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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Patent Selling Strategies For Business

Just by owning a patent the inventor cannot generate dough. After turning your idea into a commercial product, there are certain things that you should do to make money from it. A patent, as is, will not do that for you. 

Here’s the hard truth. There are thousands of inventions that get patented every year. Do all of them make money? No. In fact, only a few of them generate profits. 

In this article, we are going to learn about a few patent selling strategies for businesses. 

 

  • Offer non-core patents to others:

Businesses that have a huge patent portfolio can sell off some of their patents to other companies. The only caveat is that the ones it plans to sell should not be key to its business. One of the main reasons why companies often do this is because they have to pay maintenance fees on patents over their 20-year lifespan. Companies that have thousands of patents might find it a wise idea to sell off those that aren’t making them money or if it doesn’t align with their goals. 

In one of its sales pitches to startups, IBM offered a variety of data analytics patents at $37,000 per patent. The technology giant holds more than 38,541 patents, and tops the list for companies that have the most number of patents in the US. 

 

  • Remove low-quality patents:

By removing low-quality patents, you will not only increase the value of your patent portfolio, you will also weed out patents that do not bring any value. How do you go about doing this? Companies should analyse their entire patent portfolio. Find out which are the patents that are of low-quality. Once you take a note of all the low-quality ones, decide which ones can be sold off without affecting your bottom line. 

If the company can find a chunk of low-quality patents, then it is better to sell it off as you are only going to spend on its maintenance fee. It is even worse if the patent doesn’t even give your business any form of protection from competitors. 

There are high chances that some patents which are related to old technologies have now become useless to the organization. They can be sold to startups that are still working in the same domain and might be able to find some uses with it. 

 

  • Outright patent sale:

When you sell a patent, you will get immediate payoff. But the question is at which stage is the patent being sold off. If the inventor has not built a commercially viable product yet, the sale might not fetch a lot of money. By selling it when there is no product yet, the inventor claims to give up the rights from future profits.

On the other hand, if the product has been in the market for a long time and is also popular amongst its customers, then it can be sold off at a substantial price. Deciding on when to sell the patent is the discretion of the inventor or the organization, based on the future goals and necessity for money. 

 

  • Licensing the rights:

Offering another entity the rights to make, use or sell your product is called licensing. It is one of the most profitable routes for most inventors or organizations that hold patents. The inventor not only retains the ownership of the patent, but also earns payments on each sale of the product made by the licensee. 

The best part about licensing the rights is that you can grant it to more than one company. If you sell the licensing rights to a big company, it will also increase the perceived value of your patent. The only downside to licensing is that there are no guarantees of financial riches. Your royalty checks will stop if the sales stop. You will get anywhere between 5 and 25 percent in terms of royalties from the sale of each product. 

Another headache with licensing is that you might have to face legal headaches. Ensure that you do due diligence before signing on someone as a licensee for your invention. 

 

  • Publicize your patent:

The good old method of using traditional marketing techniques still holds value in the patent industry. You can spread the word in trade publications and investors’ magazines to grab the attention of potential buyers. Patent offices will have a section which allows inventors to advertise their products for a fee. 

 

  • Patent marketplaces:

There are many marketplaces where you can sell off your patents by advertising on these platforms. While some of them are free, many of them do charge a fee. Marketplaces are online platforms where one can buy and sell patents. 

  • IP Marketplace, Inventorhaus Inc, PCTXS.com are some free platforms. 
  • IAM Market, Yet2.com, IPNexus.com, and IdeaConnection are some of the paid platforms. 

 

  • Find brokers:

In this field, you will find brokers who will spread the word about your invention to those who might be potentially interested. In lieu of this service, the broker gets paid in the form of royalties or a percentage of the sale. Before you hire the services of these brokers, ensure that they are reputed businesses. 

 

  • Sell patents that are in the right niche:

If you have a patent that is in a niche which is considered popular, it is the right time to sell it. When you hold a patent in an area where there is a lot of innovation happening or are making the right noises, you will find a lot of buyers as well. Hire the services of an IP firm like ResearchWire that will tell you the right value for your patent. 

For example, computer systems that were based on biological models were the fastest growing technology patent category in 2021, it rose by at least 67%, according to TechRepublic.

 

How to share the value of your invention to potential buyers? 

Communicating the value of  your invention to interested parties is a pivotal part of the selling process. You need to have the right mix of communication, negotiation, sales and marketing skills. Here are a few things you can do to share the kind of value that the buyer will get by buying your patent.

  • Represent the patent in a short, easy-to-understand manner that clearly helps the buyer understand the value of the invention
  • Use visual, audio and video modules to explain the invention

While not everyone will have these skills, you can hire IP firms that know the right strategies that you can use to share how your invention can affect their business positively. 

 

Conclusion:

The patent selling strategies that we have mentioned in this article can be the game-changer for your business. Your selling strategy should be based on your business objectives, and not because something is in vogue. By having a solid patent strategy, viable product, and the right kind of business advice, you can get good returns from your invention. 

If you are looking for end-to-end intellectual property services, ResearchWire is an IP firm that can provide you the best results. Our team of highly experienced IP experts and technologists allows us to gain a superior understanding of your industry with little effort. ResearchWire’s patent monetization services help inventors and businesses to get the right deal for their invention. 

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Patent Buying Strategies for Businesses

The Intellectual Property strategy that you have in place should have your best commercial interests in mind. It would be unwise to add patents to your portfolio just to add it to your repertoire. Most companies want to know where to invest using their R&D budgets. Many of them are on tenterhooks about buying patents because they wonder if it will become a burden in the future. 

In this article, we are going to learn patent buying strategies that businesses can use to get ahead in their industry. 

 

Patent buying strategies:

  • Patent Pool:

Think of patent pools as a partnership of at least two companies who have agreed to cross-license patents. The pooled patents are made available to the licensees and the licensing fees are shared among the parties based on each patent’s value. 

Many industries will cease to function without patent pools since the risk involved would be too high and reduces the need to negotiate with other patent holders. For example, the automobile industry shares patents to standardize components. 

 

  • Target companies that have filed bankruptcy:

The difficult business circumstances caused by Covid-19 has made multiple organizations file for bankruptcy. This presents a hotbed of opportunities for those who want to purchase assets at reduced costs, including intellectual property. You can get a heavy discount for patents, especially with companies that have filed bankruptcy. 

In the communications field, the bankrupt Nortel Networks sold their portion of patents to Sony, Microsoft, Apple and Research in Motion for $4.5 billion. Google was also fiercely fighting to get a piece of Nortel’s patent tranche. If Google had won the bid, they would have been able to protect Android from various patent infringement claims. 

 

  • Look for inventors:

There are many inventors who work alone or with a small team, and are not part of a business entity. These inventors are looking for someone to purchase or at least license their patents. It is also a chance for businesses to get patents at a reasonable price since the inventors know that their invention has a sell-by date. Businesses should always be on the lookout for investors who keep filing patents in their niche. 

 

  • Check out universities:

Universities spend a significant amount of money on their research and are always on the lookout for either buyers or funders. More often than not, universities are ignored when businesses are on the lookout to buy patents. The patent filing rate in universities has increased of late, and they are also aggressively looking out to license their inventions. If you are looking to acquire patents from a particular niche, we would advise you to contact the universities and take a look at the research that is being done. 

 

  • Defensive Patent Aggregation (DPA):

Purchasing patents or patent rights just to keep them off the hands of companies that would use them against operating companies is called defensive patent aggregation. Companies have to often defend themselves against claims of patent infringement, and sometimes, they must purchase patents in technologies which they use or develop. 

The opposite of DPA is called Offensive Patent Aggregation (OPA). In this, the patents are purchased in order to assert them against companies which would use the inventions protected by these patents and to provide licenses to get licensing fees or royalties. 

 

  • Patentleft:

It is the practice of licensing patents where they could use them royalty-free. The only condition is that the adopters create improvements under the same terms. Also called a copyleft-style patent license, it seeks “continuous growth of a universally accessible technology commons” from which everyone will benefit. 

The idea of such an open patent ecosystem is practiced by a group of research-oriented companies. It is worth noting that most of the businesses that follow this strategy are usually biological patents. 

 

  • Stick Licensing:

Licensing a patent or any form of intellectual property where the patent owner threatens litigation for patent infringement if the company does not take a license from them. The opposite of this is called carrot licensing where there is a friendly approach to adopt their invention to take a license. An example of carrot licensing would be universities that approach businesses to license or buy their patents. 

 

  • Assortment of patents:

The reason behind diversification is to reduce your risks to market conditions. The same goes for your patents as well, but it is not only to minimize the risks, but also to expand your research. 

Seattle-based retail giant Amazon is an example of a conglomerate that has a diversified patent portfolio. In 2010, they had less than 1,000 active patents, but by 2019, they had more than 10,000 of them. Their patent portfolio encompasses a wide array of technologies- cloud computing, machine learning, drones, retail, robotics- you name it. The reason why Amazon is aggressively diversifying its portfolio is because it gives them the leverage to enter any field that they want to. 

 

  • Fire Sale:

In April 2016, Yahoo transferred more than 3,000 of its current and pending patents to a new subsidiary called Excalibur. It was created exclusively to auction these patents. While the executives at Yahoo vehemently denied that it was a fire sale, nothing could be farther from the truth. 

What is a fire sale? It is the sale of goods at extremely discounted prices. Another example of a patent fire sale was Kodak selling off its patents for $527 million. It was estimated that their entire patent portfolio was valued anywhere between $2 and $3 billion. Google, Amazon, HTC, Facebook, Huawei, Apple and Samsung were able to buy it at such a discounted price because Kodak was forced to sell them to avoid bankruptcy. While you would not come across a fire sale often, you might get lucky if you closely monitor the conversations in your industry. 

 

Conclusion:

Patents can do a world of good for your business if you have the right patent strategy in place. The patent buying strategy that you employ should be in accordance with your company’s unique goals. Having patents can have a huge impact on how your potential customers and partners view you. 

If you are looking for help with any patent portfolio analysis or any other end-to-end intellectual property services, ResearchWire is the right partner for you. We are one of the world’s leading technology and intellectual property companies and offer assistance during each stage of the patent lifecycle. Get in touch with us to get an idea of how we can transform your IP strategy. 

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Things To Do When The Patent Examiner Rejects Your Patent

Filing your patent application is an exciting part of the process. But the chances of your patent being rejected will always loom large over your head. Thankfully, there are steps that you can take when the patent examiner rejects your patent.  

Dealing with your patent getting rejected is also a part of the process. In a Yale University study of over 2.15 million US patent applications from 1996 to mid-2013, more than 90% of them were rejected. So if you have filed a patent and it has been rejected, do not fret, you can argue against the examiner’s rejection and get things fixed. 

Before you go about arguing against the rejection, make sure that you know why your patent application has been rejected in the first place. When you understand the reason behind the rejection, you will be able to find a common ground and will also be in a position to seek the right kind of counsel. 

Who denies your patents?

The rejection or approval of patents happens at the patent office. Since there are a large number of patent applications that they receive, you should make it easy for the patent examiner to go through your application with ease. Ensure that your invention is patentable, unique, and non-obvious. Indulge in patent search to make sure that there is nothing similar to your invention. Give enough reasons for the patent examiner to approve your patent application. 

Why do patent requests get rejected? 

For your patent to be approved, it has to pass the patentability criteria. Below are some of the criteria.

Your invention is obvious- If your invention is not unique enough, then the chances of your application getting rejected is high. Your invention must at least be different from other inventions that are similar to yours. 

Poorly filled application- If your application is dotted with errors, you run the risk of getting your application rejected. Ensure that you follow all the guidelines that are to be met when drafting the application. To bring validity to your claims, add as much technical details as possible in a way that everyone can understand. 

Your invention is not novel- The invention for which you are seeking a patent should be the first of its kind. Before you file the application, it is wise to do a patent search to find the novelty of your invention. 

The importance of hiring a patent firm:

While there are a number of measures that you can take to increase the chances of your patent application being accepted, there is a crucial step that you can take to swing things in your favor. If you want a highly efficient solution, then it is wise to seek the expertise of a patent firm. They will not only help you in drafting the patent application, but will also be available throughout the entire process. A reputed intellectual property (IP) firm will have a team of experts who will help you wade through the process efficiently. 

 

Steps to take when the patent examiner rejects your patent:

  • Show why your invention is different:

There are chances that the patent examiner is misinterpreting the prior art incorrectly or too broadly. Or they may be applying the prior art references wrongly. What you can do in such a scenario is to argue how certain claim features are not found in the referenced prior arts. The examiner will then review your arguments, and two things can happen. 

  1. They can review your arguments, agree with them and find new references (or)
  2. Disagree with your arguments and maintain their stance on rejecting your patent. 

Here is what you can do in this scenario. Take the drawings that have been filed in the initial application and highlight a component or a processing step which isn’t shown in the records. You can ask the examiner-”Our invention has X, can you find X in the art of record?” 

  1. Adjust or modify your claims:

There are times when the examiner wants you to make the application easy to understand, so they would advise you to phrase your claims differently. If you make the changes that they have suggested, then the issue could be resolved. 

How you phrase your invention on your patent application has a huge impact. Using irregular terminology or slang is one reason why many patent applications get rejected. Having the advice of an experienced IP team will solve this issue as they are more careful while writing down your invention in the application and are better equipped to handle the entire process.  

  1. Show how your invention works:

There are times when the patent examiner gets back with a comment that reads-”Does the invention work?” 

Here’s what you need to do in this scenario. 

  1. Explain the landscape of relevant technology which existed before your invention.
  2. Explain how your device works.

One of the best ways to explain your invention clearly is to make a video where you outline everything about your invention. If you can schedule a direct meeting with the patent examiner, you can describe your invention directly. 

  1. Check if your patent application is complete:

The first thing that the patent office will review is your application and see if it includes all the necessary parts. To move your application to the next process, the examiner will even go through the technical aspects of your patent application. 

For your patent application to be complete, the following should be included:

  1. At least one patent claim
  2. Inventor’s oath or declaration
  3. Payment for filing the application
  4. Drawings to describe the invention, if necessary

If any of these are not met, the patent office will get back to you saying that you have submitted an ‘incomplete’ application. 

Conclusion:

Your objective should be to convince the patent examiner to allow your claims by modifying them and also by presenting your case properly. It may take a bunch of responses before you can find a middle ground and get your patent application approved. Do not worry about getting your patent rejected, you can make changes to address the objections raised by the examiner.

If you are looking for a one-stop IP solution, ResearchWire is more than happy to onboard you as a partner.When you are not sure about what to do when the patent examiner rejects your patent, get in touch with us- and we can help with next steps.

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Everything You Wanted To Know About Invalidity Search

What is a patent invalidity search?

 

Also called an opposition search, the objective of a patent invalidity search is to identify patent and non-patent documents that may impact the claims that are present in a specific patent. When a competitor attacks you with patent infringement claims, your best resort is to prove the patent invalid. A patent validity/invalidity search is also done to calculate the strength of a patent to see how much it can guard itself against claims of validity. 

 

Using the results from this search, you can block patents and validate the claims of a patent portfolio which can be useful during a licensing or a company acquisition process. An invalidity search is conducted by a defendant to invalidate a patent by conducting a prior art search. 

 

A patent invalidity search is performed for three important reasons:

 

  • To check whether someone holds an authentic claim to the patent
  • To invalidate claims of patent infringement
  • To search for patents before any new patent enforcement

 

How do you perform a patent invalidity search?

 

The first step towards performing a patent invalidity search is to establish the priority date of the patent claims. Disclosures that are publicly available before the date of the filing of the patent is considered to be prior art. Also, if a patent application has been published by you after the patent’s filing date, it will receive a prior art rank. 

 

You might not always get enough material to stab at your patent’s novelty, but patent validity search will give you an idea as to where to look for if there is an anomaly. Below are the steps that you should take while performing a patent invalidity search. 

 

  • Understand the subject:

 

You need to know which are the technical and patent issues so that you can fully interpret the claim during the validity search. Since validity searches are usually performed on patents that have already been allowed, you need to have a broad sense of the claims to find further relevant art. Read in detail about the prosecution history at the beginning of the search, including the file wrapper to interpret the claim which needs to be invalidated. 

 

  • Do not leave out even a small detail:

 

To conduct an invalidity search successfully, you need to pore through innumerable patents and literature documents. A thorough examination will include an evaluation of the specification text, figures, chemical formulas, tables, etc. The searcher should focus on a variety of matters that will be of relevance to cover most grounds, if not all. 

 

  • Conduct a broad search:

 

When thorough invalidity searches are conducted, the findings will help you make the right business decisions. Missing prior art could cost you millions in patent infringement suits or having to re-work the product. You need to gather all your resources and search to the broadest extent possible. Start with works such as patent office search reports, history of the prosecution, opposition proceedings, litigation proceedings, etc. 

 

  • Do not ignore non-English literature:

 

Even though the volume of non-English literature is not much, you should not neglect or underestimate its importance during your searches. 

 

  • Know when to halt the search:

 

The problem with invalidity searches is that there is so much information to gather and so many places to seek them from. What happens if you don’t know when to stop? You will end up extinguishing your resources and burn a lot of money, not to forget the amount of time you will end up wasting. Your search strategies should also mention clearly when exactly you will stop so that it doesn’t go on for a long time. 

 

  • Do reporting properly:

 

The final report should be submitted in an easy-to-understand manner. While it is tempting to cite all the resources, all these references might not be relevant to the client. Offer a brief interpretation of the results and add any other supporting information if necessary. Report the findings in a matter of fact manner instead of offering opinions as they can be used against your client. 

The final report for the search should include relevant prior arts, key features, search strategy, keywords, classes, key assignees, key inventors, and claim charts that map relevant prior arts with the features of claims. A detailed report will help you understand the validity or invalidity of the claims in the patent. 

 

Factors involved in a patent invalidity search:

 

It is different from a prior art search because of a few factors that are involved in a patent invalidity search. Let us look at them.

 

File wrapper information:

 

File wrapper, or the dossier content, provides the most updated information regarding a patent application’s progress. It includes information on the examination process, search reports, office actions, correspondence with the patent office, and so on. When you read the file wrapper, it will give you an idea about the aspects on which the patent has been granted or if there is any novelty feature for the patent. The searcher will be able to identify if a claim has not been identified by the examiner. 

 

A file wrapper will also tell you about the kind of search strategy that was utilized by the examiner. Based on this, the searcher can find references to invalidate the claims of the patent. 

 

Cited references:

 

Both patent and non-patent literature which have been cited for the targeted patent are called cited references. You can gather the cited references from the file wrapper. When the analyst goes through the cited references, they can see the ones that have already been used against the targeted patent. By doing this, it becomes easy to get an idea of the missing part to invalidate the claims of the targeted patent. 

 

Date Restriction:

 

To find out prior arts and prior right cases, Date Restriction plays a big part in the invalidity search. A prior art case is published before the priority date of the patent that is to be invalidated. Prior right cases are those which are published after the priority date of the targeted patent, even though their priority date is before that of the targeted patent. 

 

Conclusion:

 

With all that said, the first thing you need to do before conducting a patent invalidity search is to consider the patent’s filing date. With patent invalidity search, you might be able to find prior art which the previous examiner might have missed out on. If a business is challenging the patent of a competitor or is preparing for a defense against an infringement charge, then the ideal retort is this. 

 

If you want to find out the validity of a patent, reach out to ResearchWire, our expert analysts will be more than happy to take care of it. Our in-house experts understand the patent laws for different countries, and are adept at conducting an expert search. 

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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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