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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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How to Identify Disruptive Technologies?

Why do some companies make bank every year while others struggle to stay afloat? There are a lot of factors which decide the longevity and success of a business. But if there is one rare ingredient which can put any company at the top, it is this- presence of a disruptive technology. 

 

The personal computer, internet, smart phones, artificial intelligence, 3D printing are all examples of disruptive technologies. Some of these technologies have even managed to change the way we live our lives. 

 

What is disruptive technology?

 

It is any technology that disrupts the status quo of an industry or a market. A disruptive technology will be completely new for everyone and its use cases might not even be defined yet. Disruptive technologies are impactful and usually affect other technologies as well. There are times when it is not the technology that is disruptive per se, but it is the way in which it is combined with others. 

 

Innovation is usually either sustaining or disruptive. If your innovation incrementally improves the existing product, then the innovation is sustainable. But if it completely changes the way the product has been used so far, or if it serves a completely different set of customers, then the innovation is disruptive. 

 

Here are a few questions which you can use to see if an innovation is sustainable or disruptive:

 

  • Is the innovation based on a product that appeals to a huge segment of customers? If the answer to it is yes, then it might not be disruptive.

 

  • Is it an enhanced version of the product? Or is it just a modified version? It is a sustained innovation if the answer is yes.

 

  • Are the use cases from this innovation not fully identified yet? Then it might be disruptive.

 

  • What do the experts in your organization tell you about the technology? If they think that you have hit the jackpot and are preparing to leverage it, then it could be a disruptive innovation.

 

How to identify disruptive technologies:

 

A new technology in the market cannot necessarily be identified as a disruptive technology. Disruptive technologies become successful since it helps in targeting a new segment of customers, creates success for its network of stakeholders, and makes the end product accessible and affordable to more people. 

 

#1 Smaller target area:

 

While a smaller market may not always be the case, a disruptive technology usually captures the attention of all and sundry, albeit in a smaller target area. A few people or an organization will make use of the technology where they will cater to this area. Based on the results from this, the next set of events will occur. The success of the disruptive technology depends on how the first few customers react to it. 

 

#2 Great risks:

 

One of the characteristics of a disruptive technology is that it is highly risky. Not every organization will be willing to bet on them as soon as they hear about it. Since there is no data to ascertain the effectiveness of an innovative technology, there is a lot of risk associated with it. Most of them will wait to see how the new technology is faring for those who have used the technology in one of their product offerings or services. In fact, this is a well-known strategy called ‘second to invent’. 

 

#3 Creates a new market segment:

 

While creating a new market segment may not always be how disruptive technologies can be characterized, the chances of the same are there. There was no market for 3D printers because there were no similar products and people had no idea what they were. When 3D printers had mainstream uses, people started recognizing it. Today, there are 3D printer enthusiasts who have them just to print things that they would like to have. 

 

#4 Grows slowly:

 

The best thing about disruptive technologies is that not everyone would want to get their hands dirty as soon as they hear about it. There will be a bit of resistance to the new technology, but a few people will start adopting it and it will gain a bit of traction. Once a few businesses make use of the disruptive technology, it will reach the mainstream, and from that point, the growth will be incredibly fast. 

 

#5 Disrupts an existing market:

 

Reading books is a great hobby to have. People love the smell of paperbacks, it is a unique feeling when you are a book lover. In 2004, Sony Librie, the first e-book reader, was released to the public. Today, e-book readers are available mainstream and there is a lot of demand for newer and improved versions. The ebook reader is an example of how a disruptive technology has disrupted an existing market. 

 

When Jeff Bezos introduced the Kindle, everyone thought that he was betting against himself because the majority of Amazon’s sales were from physical books. In the first 4 months of 2021, ebook revenues were up by 14.5% and it amounted to $368.9 million. No one blames Bezos anymore. 

 

6 examples of disruptive technologies:

 

#1 Virtual Reality:

VR takes you to a completely new world, an effect that is created by the VR headsets which have goggles and a screen. Google’s Cardboard, Facebook’s Oculus or Samsung’s Gear are a few examples of VR devices. From retailing to the automobile industry, many industries have taken note of its uses and have been leveraging it to the hilt. In retail, VR lets customers check out the products before purchasing. 

 

#2 3D Printing:

To put it simply, it makes three dimensional solid objects with the help of digital models. When you use 3D visualization on a computer screen, you will be able to have a better understanding of the spatial aspects of a physical environment. From military applications to its importance in urban planning, 3D printing has taken the world by storm. It has had a huge effect on the satellite and space industry as well. With 3D printers becoming more affordable than earlier, the number of applications for it will only keep increasing. 

 

#3 Smartphones:

There is no doubt that smartphones have changed the way we lead our lives. With the single click of a button, we can do so many things that might have been unimaginable just two decades back. Smartphones are easily one of the most disruptive technologies that we have been witness to. We rely on it every day. We have it on our person everywhere we go. That’s how disruptive smartphones have been. 

 

#4 Ecommerce:

There was a time when we had to walk into a brick-and-mortar store to buy anything. That’s not the case anymore. We could buy anything from a pin to an airplane in an eCommerce store. Ecommerce has changed the status quo of every industry that you can possibly imagine. Add the internet to the mix, it has changed the way supply chains are managed and controlled. 

 

#5 Cab aggregators:

There was a time when we could not hail a cab with the simple touch of a button on your smartphone. You had to walk out on the streets to search for one. Ride-sharing companies like Uber have completely changed the way we commute. Uber was able to create a $70 billion valuation within its first decade, that’s how disruptive it was. 

 

#6 Online education:

Online learning platforms have become even more important with the pandemic shutting down educational institutions in many places across the world. Massive Online Open Courses (MOOC) has made education accessible to a broader set of people. It is much cheaper than getting full-time education from a university, but you get to learn just as much. With platforms like Udemy, anyone can become a tutor, that too on any topic. There are many platforms like Thinkific, Kajabi and Teachable where you can host the content of your online course here. 

 

Conclusion:

Disruptive technology can change the way industries behave. It is also a great opportunity for an established business to adapt and grow. Not to forget that even startups can and should take advantage of the shifting demands in the market. There are many innovations which bring about a lot of change, but they are not necessarily disruptive. Identify the ones that are truly disruptive and see if you can leverage it for the greater good, the rewards will follow. 

 

We are a leading technology and IP consulting company and provide end-to-end solutions to our clients for all IP needs. The patent professionals at Researchwire have worked with companies that are in its initial stages to those that have existed for decades. Our objective is to present our clients with the most effective solutions that are also highly practical and affordable. 

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How to file a patent in a few easy steps

Inventions have the power to change the world. 

A simple example would be the patent named “Navigation system using satellites and passive ranging techniques,” or the GPS. 

Can you imagine traveling these days without the help of a GPS system on your smart phones? 

When an invention is protected and the inventor stands to gain from it, that acts as an inspiration for every inventor out there to do more. That’s why protecting your invention is important. 

Getting your invention patented is the best way to protect your invention from others. If you have heard about how difficult it is to file a patent, then you probably are right. There are a lot of things that need to fall in place for you to get your invention patented. Thankfully, the entire process can be broken down, and thus becomes less complex than it actually is. 

 

Let us look at how you can file a patent in a few easy steps:

 

#1 Have a deep understanding of your invention:

The first step towards getting your patent is to ensure that you know your product inside out. What part of the invention makes it unique and useful? Once you are clearly aware of what makes your invention worthy of getting a patent, the next step is to consider the scope. You need to find out if there are other ways to invent your product. Write down all the other ways of making your invention work, even if they are not the most ideal way to do it. 

You need to find if your invention has a broader application. If that’s the case, then you need to do more modifications to narrow it down. Doing all of this will ensure that you will be able to protect and will also benefit from being aware of the full scope of the invention. Your patent application will be tighter and more likely to be approved by the patent office.

 

#2 Keep a record of how you came up with the idea:

Make sure to keep a record of how you arrived at the idea and the step-by-step process that you took to come to this stage. A written record like this can actually help your case if you face any issues and it even helps bolster the creative process. Write down everything, from the changes you made, corrections, mistakes, and even the slightest line of action. 

Keep records of who has been given access to your idea. Ensure that all of these people have signed a Non-Disclosure Agreement (NDA) which specifically states that the rights to your idea and their work on your idea are all yours. Hire a patent firm and make sure that you get the NDA drafted by their lawyer so that there are no loopholes which might eventually come to bite you. 

 

#3 Does your invention qualify for patent protection?

Ideas cannot be patented. Everyone knows that. So if you want to protect your invention, you need to show the patent office how exactly it works. For an invention to be patentable, it must be new, non-obvious, and useful. 

New means that the invention cannot be known, used, described or patented before the filing date of your patent application. 

Non-obvious means that the invention should be significantly different from similar inventions which are already known. 

Useful means that the invention is useful, as in, a chemical, mechanical or electronic invention. 

 

#4 Patent Search:

Doing a patent search will help you figure out if your invention is new. Searching for prior patents and going through previously published patent  applications will assist you in understanding if the patent is patentable. While a patent search isn’t really a must, it will help you determine the proper scope for the patent application. 

If you plan to do patent search by yourself, we will advise you against it as it requires technical expertise and complex tools that only an IP firm will have. Do remember that the patent office will conduct its own search after you file your patent application. 

 

#5 How do you want to protect your invention? 

File a provisional patent application at first. This offers you protection in case someone says that they had the idea before you did. You can even take a year after this to file your patent application. During this period, you can add claims to strengthen the prototype that you have built, but you cannot add anything new. 

Let’s say you have added a piece of technology or something that adds more firepower to your invention, then you need to file a new patent application to add them. 

There are three main types of patents: Utility, Design and Plant patents. You have to figure out the right patent type for your idea. 

Utility patent- It is an exclusive right that is granted to an invention which doesn’t allow anyone else to profit from the invention without the inventor’s permission. 

Design patent- This type of patent is usually granted if the product has a unique configuration, unique surface ornamentation, or both. 

Plant patent- This patent protects a new and unique plant’s key attributes from being copied, sold or used by others. 

 

#6 Write your patent application:

You need to prepare a specification that also includes an abstract, summary, background, detailed description, conclusion, the scope and so on. Patent applications are a complex affair if you are doing it by yourself. They have several parts, and each of these can be rejected for many reasons. Ensure that you double and triple check what you have added in your patent application before sending it. A mistake might end up costing you a lot of money, more importantly, a lot of time too. Drafting the right patent application requires a lot of practice and technical know-how. It is strongly recommended to hire an IP firm to take care of your patent application. 

 

#7 Wait for the patent examiner’s response:

For your patent application to be processed, it takes at least one to three years. Make sure you get your application right the first time itself as you do not want to find that your application has been rejected owing to mistakes that could have been avoided. One patent examiner will be assigned to your invention and if you ever receive any communication from them, ensure that you respond to it immediately. 

If you have an attorney, the patent office will reach out directly to them. You can also get things expedited by arranging an interview with the patent examiner. It will help clarify the concerns they have about your invention, if any. 

During this period of time when you are waiting for a response from the patent office, make sure you are working on the business side of things. Since your patent is pending and the invention is protected, you can still talk business to interested parties. 

 

#8 “Notice of Allowance”:

The patent office will issue a “Notice of Allowance” if you are going to receive the patent. After you pay the required Issue Fee, you will receive your patent approximately after one to three months.  Once your patent is granted, your invention or design will be protected anywhere from 14 to 20 years, depending on the patent that has been granted. 

After you receive the patent, make sure you keep the patent alive by paying the maintenance fees. 

 

Conclusion:

Above are the steps using which you can file the patent easily. Unless you are 100% sure that you can handle the patent application process because you have dealt with it earlier, do not do it by yourself. If you still plan to do it by yourself, make sure you scrutinize each and every point that you add with excruciating detail and thoroughness. There cannot be any lapse because that would mean that the patent office will get back with a rejection. It can be a terrible cycle if you do not get the application right in the beginning itself. 

Get in touch with Researchwire’s patent experts who will help you with filing your patent application if you have an invention that you think deserves formal protection. 

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HOW TO SPEED UP THE PATENT PROCESS

32 months.

That’s the average time taken to obtain a patent from a patent office. 

In this cut-throat world of business, that’s a lot of time. There are a number of factors that affect this time duration. From patentability searching to application drafting, filing, and so on, all of these take up time. The patent process can be an excruciating wait if getting your patent ready will mean immediate business results for you. 

Patent offices are looking over thousands of patent applications. Ensuring that each one of them meets all the formal requirements takes a lot of time.  There are certain fields where getting a patent in an accelerated manner becomes pivotal to protect their R&D efforts. 

A reason why patent applications are not quickly approved is because the examiners want to ensure that they get it right. Any lapse from their part can result in a lot of damages to the business that has filed the patent application. 

 

Why should you speed up the patent process?

When you speed up the patent process, it can immensely benefit your business. Here are some of them:

  • Competitive advantage: Having a patent issued in your name offers you a great amount of protection when compared with just saying that your patent is pending.
  • Licensing: It can be an additional revenue and a patent awarded to your name will give you immense leverage during discussions on royalty and licensing.
  • Enforcement: There is no way to enforce your patent rights against infringers unless you have the patent issued in your name.
  • Raising money: When you have a solid patent portfolio to show to your prospective investors, they will be able to trust in your business more. It will help with raising funds for your venture. 

 

Here are a few steps that you can take to speed up the patent process:

#1 Write a clear patent application:

The best way to reduce the chances of any delay in your patent approval process is to be excruciatingly thorough when you draft the application. Do remember that many applications are being handled apart from yours and you need to reduce as much friction as possible for them. 

Before you send the patent application, make sure that you do prior art search. The objective of prior art search is to ensure that your invention is new and non-obvious. By doing prior art search, you will be able to identify the closest prior arts, thus helping you define the scope of protection in your claims. It can even reduce your prosecution time as it will require lesser office actions and claim amendments.

When you write the patent application, describe the invention, how it works and what makes it a new invention and so on, in detail. If there is something that makes the invention unique, write about it in detail as well. It is important that you have a clear understanding of what makes your product ‘patent’ worthy. 

If you end up receiving a notice asking for more clarification, then ensure that you respond to them immediately without a delay. 

 

#2 Petition to Make Special:

It is possible to request that your application be given special privileges so that it can be expedited. You need to qualify to make your petition special. Here are the categories, the applicant should qualify for at least one of these:

Age: If any of the inventors is 65 or older, you can ask your attorney to get this petition filed.

Illness: If one of the inventor’s health is “such that he or she might not be available to assist in the prosecution of the application if it were to run its normal course,” then you can request for the patent approval process to be expedited. 

Invention type: If you want to make the petition special regardless of the age or illness of the inventor, here is the criteria. The patent application that you file should be for an invention that does the following:

  1. Helps fight terrorism
  2. Increases the quality of the environment.
  3. Helps in the conservation of energy resources

 

#3 Be well prepared:

Once your patent application has been submitted, it may take years before you even get a sly nod from the patent office. You need to keep this in mind when you are about to file the patent application so that you have a strategy in mind to tackle any unforeseen delay. Make sure you are aware of all the examples, technical terms, and how you intend to negotiate your rights with the patent office. 

There are six months for you to respond to the patent office before you are supposed to start paying fees. Have your team ready to respond to the questions as soon as there is one. Every single day’s delay will also rack up your fees. It is a lose-lose situation if you are not well prepared. 

 

#4 Communicate with the patent officer:

When it comes to patent applications, it makes sense to communicate directly with the patent officer. Instead of sending emails back and forth, a face-to-face conversation will clear up things faster than you could imagine. Or even a video call would suffice. Instant communications will also help you avoid any misunderstandings. 

Even your examiner wants to get done with your patent application because it is his/her job. It is in the interests of both the parties to pick up the phone and have a conversation. When you talk to the patent examiner, hear their side to understand their view of the invention. More often than not, patents are technical, but the examiners need not necessarily be able to understand some of it. Having a one-to-one conversation can help clear the issues that they are facing and it will be easy for you to explain the invention without any jargon. 

 

#5 Original claims should be reasonable and few:

When you file broad patent claims, it is good for your business, but patent examiners prefer if you have claims that are narrow. There are high chances that a broad patent claim will cover more than what was invented, and that is a turn off for patent examiners. Keep in mind that you should make your invention sound novel and the non-obvious features of your technology should be clearly spelt out. This will help immensely with the fast tracking of your application. 

There are time constraints under which patent examiners work since there are a lot of patents that they need to pore through. When your claims are narrow, they are more likely to be cleared by the patent office. 

Here’s a tip- File narrow claims first so that you can cover the core elements. It will help in getting the patent fast tracked. After this, you can file for continuations so that you can cover every future application of your technology. 

 

#6 Use special programs to fast-track your application:

There are other ways to speed up patent prosecution as well:

  1. Prioritised Patent Examination Program
  2. Patent Prosecution Highway (PPH)

The Prioritised Patent Examination Program gives a utility or a plant patent application priority which allows a final deposition within twelve months. It offers special status and has fewer requirements, and it also doesn’t ask for a pre-examination search. 

PPH fast tracks the examination of the patent applications in participating countries with claims that have already been allowed by a foreign patent office in a corresponding patent application. When you receive the final ruling from the first patent office where you have filed your patent application, you can ask for a fast-track examination of your claims in the corresponding patent application pending in the other office. 

 

#7 Hire an IP firm: 

More often than not, it is best to get the help of experts instead of trying to do it yourself. Get the much-desired clarity by talking to an experienced Intellectual Property firm who will be able to evaluate your unique predicament and you offer the right solution. There is no one-size-fits-all solution when it comes to speeding up the patent process which makes it difficult for those who are not privy to the workings of patent offices to do the right thing by themselves. 

 

Conclusion:

You have to remember that the patent office and examiners are there to help you. If you follow the seven strategies that we have listed above, you will be able to speed up your patent application. Filing a patent application and getting it approved in a time that you want requires a lot of things to fall in place. Concentrate on things that are in your control and do it in the right way. 

ResearchWire is a leading intellectual property consulting company that takes care of all of its client’s IP needs. Our IP experts have immense domain and industry experience, that’s how we have been able to add value to each of our clients. If you are looking to speed up your patent process, we will be more than happy to help you with it and guide you in the right direction. Get in Touch

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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 spells goodness for everyone involved. The IP owner retains control and the licencor 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 trademark, patent, etc. have always commanded the respect of investors. Like any form of property, IP assets can be used as collaterals.

#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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How to valuate patents

How to valuate patents

To thrive in the market, you need to aggressively innovate. Otherwise, you will not even be able to survive, forget about thriving. Innovation is what made Honeywell go from a retailer of heat regulatory systems to developing smart technology for climate regulation and home security systems. Lack of innovation is what forced the likes of Compaq, one of the largest PC sellers in the world during the 90s and 80s to shut shop in 2013.

Google bought Motorola Mobility and its 17,000 patents for $12.5 billion to protect its Android mobile OS from competitors. Thanks to its 1,100 digital photography-related patents, Kodak was able to sell those patents for a dozen licensees for $525 million, although it was expected to fetch much more than that.

The gene-splicing patent of two Stanford professors that was world-altering enough to launch the biotech industry, generated $255 millions. Within 24 years of the patent, more than 2,000 biotechnology companies had been launched.

Did you notice the difference in the monetary value of the patents? Everyone knows that all patents are not equal, some are more valuable than others. There are different factors which contribute to the monetary value of patents.

Your intelligence assets are usually in the form of patents. In this dog-eat-dog world of litigation and patent trolls, you need to secure your intellectual assets. Patents provide protection for businesses from their ideas being stolen by their competitors. Since it is an intangible asset, assigning a dollar value to it can be difficult. We can use a variety of methodologies to see if a patent would be a cash cow or not.

What are the instances when you need to assess the value of a patent?

Only when you know the value of your patents would you be able to make use of it appropriately. Knowing the valuation of patents becomes important when there are business transactions/situations such as the ones below:

When there are negotiations while selling or licensing intellectual property rights as it is essential to reach an agreement in good faith.
Patents can also be used as security for bank loans, it is imperative that you show them that the IP asset is of a particular value.
Organizations are legally bound to report their assets, even of those that are intangible.
For your internal team when they want to define strategies for patent protection.
When there is a patent conflict or dispute, in situations like this, knowing the correct value of the IP will enable you to claim fair damages.
While trying to evaluate the value of the company for an M&A, JV or when filing bankruptcy.

How to find the value of patents:

Businesses use different methods to find the value of patents, but most of them can be classified into two types: 1. Quantitative approach and 2. Qualitative approach.

The quantitative approach uses measurable data to calculate the value of patents while the qualitative approach relies on the prospective uses for a company which owns the patent.

Quantitative valuation includes metrics like the cost in obtaining the IP, cost of similar market transactions in the industry, cost of creating a similar technology, and so on. Qualitative valuation includes assessing the IP through a non-monetary lens, such as its technological impact, strategic impact, brand loyalty, and other intangible metrics that will help you come up with a credible value for the patent.

Quantitative approach to valuate patents:

There are four methods which are widely used to find patent values in the quantitative approach. We will talk about each one of them in detail, below:

Cost-based method:

The cost-based method works on the assumption that the costs incurred while developing the IP is directly related to how much it is worth.

Here, the replacement cost of the patent or the amount equivalent to replace the protection right on the invention is considered to be the cost of the patent.

In other words, how much would be paid to replace the patent is considered to be the replacement cost. Or how much would be spent in developing a similar patent is assumed to be the right value.

When we calculate the expenditure, we base it on the current prices. Some of the other cost sources that are included in the cost-based method are: material costs, labour costs, overheads, opportunity costs, profits that are lost when you bring it to the market at a later date, etc.

Income-based method:

In this method, the value of the patent is calculated based on the income that it generates for the patent owner. Even the cost savings that owning the patent will provide is considered when using this approach. When a business or an inventor is developing a product, it is with the hope that it will help increase their profits or at least save them a tonne of money.

Market-based method:

In this method, you need to keep an eye on the market transactions and see if there are any assets which are similar to yours. The comparison between your asset and a similar asset is made with regards to its utility, perception, technical superiority, and so on.

How can you find such data?

It will be available in the annual reports of companies.
Databases where royalty rates are available
Industry-specific publications
Court decisions where damages were discussed

The above sources can give you a fair idea of the rates. Based on the numbers that you get from these sources as well as based on the present market situation, you can arrive at a value that is reasonable to all the parties involved.

Option-based method:

It uses the options-pricing theory to determine the value of the IP. This method considers the options and opportunities related to the investment. When using the options pricing model, patents are valued using financial options. The key point in using a financial model to find the value of a patent is that even stock options provide exclusive rights to the owner while excluding others from using it (that’s how patents work too).

Qualitative approach:

In the qualitative approach that is used to find out the value of patents, there is no reliance on pure financial data. There are a multitude of factors that are used to determine the value of the patents in a qualitative approach. It could be assessing the various aspects that affect the value of the patent. Here are three methods that are widely used:

Value indicator-approach:

It uses rating methods like IP Quotient where the strength of the portfolio and the surrounding variables are assessed. Using this analysis, a qualitative rating is attributed to the patent. This data can be used to draw internal comparisons in assessing the value of the patent, but it cannot give you a decisive number.

Competitive advantage:

In this method, the competitive advantage that the business will get by owing the IP asset is taken into consideration. If it is just bragging rights, then it wouldn’t make any difference to your bottomline. Below are a few questions that you can ask:

Does it cause a significant shift in how your customers perceive you?

Will it increase sales?

Does the IP asset better the quality or performance of your product?

Rating approach:

Businesses can use a variety of parameters to assign a dollar value to patents. You should also determine the type of function that the IP is going to play for your business. Does it align with your objectives for the near future?

Qualitative methods are usually used for internal purposes as the number is arrived without taking financials into consideration. It is a great method if you want a sense of how it will fit into your portfolio by giving you an idea of the opportunities and risks involved. There are more common-sense inputs than hard data which will make a much better case to come up with a number.

Conclusion:

Now that you know that there are different methods which can be used to find the valuation of a patent, the method that you eventually choose should be binding on your business objectives. As seasoned professionals in this area, we would advise you to employ more than one method so that it is easy to corroborate them. Finding the value of IP can help you make significant business decisions which can alter your entire business trajectory.

If you need help with finding the value of a patent, get in touch with the Research Wire team and we will be able to assist you. We have processes and workflows in place to arrive at the value for a patent based on our extensive experience over the years.

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Different Patent Classification Techniques: When to use What!!

Different Patent Classification Techniques: When to use What!!

Patent classification is the most important phase for analyzing different technological trends. Patents are classified according to different parameters or different technological features present. It is to be noted that a single patent may disclose more than one technological feature and therefore, a patent can be classified more than once.

A technology classification/taxonomy can be defined before the start of the classification process or a technology classification/taxonomy is built progressively as patents are classified one by one.

Depending upon the requirements and the scope of the project, different patent classification methods can be used to provide different insights into the patenting strategies and market dominance of one’s competitors.

  1. Class-based bucketing: Based on a pre-defined taxonomy (according to the technology sub-domains of the product/service line of the client), different relevant IPC/CPC classes are identified. This class-based classification is then replicated onto the extracted patent dataset, thus classifying the patents into various categories and sub-categories.

For example: Let us consider Wireless and Broadcast communication technology (broad category). Various relevant classes can be identified such as H04W and H04H, and then, on basis of the definitions of its various child classes, they are put into different buckets (based on the taxonomy) representing different sub-categories such as

H04W80/00: Wireless network protocols

H04W88/00: Devices for wireless networks

H04W40/00: Communication routing

H04H20/00: Arrangements for broadcast

H04H2201/00: Aspects of broadcast communication

Publications having these classes are hence bucketed. In Class-based bucketing, a patent may be bucketed multiple times into different categories. The accuracy achieved in class-based bucketing is moderate and the time required is less to moderate depending on the number of categories present in the taxonomy.

  1. String-based bucketing: Based on a pre-defined taxonomy, strings are formed for each of the sub-categories using keywords specific to that domain and their linguistic synonyms. By analyzing hits of the strings, the strings are refined to avoid any noise that may come. After a few iterations, the desired dataset for a sub-category of technology is obtained.

For example, The string for Wireless and Broadcast communication can be as follows:

ALL=(((wireless OR broadcast) NEAR5 communicat*) OR (wireless NEAR5 protocol*) OR ((antenna OR radio) NEAR3 construct*) OR (remote OR distant OR tele* OR online)) OR (Communicat* NEAR3 (rout* OR path)) OR ((frequency OR amplitude) NEAR3 modulat*) OR (transceiver OR receiver OR transmitter) OR (base station))

 

Though the strings are very specific, a small percentage of the publications might go undetected by the search algorithm of the database because of linguistic barriers (since translations of some of the non-English publications might not be available). Due to this, keywords+ class-based strings are formed, giving optimized and reliable results. Hence, the patent portfolio is classified into various categories. Its accuracy is slightly less than that of class-based bucketing, but the time needed to invest in it is the same.

 

  1. Manual Bucketing: Each patent in the dataset is analyzed thoroughly by experienced researchers. Depending on the type of invention and the key features that the publication discloses, it is classified into one of the categories, according to the pre-defined taxonomy or a taxonomy that gets build up during the manual analysis process. When compared with the above two methods of bucketing, manual bucketing has the highest accuracy (human intelligence being the contributing factor) as well as it takes most of the time.

 

  1. Automated Patent Classification using the NLP model: The adoption of NLP and AI-based auto-classification of patents has been sporadic. Automation for patent classification not only helps to reduce human error but also accelerates the classification process. Keywords and synonyms are identified pertaining to specific sub-categories (according to the pre-defined taxonomy) and are fed into the Natural Language Processing model for context analysis and lexical semantics to determine the central idea behind the invention. Hence classifying the patent portfolio into different categories. The accuracy achieved using such a model is moderate and the time required is less.

 

Choosing one of the above-mentioned classification methods depends on the size of the portfolio, the accuracy needed and the time allotted to the project along with the budget of the client for competitive benchmarking and hence the resources (number of people) allotted to the project are decided accordingly. In the case of highest accuracy, we need manual analysis as even NLP is not enough to do that. NLP can be used for a helicopter view of the overall portfolio.

Depending upon customer needs, At ResearchWire Knowledge Solutions, we follow a strong methodology and robust process to evaluate patent data and deliver what the client requires. ResearchWire Team consists of experienced Patent and Data Analysts who come from different industries. We understand the client requirements well and deliver useful insights using advanced data visualization tools to make the client’s decision-making process more effective and easier.

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