Intellectual property, especially patents, are one of the most important intangible assets of a business – especially the ones that sustain majorly by inventing and innovating. Given that the development of any kind of invention consumes a lot of time and money, it only makes sense to protect the inventions by protecting/patenting them.
Getting a patent for the invention ensures that no other person claims your invention as their property. Even if someone ends up doing so – by selling a copy of your patented invention or manufacturing a product that overlaps on your patent – they could be stopped from resuming these activities with the help of case and desist letters, and legal recourse could be taken to prevent others from benefiting from your patented invention.
Given that a patent offers its assignee the benefit to exclude others from infringing on their patent for a very long period of time (20 years from the date of filing in the US), it only makes sense that patents are not granted to every idea that is ever ideated.
Hence, patents are only granted to inventions that meet certain criteria. We have explained the criteria in another article, which could be accessed from here.
Getting a patent is not easy. A patent is tested on multiple factors to ensure that it is novel, obvious and is not similar to someone else’s invention/concept before the date of filing. Only post fulfilling all the required criteria, a patent is granted by the patent office of the particular nation.
In certain cases, if a patent is granted and upon reexamination found not to meet any particular criterion, the rights could be revoked from the inventor/assignee. We would be discussing more on this later, but it is to be noted that this is one of the most important strategies used by companies to weaken their competition’s patent portfolio.
But that’s the advanced stuff. Taking a step back – There are different kinds of patent searches that exist. While some of them are conducted before a patent is filed, others serve their purpose best only post a patent is granted. Each of these searches has their own unique purpose and reasons for being conducted.
Interested to know a bit more? Join us as we take a brief look and try to understand the WHYs and HOWs for each of these searches.
Patentability or Novelty Search
What is a Novelty Search?
A Novelty search, otherwise known as patentability search, is conducted before filing a patent application to ensure whether the invention is new. This search is pretty important because nobody would like to lose all the hard earned money spent on drafting and filing the patent application just because the examiner found a similar concept as your invention as the criteria for rejecting your patent application.
By performing a novelty search for prior art, the inventor, patent lawyer, or a patent examiner can figure whether someone else already has had the same idea or not. If the search returns that someone has already worked on a similar idea, you can save money by not filing the application OR alter/improve your idea such that it meets the criteria of patentability.
Conducting a Novelty search helps (if not ensures) to know what are the chances that your patent may get granted. If a patentability search returns that your idea is novel and meets all the criteria for patentability, you can file your patent assured that it has a high chance of getting issued.
Given the high expenses of filing a patent and prosecuting a patent, it is always a better move to get a patentability search conducted prior to the filing of the patent application.
Now that we are aware of what exactly a Novelty or Patentability Search is, let’s have a look at the benefits and the relevance of conducting the search.
It will help you draft better claims
There is always a chance that you might have missed information related to the technology which could improve the scope of your patent. Conducting a patentability search widens your information horizons, thus making it possible to draft broader claims with an increased scope.
The novelty search helps in identifying additional cases which might not have been covered by the inventor. If these uncovered cases are made part of the application it may reduce the chances of your competitor using these uncovered references against you while challenging the validity of your patent.
Helps understand value of the invention
For businesses and large companies specifically, conducting a Novelty search helps determine the uniqueness and value of the patent, while helping them understand the potential for competitiveness the patent offers.
If the invention/patent is similar to a competitor’s invention, the patent can be designed around to increase its monetization potential while offering the patent holder the freedom to operate.
Now that we are aware of the benefits patentability search offers, let’s have a look at the reason why you should hire an expert to perform a patentability search.
The Common Mistake to avoid with Novelty Searches
Before filing an application, conducting a novelty search is never a mistake. The mistake actually happens when you carry out the move i.e., the search in a wrong way.
While you can conduct the patent search on your own, you may not get the same results that a patent lawyer or a professional patent searcher could get for you. Conducting an efficient search requires a lot of research on the subject matter and is more than just a google keyword search. It goes without mention that it is a time-consuming process. If you have a ton of time in your hand and have a good understanding of the subject matter, you can perform the search on your own.
But there is always a chance that prior art exists for the invention, which would go unnoticed during your search but could be found by the examiner who would reject the grant of your patent. Thus, hiring a patent attorney is a great option as it might incur an extra cost but it is worth the result you get.
Some people might even think that there is no requirement of novelty search, given the additional costs. By not even opting for this search, they might be committing a big mistake that they would have to pay later for. When a patent is involved in litigations, opponents often challenge the validity of the patent to escape from paying royalties. If prior art is found for the patent in question, which is a result of lack of novelty search, in the beginning, the patent holder would not only lose potential income but also his patent rights.
So while technically there might be no need to go for novelty search, it is often better to consider it as a favorable option as preparing a provisional patent application or a non-provisional patent application consume a lot of time, effort, and money. Not protecting your bases in advance could mean losing thousands of dollars.
Freedom-to-Operate search or Clearance search
When someone comes up with a patentable invention they usually forget about patents which are held by other people. Acquiring a patent on your invention merely does not gives you the right to operate.
How do you sell/manufacture your product/invention without infringing on other people’s patents? This is where freedom to operate search comes to help.
Freedom to operate refers to the ability to sell one’s product or service without infringing on the patent rights of another party. When you are granted a patent, you are granted the right to prevent people from using your patented technology. Although everyone else is stopped from infringing on your patent, you must still perform freedom to operate analysis before you bring out your product in the market. If your invention uses any other kind of invention in a form of a process, machine, or composition of matter, then freedom to operate of your product in the market becomes questionable. You run the risk of infringing on someone else’s IP, which comes with its own set of consequences.
For instance, a person who invented the concept of attaching an eraser tip to be placed on the end of a pencil could patent the invention. However, there may be many patents, owned by others, on erasers, glue or the process of attaching them, that may prevent your product to freely operate in the market. Your own patent does not make you safe.
What is Freedom to Operate Search?
To determine the freedom to operate in the market, a specialized search is requisite, which is termed as freedom to operate search or FTO Analysis. What exactly is it and why it is important? Let’s get answers.
An FTO analysis is a due diligence process which focuses on finding out any active patents or pending patent applications that may hinder your freedom to operate.
Why is conducting FTO Search Important?
This process is quite important as it provides you with a risk assessment of your product getting into a legal suit in the near future. It also allows you to check on risk assessment for patent infringement. Not only that, conducting an FTO Search helps you get a clear idea about the licensing needs and even helps you to move product development in a right direction.
What to do if there exist patents which limit your freedom to operate?
If there is a limitation posed by a patent/(s) in your freedom to operate, then you can choose any of the following options:
Contact the patent holder for Sale/Licensing of Patent
Reach out to the patent holder and ask her/him if s/he could sell you the patent. If the patent holder does not want to sell, you can seek a license of that patent.
Go for cross-licensing
If your product is of value to the other patent holder, you can go for cross-licensing. In this case, both the parties can give each other the license of using their invention.
Design around the features in the product
Since after the freedom to operate search you know the risk associated with a particular feature in your product, you can design around the existing patents and introduce a new feature in your product that does not overlap on any existing patent. This strategy is used by many large companies to minimize their risk.
Why is Freedom to Operate Complex?
Setting up Freedom to Operate is not an easy process. There are a great number of patents already in existence and moreover, thousands of it are granted every week. If you are launching the product in multiple countries then you have to access your risk in each of those countries to get a freedom to operate opinion. You have to go through the claims of the relevant patents granted in these countries to understand if their claims can be interpreted in a way that they can overlap on the features of your product. This process requires focus and time.
Validity Search or Invalidity Search or Strength Check or Opposition Search
Patent Validity Search or Invalidity Search is a form of search that is conducted to identify references that can question the validity/enforceability of the claims of the patent that is issued by the patent office.
These search may be referred differently based on the objective with which the search is being performed. Validity searches are often performed by patent holders or buyers before asserting, licensing, buying, or selling a patent to confirm the enforceability of the claims. These searches can help understand whether the patent in question can survive a validity attack, and thus help one take a better-informed and stronger negotiating stance.
Need for a Patent Validity or Invalidity Search?
Patent examiners normally have constrained time and resources to conduct their prior art searches. By some accounts, the Patent Examiner spends an average of about 12 hours per case to conduct a prior art. Given such limited resources, its difficult for the Examiner to explore everything that is out there. This implies that if the patent is challenged it could put the validity of the patent at risk. In a litigation, the defendant can use the result of a patent invalidity search to try and overthrow the patent in court or by filing a petition for IPR.
What is the Scope of a Patent Invalidity Search?
As the entire Patent Infringement lawsuit depends on either the validity of the patent or proving that the product is not infringing. If we talk about invalidity, the new documents uncovered via the search must be better than the prior art on record revealed earlier by the Patent Examiner. Thus, a patent invalidity search is an all-out spell on the patent.
Now that we are aware of the relevance and scope of the search, let us have a look at the reasons when a patent invalidity search is warranted.
What are the reasons for conducting a Patent Invalidity Search?
The reasons for conducting a patent invalidity search are:
When a complaint of patent infringement is received from a patent owner.
When a cease and desist notice is received from the patent owner.
Prior to enforcing your own patents to regulate invalidity risks.
Prior to buying a patent to explore the strength of the patent
Oppose a recently issued patent of a competitor
Given that these are highly specialized searches, they are best left to experts like attorneys or patent search firms. When these searches are ordered, here are a few essentials that need to be provided to the party performing the search.
What are the essentials to be provided for a Patent Invalidity Search?
The documents which are to be provided for a patent invalidity search are:
Patent number and the detailed claims which you need to overthrow (till the time the entire claim set is at issue).
The target priority date.
The prior art that is already known to you
Objective behind conducting a validity search
Editor’s Note: For advance material on patent invalidation and clever tactics to invalidate a patent, click here.
State of the Art Search: What is State of the Art Patent Search?
To gain an overall perspective of a particular patent field, a State of the Art patent search is conducted over all the broad list of patent searches. It provides a longtime market advantage, by helping make strategic decisions at the corporate level.
How it does that?
Normally when we talk about Patent Search, they have quite a short-term focus which is narrow in use. The main concern in normally the novelty of a particular invention or the invalidity of an individual patent. On the other hand, a State of the Art search dives deep for a larger view.
What is State of the Art Search?
In a particular field, a State of the Art Patent Search is a comprehensive review of all the patent or non-patent literature. The main aim is to make a big picture of the state of play in a defined technology field. All the non-patent literature in a particular field can also be included in it. Patent Landscape Search is also present which is another way of assessing the State of the Art and attaining a more visual indication of what is going on.
When is State of the Art Patent Search required?
The State of the Art patent search is useful in two situations:
When you want to determine the research direction;
Upon entering a new field either through investment or acquisition; or
Just to check what is out there.
Let’s have a look at both of these scenarios in detail.
Entering a New Field
Before entering a new field, a State of the Art Search should be carried out to get a clear picture of the latest developments and the areas of the field that have been pursued beforehand. It can be a great aid to find out the competitiveness of a particular field and the likelihood of long-term profitability.
Finding out Research Direction
A State of the Art search can be helpful for organizations which are already active in a particular area to determine the most suitable future direction for their research by understanding the latest developments in the field or by rethinking what has been done in the past.
What to search in a State of the Art Patent Search?
A State of the Art Patent Search is done to captures all relevant references that relates to the technology of interest. Generally, if we have to compare, when you are going for this type of search, the technology of interest is a bit broader than what you would select when you are going for a patentability search. It should be wide enough to capture relevant ones but at the same time should not unrelated documents.
Why State of the Art Patent Searches are counted as a wise investment
Corporate strategy for a majority of the organizations is often in sync with IP strategy, and it difficult to formulate an IP strategy without an idea of the existing state of the art i.e. what are other companies in the domain are doing. This is where the search serves as a ray of light as it helps organizations ensure their current course is still the most likely to bring out the best result for shareholders and investors. In today’s age, Data>Opinions and state of the art provides just the right data that helps C-suites make better-informed decisions. In other words, it’s just the wisest investment that helps make other wise investments.
We explored four different yet some of the most important types of patent searches that exist. Each has its own relevance and its own set of applications. Some of them are not even mandatory but are a wise investment, which reaps its returns in the long run. To give an analogy, consider them like buying an umbrella. It doesn’t rain often but when it does, the umbrella protects you from getting drenched in the rain. If you consider that the chances of rain aren’t much and not have one and when it actually rains, you are the one getting drenched. These searches are just like the umbrella, you might not always need them, but when it rains, you’d be thankful to have it by your side.
You have an idea. You feel it’s revolutionary – Maybe it’s the next Uber and you think you can make millions out of it, only if the idea sees the light of the day. You are also aware that commercializing the idea alone won’t guarantee your success, there would be hundreds of spin-off products hitting the market within a month if your invention idea takes off. You need to protect your idea. You can do it by any form of IP, Patents especially would help in this case.
Now before you go running to the patent office to get a patent, there’s a lot you need to know. Getting a patent is not as simple as getting a copyright/trademark, it’s much complicated, time-consuming, and even expensive.
Before filing a patent, you ought to be aware of the nitty-gritty of patenting and patent law – the costs incurred, the need for conducting patentability searches and how to go about it, maintenance fees that ought to be paid during the lifetime of a patent, the relevance of provisional patents, and much more.
PS: At this point, we are assuming that you are aware of what patents are, its relevance and the different kinds that exist – Utility patents, Design patents and, Plant Patents. We would refrain from reiterating these here and for the ones uninitiated, this article would help – What is a patent? – A detailed overview.
We’d be covering all these topics in the post today but before we go about it, an important question needs to be answered:
Does my invention warrants a patent?
The answer to this question, in essence, could be found by answering a few questions (listed below), which would reveal whether your invention really needs to be patented or not.
Is my invention of any use to the society?
Is my invention original and unique enough to acquire a patent?
Do I have enough money, time, and patience to obtain a patent?
If your answer to all the above questions is yes, you should acquire a patent on your invention.
Now, just because you answered yes to all of these questions does not necessitate that you would actually get a patent. Your invention will only get a patent granted if it satisfies the following criteria:
It is unique, and no one has even before thought, created or upgraded a similar invention.
It solves an issue and has been devised for a purpose
It is a not an obvious creation.
Now this question might occur to some of you –
How to find whether an invention is patentable or not?
In other words, how to determine the uniqueness of your idea.
The short answer is – Conducting a thorough search, which would help understand whether your idea/invention is not something that has already been/is already being worked on by anyone across the globe.
How does one go about it? You ask.
Well, there are two ways to do it. You can do it yourself or hire a patent attorney to conduct the search for you. If you are the DIY kind, self-search can be a great option, otherwise, it is always advisable to hire a patent attorney to conduct a patentability search, to ensure that your idea suffices the criteria, and thus is granted a patent.
How to conduct a patentability search by yourself?
You can conduct a patentability search by yourself, by following this step-by-step guide made available by the USPTO for patentees. Though the criteria differ slightly for patent offices of different nations, this guide can be a good starting point for your search. It is to be noted that one undergoes each and every step mentioned below to ensure a thorough search.
Speculate your idea: Use keywords to find whether your idea has already been conceived/worked on by someone or not.
Conduct a search on the USPTO website: Find out the categories and subcategories that are somehow related to your invention. Make sure to use specific words and umbrellas for the search under Cooperative Patent Classification (CPC)
Scan your classification: Review and scan the classification that you are searching under CPC section.
Review issued patents: Make sure you review all the issued patents that relate to your invention under CPC.
Gain deeper insights through issued patents: Perform an in-depth research on the patents that you think could relate to your innovation.
Review published patent applications: After scanning your classification under CPC, find out whether any published patent applications are available for the above-mentioned classification. If yes, review them too.
Widening the scale of search: If this still does not satisfy your inner instincts, then conducting a thorough search on other platforms/patent databases (listed below) is a good idea.
USPTO Patent Full-Text and Image Database (PatFT)
USPTO Patent Application Full-Text and Image Database (AppFT)
Patent Application Information Retrieval (PAIR)
Public Search Facility
Patent and Trademark Resource Centers (PTRCs)
Patent Official Gazette
Common Citation Document (CCD)
Search International Patent Offices
Search Published Sequences
Patent Assignment Research
Related Read: Different types of Patent Searches – Everything you need to know
Hiring A Patent Attorney
Self-search is considered as one of the ways for finding the uniqueness of the creation, however, hiring a patent attorney is always advisable for various reasons. One of the reasons being the vast expertise of a patent attorney, which include filing a patent in various countries keeping in mind the different set of rules for each PTO and the following cost structures.
Further, obtaining a patent has nuances attached to it and even if a minute yet essential detail is missing from the application, then chances are, your application may get rejected – due to which you will have to repeat the entire process again. Therefore, to avoid the hassle, it is better to hire a patent attorney to conduct the search on your behalf.
Hiring a patent attorney comes with its own set of pros, which include:
Secrecy: They are bounded by law to make sure confidentiality is maintained for a client.
A Step-by-step guide to filing an application: A lot of hassle is reduced when one knows how to file a patent quickly
Value for money: Investing in professional assistance is never futile. It saves the resources which one would have wasted, if they went the DIY way.
Well-informed and updated: Attorneys and professionals remain at their toes to understand the effect of the changes made by patent related verdicts every now and then. This is a major pro which makes it easier for your patent to get issued faster.
Now that the search is done and you found that your idea is patentable, the next step is filing the patent application. Before you go ahead, it is to be noted that procuring and maintaining a patent is an expensive process.
How much does it cost to file a patent?
Below is a general overview of the costs to file and obtain a patent in the US.
Filing a utility patent along with a professional search generally costs between $5000-$15000
Filing a design patent alone along with a professional patent search generally costs between $2600-$5000
Filing a plant patent along with an IP professional or attorney patent search costs around $4000-$8000
Note: The cost for utility patents increases along with the complexity of the invention. For details, check out this article – Cost of a Patent in the US.
Further, to obtain a patent, one also needs to incur the following types of expenses:
Maintenance fees (that need to be paid thrice during the lifetime of a patent)
Now that you are aware of the costs and have made your mind to procure a patent, here’s how to go about it. We’ll start with the basics: Filing the application.
How to File a Patent application?
It is often advised that once you have an idea, you need to file a provisional patent application, as the court gives priority to the first inventor to file in the US.
A provisional patent application, for the uninitiated, is a legal document that provides a short-term security to an invention as it helps the patentee obtain the “Patent Pending” title which gives the inventor some extra time to walk the perfection path; get an opportunity to attain quick & immediate commercial promotion, and make arrangements to file a non-provisional patent application post 12 months. Generally, the cost of the same is comparatively lower when compared to a non-provisional utility patent.
$65 – for Micro units
$130 – for Small units
$260 – for Large entities
Steps to file a provisional patent application:
Filing a provisional application is much simpler, time-saving, and cost-effective as compared to filing a non-provisional application. The three major components of a provisional application are:
A detailed description of the innovation
Any essential drawings
The USPTO filing fee
Detailed description of the innovation:
The following details constitute the detailed description of the innovation.
Name of the innovation
Need for the innovation
Details regarding drawings
Elements of innovation
The process of conducting the invention
How an innovation is used in the best possible manner
Benefits of the invention
Best mode of innovation
Like a nonprovisional application, the names of all inventors should be disclosed while filing a provisional application.
Any Essential Drawings:
To make others understand the innovation one has to incur drawings in the application. A detailed description alone would not do. Drawings are essential if one plans to obtain a non-provisional patent in the later stages as the examiner at PTO would examine the provisional application to make sure that it is related to the same innovation.
Below is the format for professional illustrations that need to be added while filing a provisional application:
A view from any angle (top, side, diagonal)
Labeling Numerals (sheet, figure, reference)
Pie-charts or flowcharts
Broken lines or straight lines
Colored or blank & white images
Handwritten or electronically generated drawings
Unlike filing a provisional patent application, filing a nonprovisional application is more complex, lengthy, and intricate to file. Further, filing a nonprovisional patent involves a lot of rules and making even one single mistake could cost the inventor the grant.
On the other hand, filing a provisional application will get you a year’s period of time to understand the following three things and help determine whether to go for a nonprovisional patent or not:
Does the invention make sense?
Is anyone making the similar product?
Is it worth undergoing the hassle for filing and attaining a patent?
Once you have the answers, the next step is to file a non-provisional patent application, which in simple terms means normal patent application, which when granted can get you 17 years of rights to exclude others from selling, importing or infringing on your invention.
Citations – How to cite references?
You conducted a search and came across references that is similar to your idea/ the ones you have added to in your invention. Now you would need to submit these references as citations to let the examiner know the existing state of prior art.
You could add these citations in a prescribed format. There are basically five citation styles to choose from, which are:
APA: This citation begins with the last name followed by the first initial of the innovator. Also, the year in which it was invented is mentioned in italics.
MLA: This has a format wherein the last name, the first name of the inventor is mentioned followed by the day-month-year format.
Chicago: In this format, the last name is followed by the first name along with the application number and the patent number.
ACS: It is the briefest and simplest form of citation. All it includes is the inventor’s name, the country, the application number and the year.
CSE: There are two ways of citing an invention here. In the first one, the date is followed by the name, application number, the country, and in the second way the date is mentioned after the name, the application number, the country.
After scanning and citing the invention, one needs to figure, what kind of innovation is covered in the application and what patent is required for the same. It can be any of the following, based on what is covered in the application.
Utility Patent: Items of manufacturing, machinery, and composition of useful matter
Design Patent: Sketch or layout of a machinery
Plant Patent: Discovering a new breed of plant or producing a hybrid plant
Next, you need to determine whether you want to file an international patent application or a U.S patent application will do.
What to do if you want an International Patent Application?
OIPC has the following programs to help patentees obtain patent protection throughout the globe.
Collaborative Search Pilot Program: This program allows the patentee to scan their invention across the globe in multiple offices.
Cooperative Patent Classification: It is basically a merger between USPTO and European Patent Office to deliver a simplified and a common classification scheme to the patentee.
Global Dossier provides one-step access to patentees to scan their application across the five largest patent offices across the globe.
Patent Prosecution Highway has been introduced for speeding up an application process for quick possession of the patent.
International Patent Legal Administration: It assists, develops the policies and rectifies the legal issues of a patentee.
If one needs to file a patent in more than one country, they need not file it separately for each country, in fact, with the help of Patent Cooperation Treaty (also known as ‘The International Patent System’) an application can be filed collectively for obtaining patent protection in different countries.
To know the costs of obtaining a patent in major jurisdictions across the world, click here.
Now that we have gone the long way and filed the patent with the PTO, one needs to wait for the issuance of a patent. For the issuance, the patent needs to be approved from the patent office which follows a process as well.
The Patent Application Approval Process
The patent application approval process generally can be explained through these three steps:
Once the application is filed, it will be examined by the examiner of USPTO. If he feels any important information is missing from the application then he shall be raising one of the two notices. This notice helps to understand what missing information you need to provide, will provide you a re-submission date, and will also provide a new examination filing date.
After acquiring First Office Action from USPTO the prosecution stage begins. In order to earn easy and quick approval, make sure you undergo Request for Continuing Examination stage.
RCE is one of the best ways to speed up the pace of the examination process. One can do so using any of the three following ways
The Premium Mode:
The most common way of accelerating the examination process is to sign up for USPTO’s “Track One” process. Here a patentee has to pay an extra application fee ranging anywhere between $1000-$4000, as a result of which their application gets ahead of all the other applications. Usually, within 12 months of filing, the application process comes to a final conclusion with the help of this mode.
Interaction with The Examiner:
Having a direct conversation with the examiner of USPTO does surely speed up the entire process. However, the entire conversation regarding the same happens through written mode which can ultimately make a patentee impatient and depressed. Though now this mode of communication is changing and telephone or video calling is preferred by the patentee to build a relationship with the examiner.
Patent Prosecution Highway:
Another way to accelerate the examination process is to use the ‘Patent Prosecution Highway’. Under this method, the examiner scans all the relevant information and results that have been disclosed by a foreign patent examiner while studying the application at the foreign patent office. This link covers the subject beautifully in detail. Click here to visit.
At this stage, all the patentee claims get approved. However, if some claims get rejected, then an applicant can always appeal for the right to amend the claim.
Rejection is a major part of obtaining a patent.
Till now, we have understood that acquiring a patent is not at all an easy job, in fact, the intricacy increases at every stage. Sometimes, in the process of obtaining the patent, most applications get rejected. Here is a list of rejections that one may undergo after filing a patent application:
Rejection of Claims
Rejections Disagreement with Objections
Rejection Based on Prior Art
There is an availability of options for applicants who have received the final rejection, and they are:
Amendment: With amendment, an applicant can present the documents or crucial information which was not presented before.
Appeal: Making an appeal by issuing a note of appeal to the Patent Trial and Appeal Board after the application has been rejected twice by the examiner of USPTO.
Interview: After the final rejection, the examiner may provide a chance to the applicant to resolve the problems and resubmit the application before issuing a note of appeal.
After Final Consideration Pilot (AFCP): This is an important step taken by USPTO in order to bridge a proper communication channel between the office and the applicant. This method has resulted in compact prosecution.
Requests for Continued Examination (RCE): This request has to be filed prior to the waiver of the application. It is a prosecution appeal done by the applicant even after attaining the final rejection.
Abandonment of The Application: Not responding within the stipulated time period or within the extended time duration results in total abandonment of the application.
Once the patent has been obtained by the applicant, there is the maintenance fee that he has to pay on a recurring basis to keep his patent rights alive.
The maintenance fees that a patentee have to pay after acquiring the patent are listed below:
Once the patent is issued in the name of the patentee then he attains an official permit to own, use, update, sell the idea or machinery or design he has acquired a patent for.
This brings us to the end of this piece: from idea to patent. Now that you are aware of all the nitty-gritty, use this information to protect your idea, in the jurisdiction of your choice. If you need more information, feel free to reach out.
I was leaning in my chair while watching those bees through the steam of my coffee. They were four in number, flying from one plant to another, from one flower to next, collecting the sugary nectar.
When they were fully loaded, which was a task completed sort of thing for them, they flew back. The flowers of those plants – were quite lucky, I thought – could now reproduce with greater variety.
The flying train of those bees on the flowers, meanwhile, reminded me of one of the recent projects that we received some days back from a client on “Call Transferring in SIP”. The client suggested us to thoroughly check the IETF standards.
The bees do it naturally, I thought, and we do that, too. We also cross-pollinate ideas to find the nectar.
In the beginning of the project, we followed the conventional path – searched patents and IETF standards – and found the same concept published after the priority date. To top it all, the research papers that surfaced also had a later publishing date. In the due course, it became arduous to find any patent as well as non-patent literature disclosing the concept before the priority date of the patent.
Time and again, we find ourselves in such situations. It is at those moments when we live by this saying at GreyB:
If a project gets harder, challenge yourself to conduct an even stronger research.
Way back in 2011, I read about a tool by Broad Institute of MIT and Harvard that can detect patterns in a sea of data. I thought of trying the same thing. I analyzed the data that I had, to connect the dots and check if there are any subtle patterns lurking in the set that can give me what I am looking for.
After spending few minutes, I spotted one such pattern. I observed that the subject patent was researched a lot at the University of Columbia. Not only this, I also found that the inventors of the patents were associated with the university. There were lots of patents and research papers from this University too. Hence, I decided to search the conference papers and research papers from this University.
While exploring the University website, I stumbled upon a link directing to the FTP server of University that hosts its research papers, theses and conference papers.
After skimming through hundreds of research papers, I finally found something I was hunting for such a long time. I found some literature where inventors were among other authors, disclosing similar concept. The first author, however, was not among the inventors of the patent.
I also found one folder in FTP server hosting research papers of that researcher. Great find! I had the feeling that this was it. I started the grunt work and pored through all the research papers in that folder.
Voila! I finally found a paper discussing the same concept with publication date before the priority date of the patent under consideration. With the help of that reference, we were able to build a stronger case for validity.
In all this, the twist was that when we tried to open the same FTP link from the browser or search its content on Google, it didn’t appear. That project taught us two lessons:
NuCurrent has been very active in providing wireless charging solutions since 2009, which were commercialized in 2012, while Samsung introduced a wireless charging kit as an add-on to the Galaxy S4 around 2013.
After being introduced to Samsung at Consumer Electronics Show in 2015, both the companies collaborated officially under various confidentiality and non-disclosure agreements, as Samsung showed interest in NuCurrent’s solutions for improved wireless antennas.
Later in 2016, NuCurrent found that Samsung had used their wireless charging technology in their widely famous smartphones like Note 5 and Galaxy S6 Edge+ without attributing NuCurrent or informing them.
Riled, NuCurrent filed a lawsuit a complaint alleging trade secret misappropriation and patent infringement against the Korean tech giant.
It was speculated that emulating the sample coils provided by NuCurrent to inculcate wireless charging coils, the performance of wireless charging in the aforesaid devices was improved to a great extent.
NuCurrent suspects that the increased efficiency and low heat generation capability in their double conductive layers and multilayer multi-turn technology are a lot similar to what Samsung has used in their devices. Also, NuCurrent designed a wireless coil specifically for wearable devices which was used in Samsung Galaxy S3 watch.
Coming back to the case, there’s much more matter to it than what the proceedings reveal. NuCurrent filed multiple patents on their improved induction charging technology. These patents now have become the backbone of their infringement case against Samsung. The patents involved in this case are US8680960, US9300046, US8698591, and US8710948.
NuCurrent being a wireless power solution provider claims that Samsung used the solutions presented by their team for improving wireless charging of Samsung Galaxy S6 and implemented it in S7 and S8 against the confidential agreement between both sides.
Continuing our practice to analyze and generate some ideas on the strength of the patents involved in recent litigation, we took this case on our plate. We conducted a preliminary analysis on NuCurrent’s patent US8680960 in hope to find whether NuCurrent actually is the first company to invent this improved wireless charging solution or is there a relevant prior art out there, predating NuCurrent’s patents.
The patent US8680960 describes a method of using induction to convert power supply to drain and that too wirelessly. This is a popular technology and we were well aware of the fact that many companies have been working on it as their main operations. This is the first rabbit hole that we jumped in to look for hints of the prior art.
Going back to the time when the concept of wireless charging was really new, we found the company ‘Splashpower’ which has been manufacturing wireless chargers since 2001. There’s a strong chance of finding relevant insights among the 20 patents published by the Splashpower from before 2009 (the priority date of NuCurrent’s patent). Fulton Innovation, Toshiba corporation, the Schaffner group and Witricity have also been actively working in the wireless energy transfer domain with many publications taking us closer to the subject patent. Apart from the prominent companies, some reports published in 2008 by MIT researchers reveal a similar power transfer mechanism.
In the search for another lead for prior art, we headed over to the file history of ‘960 patent. After analysing the relevant classes used by the examiner, we found that five highly relevant classes presented in the citations were not considered by the examiner during his review.
Wireless charging has been a highly active technology in the market and the principles used in NuCurrent’s patent have been found in both conventional and non-conventional forms prior to the priority date. All of these references give a clear hint that the chances of finding a relevant prior art are extremely high and so are the chances of turning this case around.
In case if you’re interested in knowing in detail about all the references that we found and why we think that there can indeed be a relevant prior art somewhere out there, consider downloading our full preliminary report using the form below:
Creating a patent licensing strategy for circuit patents can be a challenging task. There are rare chances of finding a detailed schematic of products in a product literature. This makes identifying products infringing your patented circuitry expensive as well as time-consuming.
But there is little to worry, as I’m about to walk you through a 3 step process that will help you in licensing your patent when at heart of it lives circuitry claims. This is a tried and tested approach which we have been using to identify infringement for circuit-based patents and also for meticulous project execution for years.
The 3 Step Approach for Licensing Patents with Circuits in claim
Doesn’t the above circuit look complex at a first glance? By the end of this article, it wouldn’t be the case.
Let’s dive right in to find how the 3 step approach helps to license patents with a complex circuit. For analyzing such complex circuits, we follow the below steps:
In the first step, we divide the complex circuit into smaller individual blocks,
The second step consists of an in-detail analysis of each individual block,
In the third and final step, we interpret the complex circuit and further research for potential infringement.
Step 1 – Dividing the complex circuit into smaller individual blocks
Step 2 – Analyzing each block in detail
In an electronic circuit, multiple circuits can be used to achieve a similar function. Further, different arrangements of same circuit elements or different circuit elements can be used in the same circuit to achieve the same function.
But why we should focus on that, you ask? Let us explain this with the help of an example. In the United States, the doctrine of equivalents analysis is applied to individual claim limitations, not to the invention as a whole.
Further, under the doctrine of equivalents, the triple identity test states that the difference between the feature in the accused device and the limitation literally recited in the patent claim may be found to be “insubstantial” if the feature in the accused device:
Performs substantially the same function
In substantially the same way
To yield substantially the same result
as the limitation literally recited in the patent claim.
In the context of circuits, it means that if two circuits perform similar functions, they can be considered equivalent. Hence, in this step, each block is analyzed in detail to form multiple representations which will perform a similar function as the original circuit.
Below is a visual representation of the same.
In a similar manner, circuit variations of all the blocks such as A2, A3… are also made.
Step 3 – Interpreting the complex circuit & research for potential infringement
Now, for each block, we have multiple representations which will function in a similar manner. Next, various combinations of the complex circuit are formed using different permutations and combinations of the individual blocks. Thereafter, research is performed to identify potential infringement taking into account all possible variations of the complex circuit.
This three-step approach helps us convert – ‘an arduous research for a complex circuit’ into ‘a streamlined research for a not so complex circuit’. Also, it enables us to cover all possible variations and deliver more products infringing patents of our clients which would not have been possible with a conventional approach.
PS: We’d love to hear your thoughts on this 3-step approach. Chime in the comments section below and add to te conversation.
Authored By – Shikhar Sahni, AVP, Operations, Anoop Chauhan, Manager, Infringement Team, and Rohit Sood, Team Lead, Infringement
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Did you know that licensees pay huge licensing fees for Standard-Essential Patents (SEP)? Unfortunately, not all those patents qualify the criteria of being a SEP. Hence, in many licensing deals, a licensee can end up paying millions for false SEPs. How does that happen and how can it be avoided? The answer to the latter is by checking the essentiality of a standard essential patent.
Let’s answer the first question now.
The telecommunication standard setting bodies – ETSI, ARIB, CCSA – give assignees the option to declare their patents essential. The declaration databases of the concerned body, ETSI here, give comprehensive details of a patent declared as essential.
The catch, however, is that the concerned standard setting body is not liable to verify the claims of an assignee which pave ways for many non-SEPs to earn the status of a SEP. Microsoft, for instance, filed a complaint against Interdigital where it listed nine ways Interdigital had exploited Microsoft, among which one was tricking Microsoft by licensing non-SEP patents tied with its SEPs.
A study conducted by Cyber Creative Institute revealed that only 56% of the patents declared as SEP to ETSI are essential. The chart below depicts the ratio of actual standard essential patents to the total patents declared as essential for LTE Standard (essentiality ratio) by prominent telecommunication companies. The data includes both granted patents and patent applications.
Since the Standard setting organizations (SSO) don’t decide the essentiality of patents, these disputes usually go to trial where a court decides whether a patent is essential or not. Further, in most of the cases, hundred of patents are grouped together and a licensee doesn’t check essentiality of each patent present in the portfolio. This leads him to pay a licensing fee way higher than the appropriate value of a portfolio.
What is the Solution?
You can negate such instances and can save yourself millions. How?
By checking the essentiality of patents declared as a SEP. How do you do that? I have explained the same with the help of an example below.
How to Find whether a Patent is A SEP or not?
Let’s examine the patent US8045715B2 which is declared as a SEP under the 3GPP Standard TS 136 331.
The analysis revealed that the methods discussed in the patent are present in the 3GPP standard literature, making the patent essential to the standard.
For the same 3GPP Standard TS 136 321, I found a patent US7979768 which isn’t a standard essential patent, however, declared as one. How I figured that out is as follows:
The analysis revealed that Step 3 from the patent is not discussed in the 3GPP standards, but still the patent was declared essential by its assignee.
In other words, one can check the essentiality of a standard essential patent by comparing its claims to those of the standard. If they match, you have a SEP else it ain’t one.
In various patent licensing deals, SEPs play an important role in deciding the value of a portfolio. Plus, the number of loyalty disputes in IP is increasing with the passage of every day. Hence, it becomes imperative for a licensee to check essentiality of patents in a portfolio before acquisition.
NuCurrent Inc., a Chicago-based wireless charging equipment manufacturer earns Millions in Patent licensing every year, its licensees including the likes of Apple and Motorola. Did I mention they merely have 29 granted patents in their portfolio?
That’s the power of a high-quality patent portfolio. NuCurrent is not alone. There are multiple companies that make millions – and at times even billions – merely in licensing revenue. ARM Holdings, which makes all its revenue by licensing its IP, reportedly made $1.53 Billion in 2015 alone.
Patent portfolios, filled with high-quality patents do not just open a new stream of revenue but also helps organizations emerge as market leaders. One example is IBM, which is known for its innovation and has emerged as market leader in several domains. Its rigorous patenting practice coupled with innovation has given the company an edge over others over the years. Its patent portfolio, in addition to protecting the company’s innovations, brought billions in revenue for IBM till date, $1.19 Billion in 2017 alone.
One thing is clear from the three examples above. Licensing revenue or litigation doesn’t depend on the number of patents in a portfolio, as the number varies hugely for these three companies. In fact, what they have in common is the quality of the portfolio. High quality.
The advantages of having a high quality portfolio are multifold. Below we have listed four of the major advantages that would convince you why it is paramount to build a high-quality portfolio for your organization. Let’s have a look.
Benefits of High-Quality Patent Portfolio
You might be thinking this is an obvious point. Patents are sought to protect the core inventions of an organization, what difference would a high-quality patent portfolio make? A high-quality patent portfolio is crafted in a manner that it safeguards the entire product line by patenting all the features and any improvements made to a product by means of strong claims and divisional patenting respectively.
Claims of a patent are covered in a manner that it gets difficult for anyone to get around a patent, which could prevent any entity to develop a substitute product during the lifetime of a patent.
Though it is often debated that having such broad patents stifles innovation, if a company chooses to have such patents for defensive purposes, there’s no harm in it for anyone. Also, broad claims in patents help increasing monetization potential by increasing its scope.
Some people, however, are of the belief that if you use broad patents, there is no difference between the organization and a patent troll.
But if the focus is essentially to protect the core products of an organization, no matter how the patent is used, the patent holder has a (legal) right given by the government to exclude anyone from making, copying or selling the patented technology unless a licensing deal is signed between the assignee and the infringing entity.
Litigation is an important aspect of the lifecycle of a patent where the patent has to stand the tests of invalidity and novelty for the plaintiff to emerge as a winner. It gets very easy for a defendant to find some solid prior art after a deep analysis for a low-quality patent.
For instance, in Apple vs. Samsung patent lawsuit, when Samsung appealed to the court to invalidate the Slide to unlock patent on the basis of obviousness, after examination of the prior art documents, the court invalidated the Slide to Unlock patent reducing 120 million dollars that Samsung had to pay for infringing Apple’s patents. Do you think it would have been possible if the patent was of high quality?
If the patents are not strong enough, it gets difficult for the plaintiff to continue protecting its technology despite having a patent over it. Which gets us to our second benefit – A high-quality patent portfolio helps survive litigation.
You see, better safe than sorry!
Patents come with an expiry date, businesses do not.
But there are unfortunate times when a particular business isn’t profitable anymore and the company has the option either to cease operations or sell off one of its divisions to continue operations. In such cases, other than the direct revenues from the product line, value of the intangible assets like patent portfolio is calculated as well to decide the negotiating amount.
The benefit of having a strong patent portfolio in such situations is that even if a particular division is shut down; the intellectual property for the technology could still be used to extract maximum value.
For instance, when Nortel Networks, a telecommunication and data networking Equipment Company, filed for bankruptcy in 2009, the patent portfolio of the company was auctioned to regain some of the costs to pay off debts. With a very high-quality patent portfolio comprising of 6000+ patents, the portfolio was bought by the Rockstar consortium for a whopping 4.5 billion dollars.
In order to defend its operating system Android, Google took a drastic step and acquired Motorola Mobility for an amazing $12.5 billion. With 17000 patents in the portfolio, Google bought a shield that could protect it during the patent war. On October of 2014, after retaining the patent portfolio of Motorola Mobility, Google sold it to Lenovo for $2.91 billion. It is clear that Google purchased Motorola to acquire its patent portfolio.
The point is no matter what the circumstances are – a high-quality patent portfolio would always be helpful during negotiations. It does not just protect the products but also increases the overall worth of the company.
Being a solid believer in ROI, I often prefer things that have a high return on investment. Through the example of NuCurrent and IBM, we have explored two companies whose patents portfolio yielded them a high return on investment by means of licensing opportunities.
A solid portfolio can improve the return on investments on patenting and R&D efforts by improving licensing opportunities since everyone wanting to work in a technology has to acquire license over the major patents in a particular technology. And designing a high-quality patent portfolio often comprises of inculcating such star patents in one‘s portfolio.
Now that we have given you four awesome reasons to build a high-quality patent portfolio, go ahead and craft the changes accordingly. But only building a quality patent portfolio enough? No! You should know how to monetize these patents. To help you in that pursuit, I have a free guide with 4 strategies– top companies use them– that can help you monetize your patents without spending a single dollar on consultancy fees. You can download your guide here: click here to download
A couple decades ago, patent portfolios were considered to be one of the most indispensable assets of an organization. It was the time when quality was given more importance and filing patents was not a mere numbers game. Blind filing was extremely low and granted patents were normally considered to be valuable, both in terms of quality and face value of the patent.
But with changing times, there was a change in the way patents were being used. In the name of patent strategy, companies started filing hundreds of patents annually to get a lock over technology. With little attention given to quality and in the race to file before the competitors, the patents that were supposed to protect a technology most of the times were either so narrow that the technology wasn’t sufficiently covered or so broad that most of them were presumed invalid.
Continuation patent applications were filed to expand the scope of narrow patents and provisional patents were filed in the pursuit of getting an earlier priority date. This situation led to the exponential filing of patent applications.
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As a proof, consider the following situation- Back in 1911, when the millionth patent was granted, it had been 75 years since the establishment of the USPTO whereas, between Dec 1999 – May 2018 alone, 3.99 Million patents were granted in the US. The much speculated 10th Million patent is expected to be issued on June 26, 2018, taking which into consideration, 4 Million patents would be granted in the US in a period of 19 years, approximately 4100 patents issued every week.
The pace at which technology had advanced in the past few decades can be a good explanation for the rising number of patents filed and granted. After all, Innovation is supposed to be protected and filing patents is a good way to protect innovation. That pretty much explains the growth in the rising numbers of patent applications and thereby patents granted.
But there is still one question that needs to be answered- Were all the patents granted valuable to the assignee? Did each patent add value to the portfolio of the assignee?
Though there has been an exponential growth in technology leading to the exponential filing of applications, it is the way that they are filed that dampens its value. With little attention given to claim language and the lack of a proper prior art search, most patents that have been issued over the past few years are low in quality.
Most patents either lack a supportable infringement position, are clearly invalid after a thorough validity search or have poor claim construction that fails to adequately cover the invention. Sadly, all the three factors are a sign of low-quality patents.
Author’s Note: Low-quality patent filing is not inevitable. It can be avoided if one knows the reasons for low-quality filing and few remedial measures. To help you out of the rut, I’ve explained the reasons for the same along with its remedial measures in another detailed article, which could be accessed from here: Click here to avoid low quality patent filings.
How much is A Low-Quality Patent worth?
According to Eric Halber, a commercial litigator, 90% of patents granted are valueless. Here valueless doesn’t imply precious, it implies that 90% of patents that he reviewed in his 20+ years of experience had zero value.
Considering the above statement leads us to one question- How many valueless patents do you have in your organization’s patent portfolio? There is a high probability that more than a questionable size of your patent portfolio contains low-quality patents. A 50-50 chance. Those patents might either have poor claim language, are clearly invalid or lack a supportable infringement position.
So would having these patents in the patent portfolio of your or your client’s organization would serve any purpose? No. Instead, the goal should be to conduct a portfolio analysis to figure out the low-quality patents, which upon being discarded can increase the overall value of the patent portfolio.
How discarding low quality Patents benefits you?
Are you wondering how would discarding low-quality patents from your portfolio benefit you?
Consider the following instance — Your company has accumulated a large portfolio containing hundreds of patents covering multiple technologies. Now, you might have multiple patents which are of no use to your organization anymore and trying to make the most out of the situation, you decide to monetize your patents. Though there are multiple ways to monetize a patent, you decide the best course of action would be to sell them given the situation and find a prospective buyer. The deal amount has already been negotiated and the potential buyer gets a due diligence performed on this portfolio.
Now in case if your portfolio is robust and of high quality, there is nothing to worry about. But if there are any wrinkles/defects on this portfolio be it related to confusion among the ownership of the patents, or terms of existing licensing deal or low-quality patents which have nothing great to offer, chaos will ensue creating delays in the transaction and renegotiation of the deal value.
In those cases, it is a possibility that you might get lesser than what your portfolio is worth. Low-quality patents will, in fact, cost you a lot more than what they are worth. Hence, it becomes necessary to eliminate such patents from your portfolio so that even if a due diligence or any kind of portfolio analysis is performed, you would emerge as the winner.
How to Spot Bad Quality Patents in your Portfolio?
It is often noted that there are a few quality indicators that could be analyzed to determine the quality of a patent. Based on the study of the indicators, a patent could be classified either as a high-quality patent or a low-quality one.
What are the factors?
Normally, the quality of a patent could be estimated in one of the two ways- By performing a Subjective Analysis or an Objective Analysis.
What is Objective Analysis?
An Objective Analysis is usually automatic in nature where the strength of a patent is calculated by an algorithm based on a number of factors including, but not limited to:
The Rate of Forward Citations
Variation of Foward Assignees
When was the patent filed in the evolution of the technology?
The diversity of patent family
Remaining lifetime of the patent
Type of claims and much more.
Based on the study of these factors, the rank/strength of a patent is determined. To give you an idea, consider the example of US Patent US8671099 assigned to IBM. A subjective analysis reveals the following details about the patent.
Despite being ranked among Top 10 Patents for 2014 on the popular IPWatchdog blog, we could see that the patent had a rank of 12841 out of 57534, which means the patent ranks among the top 25% patents in IBMs portfolio. The snapshot of the tool also gives an overview of the overall ranking of the patent in various facets like its ranking in international IP class and US patent class.
For the curious soul: The patent ranking engine is free to use. Get your feet wet here.
Normally, the results reflected in the objective analysis are broad in nature and can only provide a general overview of the quality of the patent. The rank of a patent is a great indicator of the strength of a patent and lower the rank, higher the quality of the patent.
But, no matter how accurate, there are times when the objective analysis is not the best option. When the goal of the client is to estimate the quality of the patent portfolio of an organization, either for an M&A, IP acquisition or licensing purposes, a subjective analysis should be performed to decide whether it is a profitable move to invest in the IP or not.
What is Subjective Analysis?
A subjective analysis is usually performed by an expert searcher, being highly manual in nature and totally objective-oriented. Based on the objective of the client, the search is carried out by subject knowledge experts assessing patents on the following factors:
The Relevance of Portfolio to The Product Line
When the objective of the client is to conduct a portfolio analysis for the purchase of an IP portfolio, it is very important to identify the relevance of the portfolio to the client’s product line, as this can be a deciding factor whether the purchase should be carried out or not. Since a lot of money is involved in the process, a high-value portfolio would imply patents that can be advantageous to the organization acquiring the portfolio.
In such situations, after the high-quality patents are filtered, the rest of the portfolio could either be discarded (if the patents are of little or no value) or out-licensed to potential buyers dealing in the technology to reap benefits from the portfolio.
How can it increase the value of the portfolio, you ask? In the process of due diligence, such low-quality patents upon being detected early can give the patent owner a chance to get rid of those patents before the portfolio is valued prior to a sale.
As conventional wisdom states – “A well-groomed portfolio is always valued at the highest.”
The Current Phase of Technology Covered by the Patent
The Lifecycle of technology covered by the patent in question is an important aspect that can be a deciding factor for estimating the value of the patent. The value of a patent changes based on the phases of technology lifecycle covered in the patent. It is normally seen that patents are evaluated at the highest when filed during the development phase of a technology as the players are less and often patents granted in this phase form the base patents of a technology.
On the corollary, during the declining phase of a technology, patents covering the particular technology are valued at a comparatively lower price.
The value of a patent fluctuates depending on the current phase of technology lifecycle but it doesn’t have a direct correlation with quality of a patent. The point that should be noted here is that once a technology has reached the other side of the curve (i.e) it reaches the end of the declining phase and is replaced by a totally new technology, the patents covering the technology are worth nothing. Even the high-quality ones.
For instance, consider the instance of Plasma technology. Despite being used in almost all the first few generations of television, after being replaced by LCD and LED technology, the patents that covered the technology were worth nothing. Despite having a high quality, the current value of those plasma patents is zero.
So the question is – Can such high-quality patents where the lifetime of technology has expired a good thing?
Believe it or not, these patents also fall in the league of bad patents despite having a high quality because there are zero chances of making money out of it. The better option is to discard such patents so that the portfolio could be optimized for the time when the need arises.
Litigation Potential of the Patent Portfolio
There are two phases in the life-cycle of a patent- Patent prosecution and Maintenance. It is often seen that during the maintenance phase very few patents invite litigation. Only a very small fraction of patents that are granted get litigated and become stars that could be a potential source of infringement royalty payments or licensing revenue.
In the IP world, these star patents are highly sought by everybody as they are similar to a hen that lays a golden egg every day. Be it NPEs or practicing entities, these patents are valued at the highest either with the aim of collecting royalties or strengthening the IP for the product line of an organization.
Consider the following chart depicting litigation potential of various patents in a portfolio. Unlike rank of a patent, here higher the number, better the quality of patent. Consider the example of patent US690417B2 titled “Method of manufacturing cigarette suppressing the spread of a burn and apparatus for manufacturing cigarette suppressing the spread of a burn”. The analysis reflects a 98.6% litigation probability which means that patent has a very high infringement potential and is a great candidate for litigation.
Click to Enlarge
Such patents are quite a hit and reap maximum value if enforced. Patents with a high litigation potential are indeed high-quality patents, but is it the case that patents that do not have a litigation potential are of low quality?
Patents that do not have litigation potential aren’t low quality, but retaining such patents is of no use either if it lacks a licensing potential or does not cover any product being manufactured by the organization or competition.
To be precise, bad patents aren’t just patents that have poor claim language, are presumed invalid or lack a supportable infringement position. Bad patents also include the ones that have zero licensing or litigation potential, covers a technology that has reached its nadir or is low in strength when compared to peers.
The best decision is to get rid of such patents so that the portfolio can be optimized and future patents are filed based on the needs of the organization. Discarding such bad patents can lead to an optimized portfolio where every piece of IP serves a purpose and the benefits of existing IP can be reaped while saving millions in maintenance costs.
Money saved is money earned. Isn’t it?
Performing a patent portfolio analysis on a half-yearly or annual basis can help an organization discover the best and discard the worse from their portfolios. The clutter-free approach can save maintenance fees and help companies determine the direction in which the production or development should take place based on the analysis of the existing IP. When each piece of IP is utilized and a patent becomes a product, not just the value of the portfolio increases but the value of the company also increases.
And that’s the reason why you too should figure out and discard the bad patents from your portfolio. Use the money saved in maintenance for filing new patents.
Authored by: Anjali Chopra, Research Analyst with the help of Shikhar Sahni, General Manager, Operations
A Gift for you: Apart from getting rid of bad patents, you should also have tricks up your sleeves to monetize patents in your portfolio. To help you in that pursuit, I have a free guide with 4 strategies– top companies use them– that can help you monetize your patent without spending a single dollar on consultancy. Yes! It’s a DIY guide. Download it here: click here to download
Most of the cases filed by PAEs in past decade involved patents covering software technology because of software patents easily prone to abuse. Recent such example is of Mesa Digital which has sued smartphone manufacturers like Lenovo, Blackberry, Sony, and Amazon.
What has Mesa Digital done? Which patents and what kind of patents are involved in the lawsuit? And most importantly, are these patents strong enough to survive a lawsuit? Read on and you will find the answer to these questions:
Mesa Digital – A new player in games of Patent Assertion Entities
Mesa Digital has no digital presence. The only proof of their existence is their patent portfolio and the lawsuits. Digging a bit deeper, we found it to be related to an IP law firm OL Patents or Ortiz & Lopez, PLLC.
FYI: The founders of the law firm are inventors of the patents in the lawsuit. Apart from the four companies sued where Mesa is plaintiff, OL Patents sued Alphabet and HP as well. Further, the patent portfolio of Mesa, which consists of 65 patents, covers semiconductors and multimedia devices.
In this analysis, we are considering two terminally disclaimed patents, US9031537B2 and US9646444B2 , titled Electronic Wireless Hand Held Multimedia Device. The US’537 and US’ 444 cover a hand-held device with capabilities of communicating over different network protocols, houses a touchscreen, and a camera. To make it simpler for you, both of these patents cover a device quite similar to modern smartphones and tablets.
The devices infringing the patents are famous products by the four companies. In the court documents, Mesa provides a detailed analysis of how different claims of its patents read on features of Sony Xperia XZ1. You can find a similar analysis for Lenovo’s P2, P260, and P250 smartphone. Blackberry got sued for DTEK60 and DTEK50 while Amazon if for its fire tablet.
The outcomes of these lawsuits are important because if Mesa wins – an unlikely event as per our analysis – a lot of smartphone and tablet manufacturing companies will become vulnerable to these 2 patents.
What does our analysis say?
We kick started our analysis with a product having all these features. Smart communicating devices have been in trend for several decades, and by the time these patent came into existence, there were a lot of companies racing to manufacture next smartphone. Companies like IBM, Sony, Microsoft, etc., were highly active in researching and manufacturing similar devices.
Thereafter, we ran multiple key-strings on Google Patents having relevant terms missing in the examiners’ search reports. We found relevant companies which further led us to products like NEC Mobilepro 770, Sony VAIO PCG-C1X (CIR), Palm Pilot, Casio E10(11), Nokia 8110, Philips Nino, Palm III and 3COM Palm VII. Using these products, the patents could get nixed under section 103.
We searched the wireless communication tech areas like WiFi, IEEE, GSM, and HSDPA. One product led to the next and finally, we found some relevant results. We have put together all these evidence in our preliminary report.
The report also includes a detailed list of potential areas where one could find a knock out prior art. You can download the report using the form below:
Every week we perform a preliminary analysis of such patents under litigation to check their probability of survival and possible areas where a reference could be found. If you want to get these preliminary analysis reports delivered directly on your inbox, consider subscribing to the email alerts by filling the form below: