategic
option. Given the much stricter requirements now in force, it
is imperative that those involved in patent oppositions take
all necessary steps as early as possible to ensure deadlines
are met, or alternatively to ensure there is sufficient basis on
which to obtain an extension of time.
By Carolyn Harris
Contact Carolyn: firstname.lastname@example.org
1 Julie-Anne McCarthy and Bradley McCarthy v TRED Design Pty Ltd 
2 Merial Limited v Novartis AG  APO 65
3 RTI Pty Ltd v Scantech International Pty Ltd  APO 4
4 Innovia Security Pty Ltd v JDS Uniphase Corporation  APO 5
5 Fonterra Co-operative Group Limited v Meiji Dairies Corporation 
Serving evidence in an Australian
patent opposition? Be diligent…