Why is patent due diligence important for your organization?

Hewlett-Packard (HP), the information technology giant, bought Autonomy for $11.1 billion, in 2012. They wanted to move away from computer hardware to computer software and buying Autonomy seemed like the smartest move to make. Inaccurate income statements, balance sheets, cash flows, and footnotes were a part of the due diligence oversight. Within 14 months after the deal, HP sold Autonomy by writing down more than 80% of the purchase price. 

 

If HP had followed the due diligence practices that they regularly did, they shouldn’t have had to write down the value of their purchase. Organizations should be mindful of following due diligence if they don’t want a botched deal. 

 

What is patent due diligence?

The process of carefully analyzing a company’s patent portfolio is called patent due diligence. It audits the quantity and the quality of IP assets owned by or licensed to a company, business, or individual. The assessment also includes how intellectual property is captured and protected by the business. 

IP due diligence is usually performed by a prospective buyer in relation to the IP assets of the target company. It can also be carried out by a company on its own assets in preparation for a business sale or to close a licensing deal. It tells you whether you can monetize your patents through licensing, enforcement or divestment. 

It also helps you assess the infringement risks posed by competitors’ patents or the patents of another business. 

 

Why conduct IP due diligence?

IP assets have become one of the most important assets that businesses could own. Therefore, it is imperative for businesses to understand the following: 

  • The quantity and quality of the IPs with them so that 3rd parties can put a value on them 
  • To identify IP assets that are not being used currently and whose maintenance costs are being unnecessarily paid
  • To assess whether all the IP assets are adequately protected 
  • To ensure that you have all the necessary rights to your IP assets in order
  • To check whether a third party is infringing on your IP rights 

 

When should a patent due diligence be performed? 

 

  • After you receive a Cease and Desist Letter, or a Notice Letter:

A cease and desist letter or notice is usually sent as a warning to infringers about the existence of the patent rights to initiate licensing discussions, enforce their patent rights, or secure the opportunity to collect damages. 

Such letters claim that the accused infringer stop their infringing conduct immediately. If a company receives such letters, it should ensure that they have a strategy in place to respond properly and reduce its risks. 

They should note the depth of the infringement analysis (usually provided by the patent holder). It will have details about the patent expiry date, and applicable state statutes which talk about the consequences of acting in bad faith. 

 

  • During Mergers & Acquisitions:

During an M&A transaction, the following things are assessed, whether the seller’s patent portfolios include critical company technology to confirm if all fees have been paid and no ownership issues or chain of title defects exist. Following these steps will permit the parties to assign a monetary value to the portfolio. The analysis at this stage can also include assessing the patent infringement risks posed by third-party patents on the technology that is going to be acquired. 

 

  • During divestment, or licensing

Divestment and licensing strategies allow the patent owners to determine how their patents will be utilized. If their portfolio affords broad patent protection, then the value of the technology is high. Valuing patents can be performed in a number of techniques, both quantitative and qualitative. Qualitative analysis helps in determining the scope and strength of the patent rights. On the other hand, a quantitative analysis leverages these findings to assign a monetary value to those rights.

 

  • For contingency reasons:

Patent due diligence can also be done for contingency reasons. If you believe that you might be sued for infringement, and would like to have a deeper understanding of your patent portfolio and how it fares against your competitor’s, then it is wise to conduct patent due diligence. Let’s say you are planning to sue a company that is infringing on your patents, then it is wise to invest in conducting patent due diligence.

 

  • Before filing a patent application:

Patent due diligence is also performed before filing a patent application. They are performed to identify and assess prior art references.

 

How to Conduct IP due diligence. 

Conducting IP due diligence requires professional skills and has to be done thoroughly. IP due diligence should be performed during the initial stages of negotiations itself. By doing so, you will identify if there are any legal issues that affect the value of the IP. While every business transaction is different, there are a set of requirements that should be met when conducting IP due diligence. Here are a few of them. 

 

  • Identify IP assets: 

You need to find the patents, trademarks, brand names, domain names, and any other tangible and intangible assets of the company that you are investigating. 

 

  • Verify ownership and existence of IP: 

One of the first things that are usually investigated during an IP due diligence process is IP ownership. To establish and recognize the seller’s rights, a series of questions are asked about each of the IP assets that are being considered. The IP assets should be easily transferable and there should not be any disputes. If there are disputes, it becomes difficult for the seller to transfer the title and rights of the IP asset to other parties. 

 

  • Check for areas covered in the IP

When you’re validating each IP asset, it is imperative that you check for the countries where IP rights are covered. Therefore, you need to identify which of the territories are protected. If the business operates in multiple countries and has not secured their rights in all the areas where they operate, you might not be able to leverage the IP in those areas. Do remember that IP assets like copyrights and patents are only valid for a certain period of time. You need to study the local IP laws of each directory to check the validity.

 

  • Checking for third party claims:

Apart from identifying IP ownership, it is also wise to check if there are any third-party claims with respect to the seller’s IP assets. There are times when a third-party might have got rights to an IP asset unknowingly. You need to check all the license agreements, franchisee agreements, joint venture agreements, MOUs, and other contracts to ascertain that you will be receiving exclusive rights once you buy the IP assets from the seller. 

 

  • Evaluate potential IP infringements:  

You also need to ascertain whether a third party is infringing on the seller’s IP rights or if the seller’s IP rights are infringing on another company’s assets. In either of these cases, the disputes that arise from it will negatively affect your business. You have to mandatorily conduct a freedom-to-operate search to check whether the investor can make use or sell their IP assets without infringing on any third-party rights. 

 

An FTO search will give you deeper insights into patent rights and tell you if there are any other roadblocks that you need to be careful about. It’s the FTO searches that show any roadblocks. You need to take the necessary steps to overcome them.

 

Steps to conduct due diligence properly:

  1. Ensure that you have a proper IP due diligence team in place. Discuss with IP professionals to see what can be expected from the transactions.
  2. Come up with an IP due diligence checklist based on what is necessary. 
  3. Segment the IP assets of the target that is relevant for the transaction. Segregate IP rights or protectable intangible insights from those that are not relevant. The IP due diligence should show the importance of connecting such additional IP rights with the main IP rights for the transaction. 
  4. Find out the nitty-gritty when it comes to IP ownership. Ensure that you collect information on other IP rights that might pose an issue in the future. 
  5. It is important that the facts collected are also double-checked so that there is no discrepancy. 
  6. Analyze the protected and protectable IP rights. Check for the IP’s status, validity, ownership, claim, and conflict. 
  7. After conducting all the above, prepare the final due diligence report. It should highlight the risks that are a part of the strategies and ways to reduce the risks and the liabilities. 
  8. Document, execute, and record the IP agreements. 

 

Conclusion:

Conducting due diligence is a non-negotiable activity for businesses to mitigate the risks involved. It should be done no matter what your IP portfolio composition looks like. Having a proper due diligence strategy and following it rightly provides a world of benefits for all the stakeholders involved. 

If you are looking for an end-to-end IP services firm to help with patent due diligence, ResearchWire will be glad to help you with it. Get on a call with us to understand how we can assist with your IP needs.  

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Everything you wanted to know about Freedom To Operate search

Also known as infringement analysis or clearance search, the objective of freedom to operate search is to check if any product or process utilised is infringing on a live patent’s claim. If there is no due diligence, the chances of infringing on someone’s intellectual property is high. An effective FTO search is what you need to do to stay safe from the dangers of litigation. 

 

What is Freedom to Operate Search?

It is used to find out if there is the freedom to operate and invent in a particular jurisdiction from a legal view.  If an FTO is found to be negative, then the entity aiming to operate the invention should not proceed to go ahead with the invention. 

An FTO search is part of the due diligence that organizations should carry out before they apply for a patent. A patent clearance search is also conducted during various places in the innovation process so that there is a proper allocation of R&D resources. When you conduct a thorough FTO search, it demonstrates due diligence on your part if you were to be ever accused of IP infringement. 

 

When should an FTO search be conducted? 

It should be conducted as early in the product development cycle as possible. Doing so will help avoid unnecessary costs, reduce the allocation of wasted resources, show opportunities to license existing technology,  save time, and mitigate the risk of litigation. A good FTO patent search can also enable the inventor an opportunity to develop a design ground early. 

 

Questions to consider before an FTO search?

Here are some of the questions that you should ask to determine your FTO search strategy. 

 

  1. Which stage of the innovation process are you in?

During the R&D process, you should have completed the FTO search a number of times. Depending on which stage of the innovation you are in, the way you approach the search will be different. Why? Because the claims in the potentially risky patent might change by the time you are ready to launch your product in the market.

      2. What is the investment for your invention?

If there is a lot of money involved, you should be sure about your freedom to operate. Ensure that you conduct extensive searches. For technologies (read inventions) that will only give a modest ROI, your FTO search need not be intensive. 

      3. What is your risk tolerance?

If you do not have much idea about your freedom to operate, then you have to be tolerant of the risk associated. Even risk-tolerant organizations might not want the threat of an infringement suit hanging against their heads. You might want to invest in a thorough FTO search at multiple points during the product development phase. 

      4. Does your industry patent often? 

There are some industries that are a lot more crowded with prior arts than others. If yours is an industry that creates patents often, then it is imperative that you conduct in-depth FTO searches. You can start by searching your direct competitor’s patents, industry-wide patent searches and utilize a search tool that has semantic and Boolean search capabilities. 

      5. Does litigation happen often in your industry?

Industries such as electrical equipment, biotech, electronics, consumers, telecommunication, will see a lot of patent infringement cases. If your product belongs to any of the industries mentioned above, then you need to protect yourself from infringement suits by conducting patent clearance searches. 

     6. Where will you operate?

The type of search strategy that you should use will depend on where you want to launch your product. 

 

Best Practices for Conducting Effective FTO Searches:

 

  • Jurisdiction Coverage:

FTO search is performed based on the jurisdiction where the inventor or company is likely to launch the products. It is necessary to consider and cover all the channels related to a particular jurisdiction. Otherwise, the searcher might miss important patents. 

 

  • Date restriction: 

While performing an FTO search, date restriction is an important aspect. Usually, all the alive patents are considered. Some alive patents might fall outside the 20-year criteria, even if they are not from the below-mentioned industries. One more thing to keep in mind is the domain in which the search has been conducted. There are domains like veterinary, pharmaceuticals, food additives, medical devices, etc., where there is the concept of patent term extension. 

The patent term extension cannot exceed five years. The aim is to offer an extension for the time period when the patent holder is waiting for regulatory approvals. Therefore, it’s pivotal to vary the date restriction based on the domain you are searching.

 

  • Targeting important domain players: 

There are important players who have a huge portfolio of patents in each domain. You should concentrate your searching efforts carefully to evaluate their updated portfolio. It is important that a searcher evaluate the portfolio of their company’s competitors and ensure that all-important patents owned by the competitors are being searched thoroughly. 

 

  • Citation search:

The backward and forward citations of a patent are usually the closest results to that particular patent in the domain. After the analysis is done, it is considered a best practice to do the citation search of the shortlisted patents. It will help the searcher to identify patents that could have been missed during the FTO search. It could be missed because of factors such as missing classification, translation mistakes or a missing keyword.

 

  • Similarity Search: 

Many databases provide you with a feature called the similarity search and it is crucial for FTO searching. This feature helps searchers identify close prior arts which might have been missed otherwise. Since each relevant patent has a huge significance with respect to FTO, we advise not to miss standard searching steps so that you can capture all the patents that disclose similar inventions. 

 

  • Patent Segregation to prioritize efforts:

Dividing the patents into different sets based on their claim length and legal status can help with effective searching and analysis. 

Claim Length: Comprehensive claim analysis of the patent is required during FTO searches. The scope of the invention is defined by the length of the main independent claim. As a rule, the shorter claim length of the main independent claim, it has a broader coverage of the domain. There are many searching databases, which provide the main independent claim length as a feature. 

Legal Status: It is also possible to divide the patent result as per the family legal status.

of the patent family. When you’re launching a product, only active and granted patents can pose obstacles. Therefore, these patents need to be carefully searched. 

 

  • Keywords and Classifications:

By searching the patents and products in the domain, it is possible to identify the keywords and classifications. Observe the diversified keywords that are used to disclose the same invention. You also need to track classifications throughout the search process as it’ll help you gain insights as to which class includes most of the patents of interest. Iterate the old strings with the help of updated keywords so that no obvious buttons are missed while reporting the FTO search.

 

  • Report the findings:  

The findings need to be put in an easy-to-understand manner. Ensure that there are no communication gaps by structuring the findings in the report properly. 

 

Categorizing the results:

The results should be categorized to define different sets of results in an easy way. At ResearchWire, we use the following labels- High, Medium and Low Risk. The claims of the ‘Relevant’ patents can be quite broad and the product could appear to infringe the protected subject matter of these patents. The ‘Potentially relevant’ and the ‘Related’ categories are patents whose claims might include a few restrictive features. The product may or may not be infringing on the claims.

 

Report the patents in the decreasing order:

For FTO searches, it is best to report the patents in the decreasing order of their risk level. It reduces the time taken by the client to check the results quickly. 

 

Legal Status:

The legal status is dynamic in nature as it gets updated regularly by the patent office. The update is based on factors such as patent life, the status of the maintenance fee payment, disputes, etc. While preparing the reports, make sure that you check the legal status of all the relevant patents. 

 

Latest claims:

Since the FTO patent search is a claim-oriented search, the latest claims and pending applications are considered for analysis. To ensure the best quality, each claim of all the active and granted patents should be ratified with the National patent office websites. 

 

Conclusion:

There is immense potential to calculate the chances of infringement in advance through FTO analysis. A correct FTO analysis can not only measure the probability of avoiding patent infringement litigation, but can also provide you with new business opportunities by showing what is available in the technology that you’ve chosen. It also minimizes the risks of infringement of the rights of third parties. 

Are you looking for a partner to take care of your Intellectual Property needs? The team at ResearchWire is capable of handling any type of IP issue that your company might be facing. We are experienced at building custom solutions for your specific intellectual property needs.

Get in touch with us to understand how we can help you. 

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Introduction to Patent Blockchain

Blockchain is one of the most talked-about technologies in recent times, and rightly so. Its implications are incredible and has the ability to positively affect almost any industry you can possibly think of. From tracking the progress of goods in the supply chain to verifying the ownership of a piece of art, blockchain is here to stay. Undoubtedly, the world of intellectual property (IP) will see a ton of applications dedicated to it. 

In this article, we will learn about the various applications of blockchain in the IP world. 

 

What is Blockchain?

It is a secure and transparent digital ledger and its system of recording information makes it impossible to hack or cheat into. Each block in the chain contains transactions, and every time there is a new transaction in the blockchain, a record of it is added to every participant’s ledger. 

No one owns Blockchain. It is a distributed ledger through the nodes connected to the chain. Some of the biggest names in the business world, such as, Microsoft, Amazon, Tencent, Walmart, Alibaba, Samsung, PayPal, etc., have live blockchain operations. 

 

Blockchain’s relevance in the Intellectual Property world:

One of the most valuable assets is intellectual property, and given the pace at which businesses innovate, IP is the ultimate competitive advantage. According to US research firms, 84% of the S&P 500’s market value is incredibly difficult to manage, value, and transact. 

When the patents with blockchain claim first got mainstream in 2016, there were only three. As of November 2, 2021, the number grew to 2,660

 

Patentability of Blockchain-based technologies:

The number of patent applications that have the word ‘blockchain’ in it has increased, but that doesn’t necessarily reflect in the approval rates. It will take sometime before we know the rate of success of blockchain-related patents. Most of the blockchain patents are utility patents, they cover processes, features, and functions of technology. A utility patent protects the unique combination of components which go into running the application. 

 

Who are the leaders in Blockchain Patents? 

There has been a huge adoption of the blockchain technology by businesses of all sizes, especially in China. More than 10,000 blockchain-related patents have been filed with the China National Intellectual Property Administration (CNIPA). 

China accounts for 46% of the global patent applications filed in 2020 by leading 100 companies, while the US has around 24%. It is closely followed by Japan (8%), South Korea (7%), Germany (5%), Sweden and the UK (2% each). Alibaba holds the most granted blockchain patents at 212, while IBM has 136 patents. 

The number of patents that are filed in this field adds credibility to the potential of blockchain. Getting blockchain IP in many areas would be extremely beneficial for companies. 

 

Blockchain applications in the IP world:

Thanks to its security, accountability, low maintenance cost, and the impossible-to-hack nature of blockchain, you can safely assume that it will have a number of applications in the IP world. Let us look at a few blockchain applications in the Intellectual Property field. 

 

  • Smart contracts:

A smart contract is a program stored on a blockchain which runs when predefined conditions are met. Since blockchains can execute contractual codes, it could be a game-changer for digital rights management and other IP transactions. Smart contracts can be used to enforce IP agreements like licenses, and ensure that payments happen in real-time, to IP owners. 

The camera brand Kodak, recently launched a blockchain-based image rights management platform, and is aimed at servicing businesses and governments to store and manage sensitive documents. 

 

  • Supply Chain Management:

Since blockchain has the ability to track goods, it could help brands enforce contractual terms with respect to distribution. It will also be able to check for anomalies in the distribution system and even identify if there is any untoward activity that happens in the background. By tracking product distribution, regulatory requirements can also be met. 

 

  • Act as IP registry:

They can also be used as a technology-based IP registry where IP owners could use digital certificates of their IP. Inventors can use the blockchain platform to collect royalties from those who are using their IP. One of the biggest issues with patent filing and application is that it takes up a lot of time for approvals. For businesses that are looking to gain by being the first at something, this can hamper their ability to not only protect their innovation, but also stops them from taking full advantage of the IP. 

 

  • Evidence of ownership:

Since blockchain can provide proof of conception, use, qualification requirements, and status, it can play a huge role with respect to unregistered IP rights. When an inventor uploads the original design or at least the details of the work to a blockchain, it will create a time-stamped record and will act as a valid proof of the ownership. Many blockchain-based startups are already working on distributed ledger technology-based repositories. It will be a great application for both copyright protection and digital rights management. 

 

  • Maintaining version control of digital assets:

The average patent or copyrights would have had multiple versions over the course of their lifetime and there is a pressing need to link these different versions. Blockchain can be used in such a scenario where all the versions of the digital assets can be linked using the ledger technology. It can be used for managing the digital asset’s entire lifecycle. 

 

  • Anti-counterfeiting: 

The ability to identify an original one from a fake is possible because of the blockchain ledger that cannot be compromised. Everyone in the supply chain would be able to validate the genuinity of the product- customers, custom authorities, vendors, etc. 

Since blockchain ledgers hold IP rights information, it can also be used as a certificate of provenance. Provenance is the document which validates an authentic art piece as it outlines the work’s creator, history and appraisal value. The blockchain ledger holds information about the product’s manufacturing process, when and where they are made, raw material’s sources, etc. Such solutions are gaining fast acceptance among businesses, consumers, and insurance companies. 

 

  • Micro-licensing:

Blockchain can also be used for the management of access authorization and for the grant of licenses. Access will be granted to digital content only if the payment has been validated in the blockchain. Also, when it comes to licensing, blockchain can track who all have been granted licenses, and also ensure that the royalties are paid on time. 

 

  • R&D agreements:

 If there are two parties collaborating with each other’s IP, then they can license their existing IP to each other to create a new IPR. Allocating ownership of the new IP can be handled through the blockchain solution. Milestone-based payments could also be made to the parties based on how far they have come in the project. 

 

  • IP Marketplace:

Since blockchain utilizes the distributed ledger technology, it has the ability to record, share, and synchronize transactions in their respective electronic ledgers. Blockchain can potentially be used as a platform where inventors can store their information in the form of ledgers with a note describing their invention. It can act as an IP marketplace where potential licensees will get to know about inventions and the patent holders/inventors. 

 

  •  For information sharing of IPR related data:

The ledger technology that blockchain uses can change the way IPR-related information is shared. By using this way of sharing information, you will not be compromising on the transparency, security, and other regulatory frameworks. IPR is one area where information sharing has to be sacrosanct and not everyone can have access to it. 

 

  • Unifying global patent system:

Unifying the patent system across the world is one use case that the ledger technology of blockchain can surely solve. It can solve the speed at which applications filed are processed, fastens the innovation process, and provides a more evolved information-sharing process. A few patent offices have even started accepting blockchain as proof of evidence under electronic evidence. 

 

  • Collaboration between IP offices:

Since blockchain has the feature to track all activities, it will be extremely useful when collaborations between different IP offices happen during prosecution of IP applications. Information sharing with World Intellectual Property Offices (WIPO) will also be easier if data is maintained using blockchain technology. 

 

  •  MSMEs can use IP judiciously:

When information regarding IP rights is made available on the blockchain, it will help small and medium businesses to invest their resources without having to infringe on others rights. They will also be able to use technologies whose IP rights have expired. While this is possible even now, they will need to invest in a lot of resources, both monetary and time, to identify if they are infringing on someone else’s IP. 

 

  • Settle IP disputes:

If all IP data is made available on the blockchain, then it will be easier to sort out IP related issues. It will be easy to gauge the genuineness of IP rights and even the law enforcement agencies will find it pretty simple to solve these cases not only in the right manner, but also expedite them. 

 

Conclusion:

If you are using blockchain-backed technologies as a part of your intellectual property endeavours, then you are best advised to file your patent application as quickly as possible. By doing so, your innovation will be protected. The first few use cases of blockchain have shown a lot of promise, but we would need to research further to understand the full potential of blockchain, and also consider the legal challenges that will come up. 

Schedule a consultation call with one of our IP experts to check if you can patent your blockchain-driven innovation. ResearchWire’s experts are well-versed with the nuances of laws pertaining to IP as well as blockchain, and would be able to offer you the right solution.

 

write to: query@researchwire.in

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How to Identify Prior Art?

The objective of Prior Art is to find out if the invention presented is unique or not. Prior Art is evidence that your invention is already an idea that another inventor in some part of the world has considered and worked upon. It can be found out in many forms, from a video to a research paper, you could find evidence of your invention. The only caveat with prior art is that it could invalidate a patent only if it has been already available to the public before the effective filing date of the patent. 

 

Information that has been kept secret from the public, such as a trade secret, cannot be considered prior art. Prior art should be available to the public in some format or the other. In fact, there are many countries which require that such information be recorded in a fixed form. 

 

Importance of Prior Art searches:

 

  1. It helps you determine whether an invention is novel or not. 
  2. Doing a prior art search helps you develop a strong patent claim strategy before you file a patent application for your invention. 
  3. When done right, you can reduce your R&D costs significantly. 
  4. Helps you get updated with the latest technological trends.
  5. Puts you in a position where you can plan new products.
  6. You will be in a better position to explain your invention to a patent attorney after doing prior art search.
  7. Avoid submitting patent applications for inventions which have high chances of getting rejected. 
  8. Helps find the legal status of patent applications. 
  9. May help speed up your patent prosecution. 
  10. Find out newer markets for commercializing your invention 

 

When to invest in a Prior Art search?

 

Conducting prior art searches should be out of your purview if the exercise is not proportional to the value of the invention. If the patent application you are filing is only for branding purposes, and you do not have any intentions to prosecute, then you don’t have to invest in prior art search. 

 

On the other hand, if getting the patent approved means a lot to your company, economically and otherwise, then a prior art search is something that you should surely invest in. The decision to invest in a prior art search should entirely depend on your IP strategy and business goals. 

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Types of prior art searches:

Let us look at the different types of prior art searches, each of which have different objectives and are performed at different stages of the application process. 

 

Novelty search:

This type of prior art search is often conducted by patent attorneys, agents, or patent searchers before the inventor even files a patent application. Novelty search determines if the invention is novel even before the inventor gathers the resources necessary to obtain a patent. 

 

Validity search:

It is a type of prior art search which is done after a patent is issued. The objective of an invalidity search is to find prior art that the patent examiner might have missed out on. It is usually done by the party which has a financial stake in the patent so that they could determine the validity of the patent. 

 

Clearance search:

It searches the issued patents to see if the product or process of an invention violates someone else’s patent. Clearance search is usually limited to a particular country, a set of countries or a market. 

 

How to conduct an effective Prior Art search?

A prior art search involves poring through different databases to see if someone has already worked on an idea similar to yours. Here are the steps that you need to do for an effective prior art search. 

 

#1 Search for keywords used to describe your invention:

The first step towards doing an effective prior art search is to identify all combinations of keywords for describing your innovation. There are times when unique keywords might be used to describe an innovation. It might be difficult to find relevant patents at times as there could be jargons used in a specific industry or they might be translations from other languages to English. 

 

#2 Patent databases:

Even a standard search on Google is considered a good place to start from. Let us look at some of the other databases which will help you to see if there is prior art for your invention. 

 

  1. Search Google patents.
  2. Search the Espacenet EU patent and patent application database of the European patent office.
  3. Search the World Intellectual Property Organization database which is called PATENTSCOPE application database.
  4. Search the USPTO office database.
  5. Search the patent application database of the Canadian Intellectual Property Office
  6. Patent Lens– it has more than 225+ million scholarly works, 127+ million global patent records, and 370+ million patent sequences

 

#3 Go beyond patent databases:

Do remember that prior art is not only limited to existing patents or patent applications, but for everything that is publicly available in any format. That’s exactly why your search should not be just limited to patent databases. Here are the other places where you should continue your search:

 

  1. Google Scholar search for scholarly publications
  2. Non-patent literature like publications, journals, articles, etc.
  3. Search for products on sites like eBay, Amazon, Craigslist, etc.
  4. Product pages of competitors who are working in the same niche. 
  5. The Internet Archive Wayback Machine is also recognized as a valid source for finding prior art. 

 

#4 Save related documents:

When you are about to file your patent application, make sure you mention the most relevant prior art. There are chances that you might end up with a stronger patent application if the patent examiner has all the relevant references with them. Not only that, you are also ethically bound to report prior art if you find anything. Save the prior art related documents and keep one for yourself while handing them over along with your patent application.

#5 Stop searching:

The objective of prior art search is not to find out every single document that is available on this planet. But, it is to do a comprehensive search so that you don’t miss out on an invention that is already available. 

 

Even if a relevant prior art is there, it might not necessarily show up in most searches. For example, a patent document written in a foreign language might be impossible to access as you will not find the relevant keywords no matter what kind of combinations you use. Once you know that you have invested ample amount of time in it, you should call off the search. 

 

Things to keep in mind while doing prior art search:

 

  1. Many of the patent databases of different countries might not necessarily be published in English.
  2. When you want to find prior art for your invention, make sure you also look for prior art which is related to various aspects of the invention. 
  3. You will be infringing on a patent only when all the parts of the claim are present. 

 

Conclusion:

Thanks to the internet and the classification systems present in most IP offices across the world, doing prior art search by yourself is entirely possible. Performing prior art searches before filing your patent application is a crucial step towards protecting your patent. You will be able to find relevant patent and non-patent literature which can help you figure out if your invention is worth the hassle of patenting. 

Researchwire’s Prior Art Search services will help you find prior art, if there is any, and you can be assured of getting a comprehensive report at the end of the exercise. While you can do prior art search by yourself to an extent, it pays to put it in the hands of experts. It might also not be the best use of your time if you do not have previous experience in finding prior art, or the necessary skill set to do it effectively. 

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8 Ways to Monetize your Intellectual Property

Isn’t that something a lot of businesses are struggling with?

Here is how you can make money from your IP:

#1 Selling patent portfolio:

Doing this can also make you money. If you are looking for cash, selling your patent portfolio is one of the best options. You need to calculate the value of your patents before trying to sell it. Microsoft bought 800 patents from AOL for $1.1 billion in 2012.

 

#2 Co-development:

Get into a partnership with a company that might be interested in the creation of the IP. You need to discuss the scope of the partnership, sub-licensing and subcontracting rights, royalty rates, etc. It is great to distribute risks and use each other’s resources when you don’t have the required arsenal on your side.

 

#3 Licensing:

There are businesses that license their intellectual property assets in non-competing industries to retain their market advantage. Licensing agreements between competitors also spell goodness for everyone involved. The IP owner retains control and the licensor gets to use the IP by paying a royalty.

 

#4 Creating new products:

The most obvious solution to making your patent a cash cow is to create innovative products using them. Find out the opportunities that exist in your market & see if your patent can be used to make such products.

 

#5 In-licensing:

Licensing third-party patents to create commercial products is one way you can earn money. You can find patents that serve a different industry and apply them in your market.

 

#6 Spin-out:

In this, marginally used IP is moved to a different company. Sometimes new companies are established just to use the IP.  Why?  A new company might be able to use the IP effectively. It may also lead to new investments.

 

#7 Securitization:

IP assets like trademarks, patents, etc. have always commanded the respect of investors. Like any form of property, IP assets can be used as collateral.

 

#8 Sale-Leaseback:

If you are looking for cash and are planning to sell your IP, although you still want to use it, then get into a sale-leaseback arrangement.

With all that said, you need to have a broad strategy with short and long-term goals that will give you a sense of direction. Connect with us to discuss options for monetizing or registering your intellectual property.

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6 Legal mistakes that start-ups usually do

When you are starting a company, you need to be extremely cautious about legal mistakes that you might end up doing unintentionally.

The following are some of the most common legal mistakes that start-ups make:

Mistake #1: Not taking the help of professionals. You might scrimp on a few thousand dollars by using a contract available online. This can spell death for your business depending on which part of the contract you messed up.

You need to use agreements for contractors, employees, suppliers, etc., with the help of professionals.

Mistake #2: Starting your project when employed at another place. A lot of companies have agreements which say that all the products developed during the employee’s time in the company belongs to them.

Imagine working on a project so close to your heart only to hear this soul crushing news!

You need to read your employment agreement and disclose your personal projects so that you can gain full ownership.

Mistake #3: Co-founders split up when you least expect it. So when they leave the company, aren’t they taking away the shared IP with them too?

Not failing to incorporate can bite you in the back. Incorporate your business so that you don’t risk your personal assets. Choose the correct business entity as each of them have different implications.

Sign agreements with your employees, contractors or freelancers you work with. Clearly lay out their responsibilities, rights, obligations, etc.

Mistake #4: Not having a written record of the agreement where each of the parties sign it with full consent. Not only does an agreement ensure that everyone is on the same page, but it also helps you save from being part of a long-drawn legal battle.

Mistake #5: Not protecting your intellectual property.

If you have developed a unique product, technology, or service, you need to consider the appropriate steps to protect the intellectual property you have developed.

Here is how you can protect intellectual property:

  1. File for patent, trademark or copyright. Secure that for your company.
  2. Sign Non-Disclosure Agreements. It restricts the use & disclosure of protected information. NDAs can be enforced legally if someone breaches it, accidentally or otherwise.
  3. Invention Disclosure Records- It’s used to document company-related inventions.
  4. Conduct security audits on a regular basis .
  5. Make your employees understand what is sensitive information & how to protect it.
  6. Use Data Loss Prevention (DLP) tools like Teramind, SecureTrust, Digital Guardian Endpoint, etc.
  7. Hire the services of an IP firm if you have strong reasons to believe that you have to guard IP assets through patents.

Mistake #6: Not getting the name of your start-up cleared before launching it.

Launching your start-up is an exciting time for the founders. However, you must be cautious about each of the steps that you take so you don’t regret later.

#Conclusion: Making these mistakes can put your company at risk

Start-ups have a lot to think about as they begin. Legal issues are often low on the list of priorities, but a little bit of legal foresight can help prevent costly problems down the road. Invest in building your company on the right legal and financial foundation by connecting with Researchwire.

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IP Best Practices in the time of Covid-19

IP Best Practices in the time of Covid-19

 2.8 million. 

That’s the number of patent applications that were filed at the IP5 offices (IP5 is the name given to a forum of the five largest IP offices in the world) in 2020. Also, 1.3 million patents were granted by the IP5 offices in the same year. The year 2020 has been unprecedented because of a strain of virus called Covid-19 that has wreaked havoc across the world. 

The world of IP has faced major setbacks during these turbulent times. Covid-19 has affected almost every industry that you can possibly think of, and businesses need to have a trick or two up its sleeve to make things right, or at least get back to normal. Even having to operate majorly in an online-only tech-based environment has put pressure in the existing systems, and on the people running it. It has been more than a year since the term Coronavirus has become a mainstay in our lives, but the repercussions from it are far from over. Also, the virus is still there. 

 

Below are some of the best IP practices that businesses can follow during Covid:

 

#1 Review your IP inventory:

Make a note of all your patent, trademark, copyright registrations, pending applications, and any renewals and deadlines. Write down all the confidential information that gives your company a competitive advantage. 

Here is what you need to do:

  1. Write in detail about the confidential information in a separate file
  2. Name the stakeholders who have access to it and how they can access it.
  3. List out the measures that you have taken to keep the information confidential.
  4. Ensure that you are in a position to meet any renewals or deadlines
  5. Do check for any royalty agreements and see if the payments are being made on time. 

Once you do all the above, you will know where and how your assets are parked. It will allow you to take immediate actions if necessary. 

 

#2 Be up to date with the happenings in the world:

The pandemic has affected the day-to-day operations of patent offices across the world. While some of them are in a complete state of lockdown, others have adopted a hybrid structure with respect to filings, physical hearings, procedural compliances, and so on. 

Businesses that are looking to file their trademark or patent application internationally should consult with their IP firm to get apprised of the various rules that are being followed this time. World Trademark Review that constantly updates the measures taken by IP offices during this time. 

 

#3 Evaluate your product strategy:

There is no doubt that the pandemic would have caused a seismic change in how consumers behave. Everything from their buying process to even reviewing and searching patterns will change. Find out the changes in user behavior with the help of user surveys, focus group discussions, face-to-face interviews, 3rd party agencies, and so on. 

Analyze the results to find out which are the products in demand. Build these products with the end consumer in mind. Make sure that the products are created with innovation and diligence at its core so that even the consumers are able to emotionally connect with it. 

 

#4 Leverage international filing protocols:

Agreements such as the Madrid Protocol and the Patent Cooperation Treaty (PCT) have made it possible to streamline IP filing and search procedures, thanks to making the information available in a centralized database. Thanks to the Patent Cooperation Treaty, major expenses can be deferred for international filings, not to mention the time that is saved in going after this. 

 

#5 Keep strategically investing in IP:

The new normal doesn’t mean that one should go entirely on the defensive and not engage in innovation at all. In fact, innovation is at the core of adapting to the new normal. Businesses should make use of technologies like automation, machine learning, internet of things, etc. to reduce the Go-To-Market time and monetize the product. It is also wise to assess your existing protocols to look for IP that has untapped potential. 

 

Despite the challenges that all of us are witnessing at this moment, one can safely assume that there will always be opportunities. If you don’t look out for them actively, it will not be possible to seize them. The opportunities will not only be limited to finding new areas to innovate, it could also be about acquiring IP from a competing firm that is looking to pivot or monetize their portfolios or finding a means to improve the strength of your present portfolio. If you keep looking hard enough, you will eventually stumble upon something worth the pursuit. 

 

#6 Manage your legal spending wisely:

Having good counsel or an IP firm to help you out immensely, especially during these troubled times, is a wise strategy to indulge in. You can let go of assets that are not important to the company anymore. 

By choosing to let go of IP assets that are no longer valuable, you will enjoy the following:

  1. Won’t have to spend time in extending the validity of the patent.
  2. Avoid paying maintenance costs.
  3. Avoid paying fines for forgetting to comply with regulations.

Do not hesitate to hire an IP firm assuming that it would increase your costs, they will be able to offer you the best advice that will help you capitalize on your existing IP while minimizing your risk. The IP firm might even find ways to increase your revenue through the IP assets you have. 

 

#7 File single-class trademark applications:

Businesses should make it a point to register their brands or marks which are not too descriptive in nature around the world, especially in areas where you plan to expand. You can file single class applications as it will reduce the filing and registration maintenance fees. When there are multiple classes in your application, the higher is the risk of an opposition. On top of that, single class applications are easier and faster to register, and less expensive. 

 

#8 Protect your copyright/design:

The reason why we would like to specifically insist on protecting your copyright and design is because most businesses view it as an extra expenditure. The truth is that these forms of IP can be used to protect innovation. Make sure that the agreements and compliances are in order and updated. 

 

#9 Be investor ready:

Even if you are not expecting a windfall in terms of investors knocking on your doors, you need to be prepared for such a situation. Businesses should proactively take steps to protect and safeguard their IP. It offers an assurance to the prospective investor that you have lucrative IP assets.

 

Wrapping it up:

During these uncertain times, businesses should strategically look at all their options. There is no room for any uncertainty or not having a plan in place. They should protect their IP at all costs by filing and enforcing their IP rights, plan effectively, use the right legal tools, hire an experienced IP firm, and so on. 

The immediate future will bring us ample opportunities. Businesses which have a deep understanding of its IP assets and follow the best practices for protecting and managing its assets will be able to rise to the challenges posed by this pandemic and come out a winner. 

When you have a strong IP firm providing you sound advice, you will be in a good position to tackle this Black Swan called Covid-19. By taking their advice, you can effectively balance your IP portfolio and wade through this uncertainty with little to zero troubles to your brand or IP. 

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Whitespace analysis: A smart step towards research, innovation and securing patent rights

Whitespace analysis: A smart step towards research, innovation and securing patent rights

How to find whitespaces

Recently during a client discussion about White space analysis where it was pointed that in his technology domain, not many companies file for the patents. Therefore, it is inaccurate to find whitespaces just by analyzing patent data set.

So, the question was, what could be the smart way to find whitespaces in such cases.

Before jumping straight to the answer, let’s look at what the whitespace analysis actually is and how is it important for any company or organization to capture the market ahead of their competitors.

Whitespace analysis helps to identify overcrowded and sparse areas in a technology domain. It helps in identifying new opportunities for innovation in less competitive areas.

How to go about the whitespace analysis         

For any whitespace analysis, a scope is defined in terms of what is expected from the whitespace analysis. For e.g. whitespaces can be identified in terms of

Technology,

Applications,

Material, etc.

Similarly, many other parameters can be selected. After the scope is defined, relevant patents are identified using combination of keywords and classes. All the patents are analyzed then according to parameters defined. Patent classification is done according to different methods. Generally, after the classification is done, the areas with a smaller number of patent filings are considered as whitespaces.

But this approach may not give a full-proof idea about the whitespaces due to many reasons

  1. It is not necessary that company files for patent in a particular technology domain
  2. It may happen that technology is old enough and therefore the patents could not be captured into the dataset due to date restriction.

Therefore, a 360-degree analysis is needed to shortlist the whitespaces. Apart from the patents, it is important to look into the Non-patent literature which includes both the research papers and products available in the market for the related technology domain.

To answer the client’s question, we suggested that Whitespaces can’t be decided on the basis of the number of filed patents only. The inclusion of other literature is also necessary such as existing products, research work, etc. in the technology domain.

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