From idea to commercialization, EIP help clients to build actual patent strategies to protect and manage their patent portfolio.
Novelty & Patentability Search
A patentability assessment is carried out to determine whether the idea is ‘patentable’ or not. This involves not only ascertaining the novel aspect of the idea but also verifying the obviousness of an idea to a person skilled in the art and utility of the idea vis-à-vis its industrial application. A patentability assessment typically involves conducting a search for patent and non-patent literature disclosing content similar to those of the idea to be patented.
At EIP we strongly recommend patentability assessment prior to initiating drafting of the patent application, as it not only helps in ascertaining the patentability of the invention prior to indulging in the expensive process of obtaining a patent but also helps in determining the boundaries of state-of-art so that the patent application can be drafted in an optimal way. The invention is also evaluated for commercial potential as well. The various factors that we consider in evaluating the commercial viability of an invention include: problems solved, potential applications, market size, potential licensing opportunities, funding/venture opportunities, and challenges to commercialization.
Invalidity and Validity Search
An invalidity search involves conducting a thorough patent and non-patent literature search to identify prior art references / literature that might invalidate the patent in contention. The invalidity search report includes the details of potential prior art literature along with bibliographic details and a mapping of the claims to the relevant text of the prior art literature / references. In the invalidity search, we also analyze other legal aspects such as antecedent and enablement issues, non-compliance to duty of disclosure, etc. These invalidity search / prior art search report help in strengthening our client’s invalidity assertions. All these findings are presented in the form of claim charts.
Freedom to Operate (FTO)
An FTO study is conducted to determine whether introduction of a product in geography would infringe upon valid IP rights of an entity residing in that geography. An FTO study is typically conducted by identifying active patents or patent application publications that could pose as commercial barriers in the jurisdiction targeted for the manufacture, sale, use or export of the proposed product.
Therefore, FTO study serves as an effective risk assessment tool for assessing commercialization of a given product at a given time, and in a given jurisdiction.
At EIP, our team of experienced professionals first develops an in-depth understanding of the product features, and, thereafter conducts a detailed search for identifying active patents or patent application publications that map on to the product features. The claims of the identified active patents or patent application publications are then analyzed for potential infringement by the product features. The findings of the FTO study are collated in a customized report based on client’s requirements.
State of the art search is performed to foresight a comprehensive picture of a particular technology area. Such searches help you to map latest development in the specific technology, and make strategic business decisions.
At EIP, our team of experienced professionals provide an exhaustive prior art search report in the respective fields including applicants and inventors, filing date, publication date, assignee, date of grant etc. Our search strategy is comprehensive and includes a variety of strategies including keywords-based searching, patent classification based searching for example, CPC, IPC, USC, FI, F-Term based searching, assignee and inventors based searching, citation search/spider searching. The search report helps you to identify new avenues for research and development, merger and acquisitions, and potential competitors.
Infringement search is conducted to aid infringement litigation. An Infringement search is focused on invalidation of claims of a patent.
At EIP, a team of experienced professionals develop an understanding of the claim(s) of the patent to be invalidated and conduct a targeted search for identifying patent/non-patent literature relevant to the claims of the patent under consideration.
To obtain a patent for an idea, an application disclosing the idea must be filed with the patent office of the respective jurisdiction in which protection for the idea is sought. At EIP, team of experienced patent professionals & patent agents, draft patent applications to client’s specifications.
In addition to possessing domain expertise and sound knowledge of guidelines stipulated by the patent offices for filing a patent application, a person drafting a patent application must also possess imagination, as drafting a patent application requires skill. The patent application must be drafted to cover not only the disclosed content but also should be designed to be foolproof to minor tweaks and future changes in standards. So the boundaries for protection sought should be broad enough to preclude others from bypassing the coverage area of the patent application with minor tweaks, but also ensure that the patent application does not intrude into the boundaries set by other patents.
The patent drafting team at EIP has just this kind of fine-tuned patent application drafting experience that it has gained from working with various in-house IP counsel, IP attorneys and R&D heads from Fortune 500 corporations. We are proficient in drafting patent applications to be filed at the Indian Patent Offices, USPTO, EPO, and other patent offices all over the world.
At EIP, we realize that the needs of our clients from R&D companies to IP attorneys are different. Our adaptability enables us to mould ourselves as per the client’s requirements. We provide services from provisional patent application drafting and regular patent application drafting to drafting of individual sections of the patent application, such as drafting of the claims section, the description section or just the illustrations.
At EIP, We provide patent filing and prosecution support services to our clients. As a part of filing patent applications with different patent offices and providing prosecution support, we assist our clients in:
- Preparation of documents (as mandated by different Patent Offices) for filing of provisional/ non-provisional patent application
- Preparation of documents (as mandated by different Patent Offices) for filing of PCT application/ Convention application/ National Phase application
- Responding to office actions communications issued by different patent offices during examination of the patent application for securing grant of a patent
A patent analytics assignment is conducted for obtaining an overview of the patenting landscape vis-à-vis a technology domain. Such assignments are also referred to as Landscape studies. Typically, landscape studies are useful for:
- Identifying the technology curve
- Identifying the key players operating in a technology domain
- Identifying the R&D focus of key industry players
- Identifying seed patents in a technology domain
- Managing the patent portfolio of the Client
- Identifying licensing opportunities
At Eip, we develop an understanding of the technology under consideration and conduct a search to identify patents and published patent applications relevant to the technology under consideration. The identified patents/ published patent applications are then classified into a broad classification system (also referred to as taxonomy). The classified patents/ published patent applications are analyzed by a team of trained professionals for identifying trends, seed patents, R&D focus of key players, etc. The findings of the landscape study are collated in a customized search report based on client’s requirements.
Another key area of patent analytics is Gap analysis (also referred to as white space analysis). It is primarily performed to identify the unexplored gaps or white spaces in a technology area that have a potential for innovation. White spaces in a technology are identified after conducting a preliminary landscape study of the technology. Gap analysis enables a client to identify and exploit areas where R&D may be conducted for generating innovation. Moreover, gap analysis allows the client to gain a competitive edge in the market.
A patent specification should contain one or more patent drawings, whenever the nature of the case requires a drawing to understand the invention. The patent drawings may also include illustrations which facilitate an understanding of the invention (for example, flow sheets in cases of processes, and diagrammatic views). The patent drawings must show every feature of the invention specified in the claims and are required to be in a particular form. The patent drawings must be such that they can be readily understood by persons using the patent descriptions.
Our team of patent illustrators utilizes state of the art software to produce high quality patent drawings from rough client sketches, photographs, prototypes and sometimes even from plain description. The high quality patent drawings supplement the content described in the description section to bring out true flavor of the disclosed invention.
Patent valuation is a complex job. However, patent valuation becomes mandatory while conducting a variety of transactions such as transfer of ownership (licensing or assignment) of the business or patent, due diligence, collateralized financing, financial reporting and taxation matters. Further, patent valuation may also be needed to support litigation matters, such as quantifying patent infringement damages. Furthermore, patent valuation provides insight into decision making related to allocating the expenditure in the research and development activities.
At EIP, we have committed team for Patent Valuation. We combine our experience of handling such matters with knowledge of valuation techniques to assist clients in arriving at a ‘fair value’ for their patent.