Why is patent due diligence important for your organization?

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

 

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

 

What is patent due diligence?

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

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

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

 

Why conduct IP due diligence?

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

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

 

When should a patent due diligence be performed? 

 

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

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

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

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

 

  • During Mergers & Acquisitions:

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

 

  • During divestment, or licensing

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

 

  • For contingency reasons:

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

 

  • Before filing a patent application:

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

 

How to Conduct IP due diligence. 

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

 

  • Identify IP assets: 

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

 

  • Verify ownership and existence of IP: 

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

 

  • Check for areas covered in the IP

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

 

  • Checking for third party claims:

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

 

  • Evaluate potential IP infringements:  

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

 

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

 

Steps to conduct due diligence properly:

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

 

Conclusion:

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

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

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Everything you wanted to know about Freedom To Operate search

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

 

What is Freedom to Operate Search?

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

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

 

When should an FTO search be conducted? 

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

 

Questions to consider before an FTO search?

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

 

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

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

      2. What is the investment for your invention?

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

      3. What is your risk tolerance?

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

      4. Does your industry patent often? 

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

      5. Does litigation happen often in your industry?

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

     6. Where will you operate?

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

 

Best Practices for Conducting Effective FTO Searches:

 

  • Jurisdiction Coverage:

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

 

  • Date restriction: 

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

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

 

  • Targeting important domain players: 

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

 

  • Citation search:

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

 

  • Similarity Search: 

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

 

  • Patent Segregation to prioritize efforts:

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

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

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

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

 

  • Keywords and Classifications:

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

 

  • Report the findings:  

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

 

Categorizing the results:

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

 

Report the patents in the decreasing order:

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

 

Legal Status:

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

 

Latest claims:

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

 

Conclusion:

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

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

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

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Introduction to Patent Blockchain

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

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

 

What is Blockchain?

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

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

 

Blockchain’s relevance in the Intellectual Property world:

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

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

 

Patentability of Blockchain-based technologies:

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

 

Who are the leaders in Blockchain Patents? 

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

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

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

 

Blockchain applications in the IP world:

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

 

  • Smart contracts:

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

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

 

  • Supply Chain Management:

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

 

  • Act as IP registry:

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

 

  • Evidence of ownership:

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

 

  • Maintaining version control of digital assets:

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

 

  • Anti-counterfeiting: 

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

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

 

  • Micro-licensing:

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

 

  • R&D agreements:

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

 

  • IP Marketplace:

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

 

  •  For information sharing of IPR related data:

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

 

  • Unifying global patent system:

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

 

  • Collaboration between IP offices:

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

 

  •  MSMEs can use IP judiciously:

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

 

  • Settle IP disputes:

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

 

Conclusion:

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

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

 

write to: query@researchwire.in

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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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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 do a solid patent portfolio analysis, your prospective investors 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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