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Patent: Use of Common Sense in an Obviousness Analysis

patent-use-of-common-senseThe Federal Circuit decided Arendi S.A.R.L vs Apple Inc. in August of this year.  The Court ruled that the Patent Trial and Appeal Board misapplied the law on permissible use of common sense in an analysis. While reversing the PTAB’s final decision, the Federal Circuit held that the PTAB’s application of common sense to supply a limitation missing from a prior art reference was conclusory and unsupported by substantial evidence. The Federal Circuit explained the proper use of common sense in an obviousness finding and helpful guidance for practitioners.

Being sued by Arendi in district court for infringement of US Patent 7917843, the defending parties Apple, Google, and Motorola Mobility filed a petition for inter partes review of the declared claims. The district court proceedings were then stayed pending completion of the inter partes review proceeding.

The claims of the ’843 patent are generally directed to techniques for locating information in a displayed document. Petitioners maintained that a single prior art reference “Pandit” rendered the claims obvious. Pandit discloses methods for recognizing predetermined types of text in a body of text and performing operations pertinent to the recognized text.  Petitioners cited the recognition of telephone numbers as text and the operation performed as adding the recognized telephone number to an address book, in the specific embodiment of Pandit. The PTAB, agreed with Petitioners that, as a matter of common sense, the technique disclosed in Pandit can be presumed to perform a search of the address book using the identified telephone number in order to avoid duplicate telephone number entries.

The Appellees argued that the process of searching for data in a database was well known at the time of the invention. But, they were unable to provide a reason as to why it would be proper to extrapolate from this general knowledge to specifically add a telephone number search to the Pandit reference.

In sum, the Appellees’ conclusory statements and unspecific expert testimony were insufficient to invoke common sense to supply this key limitation.

The Federal Circuit’s opinion provided guidance regarding the application of common sense in an obviousness analysis for patent prosecution lawyers and patent litigators.

On the patent prosecution front, an applicant confronting an obviousness rejection based in part on common sense can use this case as leverage and press the patent examiner to explain, specifically, and with evidentiary support and the reason of  limitation absent from the prior art. For patent litigators, the decision is a helpful guide for parties on both sides of an invalidity case.

Criticality of claims in an infringement case

Preparing the claims comparison chart is a primary step in studying a patent infringement case. MaxVal’s Claims Set Comparison tool and Claim Chart Generator help in analyzing and especially illustrating the elements of the claims.  Claim charts are automatically generated in a ready-to-use format.

Patent and litigation attorneys have relied on MaxVal’s Claim Set Comparison and Claim Chart Generator tools for several years.

Key features of the Claim Chart tools:

  • Automatically creates a downloadable claim chart for a U.S. patent or published U.S. application.
  • View the Independent claims separately for a better view
  • Compares two sets of claims and highlights the difference between them
  • Helps figuring out the difference between the U.S. claims and the foreign counterpart claims
  • The claim charts (including PCT and EP patent/publications) can be generated in three different formats: Word, Excel or HTML.

The illustration below shows a comparison of claims sets and patent drawings for the patent #791843

Claims Set Comparison - Patent US7917843.PNG

Fig-1: Snapshot shows comparison of the claims at publication and granted stages for patent #791843

Patent drawings-843.PNG

Fig-2: Patent drawings of ‘843

Create your Max-Insight account today to start your free trial and access a bundle of patent tools trusted by hundreds of patent professionals.

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Tips from Experts: For Better IDS Management

 

Tips from Experts - For Better IDS Management

Eliminate Unnecessary Cost:

1. Review the materiality to the patentability of existing claims: It is important to review the reference for materiality to the patentability of existing claims by the attorneys/applicant before the submission. Also, perform a good prior-art or pre-filing search to identify all the relevant references and cite them, which can avoid RCE fee at the notice of allowance stage.

2. File the IDS within the first three months: An IDS can be filed at no extra cost within 3 months from the filing date of a national/original application (other than a continued prosecution application) or before the receipt of the first OA. This also helps examiner to review the application in relevance to the IDS filed.

3. Check the publication/priority date of the references against the priority date of the application: In some cases, the applicant/attorneys may fail to check on the publication date of the references against the priority date of the application which leads to unnecessary attorney review time and cost. To avoid such situation, it is advised to check the publication/priority date of the reference against the earliest filing date of the application.

4. Avoid filing foreign counterparts as references: Sometimes, the applicant/attorneys would want to be on a safer side with all the references and file foreign counterparts of the corresponding US as a reference. It is recommended to avoid such practice of filing foreign counterparts as references of the same family as it is an unnecessary cost/effort.

5. Cite references from other jurisdictions: It is recommended to file Prior arts from other jurisdictions within 3 months (after you became aware of it) with USPTO and there is no fee involved if it is filed within three All the more, it is advisable to cite it within a month to avoid any PTA delays.

Avoid Redundant Effort:

6. References for continuity applications: By default, the examiner will consider information which has been considered by the Office in a parent application when examining a,

  • continuation application filed under 37 CFR 1.53
  • divisional application filed under 37 CFR 1.53 or
  • continuation-in-part application filed under 37 CFR 1.53

You may need to cite them again only if you/your attorney need them to be displayed on the face of the patent.

7. Need to check for any new reference on a frequent basis (monthly review) to avoid RCE at the allowance stage: In general, if the IDSes are filed after the issue fee is paid; the examiner will consider it only if RCE is filed. This not only implicates extra fee, but also procrastinates the prosecution.

Keep it Clean and Relevant:

8. It is important to check and remove cumulative publications: It is advisable to remove cumulative (corresponding publication in a different jurisdiction) publications of already cited art especially while reviewing the case during allowance (Issue Fee Review – Checklist which shall be explained in the next post). This process of checking and removing cumulative references may result in clean IDS and can avoid RCE at the NOA stage.

9. The significance of preparing a matrix of references cited/submitted in related/co-pending applications: The duty of disclosure relates to submitting to the PTO all information known to the applicant, that an examiner would consider important while examining the given application. Especially the references cited in all related (genealogical and/or subject matter) applications. Also, preparing a reference matrix for a family of applications (even in Excel) could help in not missing any reference.

Accelerate the Examination:

10. The Quick Path Information Disclosure Statement (QPIDS) pilot program: It is a part of the USPTO’s on-going efforts towards compact prosecution and pendency reduction. The advantage of the USPTO’s QPIDS pilot program is to file IDS without an RCE post making the issue fee payment. This expedites the examination process and also the RCE fee gets refunded if the examiner notices that the references are not convincing enough for reopening prosecution.

MaxVal offers Max-IDS, a stand-alone software product, an easy to use, integrated, and customizable environment for legal operations to collaboratively manage patent references and generate IDS with a few clicks. Clients can also avail MaxVal’s migration and data upkeep services.


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Selecting the Right Search Provider: Distinguishing the Experts from the Novices

Selecting the right search provider

The prior art search challenge – 2

When going through the process of finding a high quality prior art search provider, you typically start by looking for a provider with experienced searchers that possess technical and academic credentials in the technologies that you are prosecuting or litigating. You look for technical expertise, access to an array of databases, good quality control processes, etc. (Please refer to our previous article on how to select the right prior art search professional here.)

What other attributes make a great search provider?

An important factor that is often overlooked and one which can be argued to be the single most important ingredient, is a search team with a deep understanding of the patents and technical publications; not from a legal standpoint, but from a standpoint of how topics and concepts are typically described in a patent or technical document. Specifically, how documents typically describe an invention, where the relevant concepts are likely to be located within and distributed throughout a document.

When selecting a search team to support your prosecution and litigation research, you need to look not only for a search team with expertise in various search tools and methods, but more importantly you need to look for prior art document experts.

Why is document expertise so critical?

Most searchers use commercial search tools that provide the searcher with a means for constructing sophisticated Boolean search queries including proximity operators. These skills, if used in combination with the knowledge about document construction, can serve as a powerful means of retrieving highly relevant prior art quickly. A searcher with this level of expertise can construct pinpoint queries capable of matching phrases within documents that discuss the salient point of an invention. However, in the hands of a novice search team these tools behave like any keyword search engine; returning sporadic and questionable results based primarily on word count matches; whereas an expert will encapsulate the inventive concepts form disclosure in their strategy due to their understanding of how these concepts are laid out in the underlying documents being searched. While semantic search tools can help with this, even the best semantic algorithms available don’t offer the accuracy required to detect the nuances important to patentability, invalidity, and freedom to operate searches.

In the next blog we will look at an example of how an expert searcher would construct a query, paying attention to their assumptions of how the inventive concepts are likely to be grouped within the documents they are searching, how these assumptions vary based on the literature type, as well as a command of synonyms for the technology domain in question.

Conclusion

Prior art search skills can be effectively assessed by testing a candidate firm through search trials, a review of their search strategies, as well as the prior art results their strategies produce. Additionally, a phone interview or conference call where the searcher walks you through the construction of their strategy can be helpful in assessing their competency. There is no single correct method of searching prior art, so the goal is to assess whether the methods are logically sound and that the searchers not only have command of the search tools but also a thorough working knowledge around the architecture of the documents they are searching.


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How do I select the right prior-art search professional?

 

Key questions to ask while hiring a professional/firm to perform prior-art searches.

A patentability search and analysis are carried out to ensure that an invention would meet the novelty and non-obviousness requirements for obtaining a patent. However, such search and analysis would not be effective unless claimable subject matter is identified correctly. A patent agent or attorney needs to thereafter determine the breadth of the claimable matter by examining the disclosure along with the prior art identified in the search in order to complete the analysis.

A patent cannot claim something that already exists or is apparent on combining existing knowledge. Prior art refers to any technical information that exists prior to the effective date of a patent application that discloses the same or similar solution to the problem addressed by the invention.

Identifying relevant art that predates the critical date is a big challenge. It is important to choose a reliable prior-art search professional or firm, so that the full potential of an invention may be realized. In today’s electronic-age, anyone with Internet access and basic technical knowledge could, in principle, conduct prior-art searches. However, deep knowledge of the technical domain as well as patent law is required to analyze an invention satisfactorily for determining patentability. Appropriate usage of search tools and technical expertise are required if results are to be obtained within reasonable cost and acceptable timelines. There are a number of ways to locate a competent prior-art search professional or firm: Internet search, online directories, the patent office websites, etc.

Here are some of the key questions that should be asked by an inventor or applicant while hiring a vendor to perform prior-art searches.

Key questions to ask when hiring a prior-art search professional or firm

Indicators to predict patent litigation outcomes


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5 Indicators to Predict Patent Litigation Outcomes

Indicators to predict patent litigation outcomes

If you are involved in any patent litigation, whether you are the plaintiff or defendant, you naturally want to know the potential outcome of your case. At this stage, it would be helpful to be able to forecast the outcome of the litigation.

Applying Data Analytics to Predict Litigation Outcomes

In the last 5 years, Litigation Analytics has gained popularity as a way for law firms and corporations to forecast the outcome of a case.

These indicators can help answer such questions:

For a case of this kind,

  • What were the previous outcomes in this domain?
  • What is the typical time-to-closure?
  • What is the success rate with a particular district court?
  • What are the trends on damages awarded?

Of course, there are many sophisticated algorithms to compute the outcome of an infringement case, but there are also other handy ways as illustrated below, to predict the outcome of the case even at the very early stages.

There is no doubt the outcome of a patent infringement case involves many other external factors like change in the policy, law, financial flexibility, ability to deal with the business disruption of the parties involved, etc. But some indicators and historic data will help you predict the likelihood of the case.

Key Indicators

In the uncertain world of litigation, metrics like time-to-closure, outcome by courts/judges, damages awarded and success rate by the traits of an opponent, for instance, can be deemed as key indicators. Using these data cues, one can very well connect the dots while evaluating the merit of a case without much complication.

For illustrative purposes, let us take the cases affiliated with the pharma industry*.

  • To analyze time-to-closure we reviewed cases filed in 2015
  • To analyze judgments by industry as well as by courts/judges we reviewed cases closed in 2015
  • To study the damages awarded by industry and success rates with regard to the nature of an opponent we reviewed cases closed from 2011 to 2015.

1. Time-to-closure

Not all district courts are patent owner–friendly. In jurisdictions such as Eastern Virginia, Delaware, or Eastern Texas a typical lawsuit goes to the trial stage and gets closed within a year, when compared to the average 3+ years from filing date to time-to-trial and then to closure with other district courts. Generally, these delays may also impact other factors like the cost to run the case, market value of the patent litigated, etc.

time-to-trial

In a panoramic view of patent litigations in 2015, we see the following statistics:

Over 550 Pharma cases were filed across various US district courts.

❏  The average time-to-closure was approximately 90 days.

❏  However, some power players took more than 325 days to contend with their opponents, for example CTE Global, Inc. and Otsuka Pharmaceutical Co. Ltd.

❏  About 70% of these cases were filed only in the district courts of Delaware and New Jersey.

2. Judgment by District Courts (or Judges)

Some US district courts have been showing a repeated pattern of outcomes in favor of either plaintiffs or defendants. Now look at the cases that closed with a judgment in 2015.

Charts to be handdrawn

Historically, the district courts of DE, Eastern VA, NJ, and Eastern TX are said to have been the favorite destinations to file cases due to their plaintiff-friendliness. However, for pharma cases given judgments in 2015, in these courts neither plaintiffs nor defendants were favored, while at the same time those in NJ slightly favored plaintiffs. This analysis can also be applied to judges and their rulings.

3. Outcomes Within the Industry

Many recent studies have revealed the outcome trends by industry. Outcomes of patent litigation can vary between industries. It is helpful to look at the outcomes within your specific field. Below are the outcomes for the pharma-related suits filed in 2015:

Charts to be handdrawn

More than 52% of pharma-related suits filed in 2015 were concluded as likely settlement and about 17% as voluntary dismissals.

4. Damages Awarded

The bio/pharma industry has been awarded the highest damages for patent litigations. Since 2011, the published value of awarded damages is more than $2.14B in the bio/pharma industry alone – Centocor Ortho Biotech, Inc. and SyntrixBiosystems, Inc. were among those who were apportioned the most expensive settlements in 2012 and 2013.

Charts to be handdrawn

In 2015, there were only two cases awarded damages in the pharma field in favor of plaintiffs – Astrazeneca AB and Monsanto. Astrazeneca, who had been combating this case since 2001 against Apotex Corporation, secured a large compensation of around $104.3M.

5. Success Rates by Traits of Opponents

NPE-vs-PEEvery year the number of litigations filed by NPEs, keep increasing. NPEs accounted for about 69% of the total cases that were filed in 2015 irrespective of industry type.

According to a recent study**, while the practicing entities had a lower median time-to-trial and a 10% higher success rate than NPEs for the last 10 years, in contrast, the median damages awarded for NPEs from 2011 to 2015 were 3 times greater than that for PEs.

While analytics becomes more and more handy and prescriptive, law firms and organizations have already started incorporating them as an essential component with their litigation strategies. By leveraging the analytical power of litigation tools like MaxVal’s Litigation Databank (or the API), you can forecast, strategize, and benchmark yourself against others.

Sources:
*MaxVal’s Litigation Databank
** PWC: 2016 Patent Litigation Study

For the methodology used in this blog and to order any such detailed custom reports, contact us at bd@maxval.com.


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Deploy Patent Prosecution Analytics to Accelerate the Product Development Cycle: A Comparative Case Study

Patent prosecution analytics can provide valuable insight into the performance of an organization’s IP operations just as other forms of analytics help in reducing cost, in making better decisions and in creating new products and services. Technology companies who are actively filing patents can achieve cost savings and faster times to grant through prosecution analytics. I will illustrate what I mean by looking at two leading technology companies with different prosecution performance – Cisco and Juniper Network.

The patent prosecution analytics can illustrate areas for improvement, how a company compares with direct and indirect competitors, patent prosecution trends, and areas the company is performing well.

There are multiple ways to measure how well an organization’s patent prosecution processes perform. MaxVal and its clients have had good success with these methods:

  • Prosecution Success Score – The number of issued cases divided by the number of abandoned cases in a given year.
  • Application Abandonment before an Office Action
  • Rate of Issued Cases with 2 or more RCEs
  • Average Pendency

To illustrate these methods and the insight they can provide, MaxVal took a look at Cisco Systems and Juniper Networks, two competitors within the Computer Communications Equipment Industry. MaxVal used publicly available data for its analysis.

Patent Prosecution Score

A Prosecution Success Score is simply the number of issued cases divided by the number of abandoned cases in a given year. The higher the score, the better it is for the company. Higher prosecution success scores can be attributed to more efficient prosecution methods, a better invention disclosure screening process, and possibly fighting harder to get patent issuance.

Prosecution Success Score
Year Cisco Juniper
2013 12.3 15.6
2014 5.9 16.1
2015 5.9 47.8

While we see Cisco and Juniper had comparable Success Scores in 2013, Juniper has continued to improve their Success Score while Cisco’s Success Score has dramatically declined. Cisco is still getting patents issued at a high rate but many more applications are being abandoned. It would be useful for Cisco to further investigate and see what the reasons for these patent application abandonment are.

Rate of Abandonment Prior to an Office Action

Another telling metric would be the rate of abandoned cases prior to receiving an Office Action. If a case is abandoned prior to receiving even a single Office Action, then it is likely that the case should not have been filed in the first place or the company did not fight hard enough for the case. An option to reduce the number of abandonment prior to an OA would be to invest in pre-filing searches to become aware of the prior art.

Rate of Abandonment Prior to an Office Action
Year Cisco Juniper
2013 1.6% 9.1%
2014 4.2% 50%
2015 5.8% 40%

Cisco seems to have a very low rate of abandonment prior to an OA while Juniper’s rate in 2014 and 2015 seems rather high. However, Juniper only abandoned 14 and 5 cases, respectively, in 2014 and 2015 so the sample size is too small to make a proper assessment of their rate.

Rate of Issuance with 2+ RCEs

The next metric to look at is the number of issued cases prior to filing a Request for Continued Examination (RCE). A high rate in this metric is a strong indicator of inefficient prosecution methods (broader claims among other things). Since the application was ultimately issued, it can be inferred that it was inefficient prosecution by the practitioner that led to a number of RCEs prior to issuance.

Rate of Issuance with 2+ RCEs
Year Cisco Juniper
2013 3.3% 12.2%
2014 6.0% 6.6%
2015 4.0% 5.4%

Both Cisco and Juniper seem to have pretty good rates in this metric suggesting that their patent practitioners use efficient prosecution methods. While Juniper’s rate in 2013 was on the higher end of the spectrum, there has been a noticeable decrease in their rate.

The final metric to look at today is the average pendency between a first OA and issuance. While looking at the pendency from filing to issuance is a normal metric to look at, it doesn’t give the best insight to prosecution methods. Much of the time from filing to first OA is a result of the patent office delays in working on the application. So, a better indicator of an applicant’s prosecution methods is to look at the time from the first OA to issuance. A higher pendency can be attributed to receiving more OAs, taking longer to respond to OAs, and filing RCEs.

Average Pendency from OA to Issuance

Average Pendency from OA to Issuance
Cisco Juniper
Overall 13 months 18 months

As evidenced by the table above, Cisco seems to be getting their applications issued, on average, 5 months quicker than Juniper. Juniper should look closer at factors that can be attributed to this increase in pendency.

Overall Cisco and Juniper seem to employ reasonably efficient patent prosecution practitioners and methods. They both have high issuance rates and low abandonment rates. Cisco’s low abandonment prior to OA rate indicates a good invention disclosure screening process. And the low rate of issuance with 2+ RCEs indicates efficient patent prosecution methods.

These metrics, and others, illuminate a company’s patent prosecution process strengths and weaknesses. It allows companies to see how their competition is faring and what areas they need to improve.

By Bharath Venkat, MaxVal

patent renewal rates


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Patent Renewal Rates under Different Renewal Period Schemes

by Bharath Venkat

In order to keep a US patent in force, the US Patent & Trademark Office requires that patent owners make maintenance fees at years 3.5, 7.5 and 11.5 after grant. This is in addition to filing, search, examination and post-filing fees.

Other patent issuing authorities use different rules. For the European Patent Office (EPO), maintenance payments must be made annually and cannot be pre-paid. For Japan (JPO) and the Korean Intellectual Property Office (KIPO), fees are due annually and can be prepaid.

If the patent owner decides not to pay the maintenance fee, then the patent owner loses the patent rights and the patent reverts to the public domain. If a patent is abandoned, the term of the patent is shortened and patent protection ends well before the maximum life of the patent. At MaxVal, we have compared abandonment rates for US, European, Japanese and Korean patents. Our goal is to see if abandonment rates differ between single year or multi-year renewal countries.

patent renewal ratesAnalysis of Lapse Rates

A good indicator of this could lie in the rates that patents lapse due to nonpayment of renewal fees. As seen in the graph below, different patent annuity systems yield different lapse rates.

Looking at the US – in 2014, 50.7% of active patents were renewed for the Third Stage (11.5 years). Since payment of the Third Stage gives those patents protection from years 12-20, it can be said that 50% of patents filed in the US are active for the full 20 years of the patent term.

This lapse rate is much different than in patent offices that require annual patent fees that cannot be paid in an advance lump sum like the EPO. In 2010, only 50% of active patents were renewed for the 8th year of the patent term. Only 42% of the patents are renewed beyond the 12th year of the patent term. Furthermore, only 33% of patents were renewed beyond the 15th year. Only about 17% of patents are active for the entire 20-year patent term. These statistics indicate that patent owners were very wary of paying higher annuity fees and were able to judge if the patent was economically viable on a yearly basis. This arguably led to a higher percentage of patents lapsing and entering the patent domain much earlier than in the US.

Additionally, patent offices that accept advanced lump sums of annual fees, like JPO and KIPO, have different renewal rates as well. At the JPO, the number of renewed patents only dropped to 50% after 17 years of the patent term. Also, 33% of patents were renewed throughout the 20-year patent term. At the KIPO, the number of renewed patents only dropped to 50% after 13 years of the patent term. However, the patent renewals drop to 33% after the 16th year of the patent term. These statistics indicate that, if allowed to, patent owners are more likely to pay their maintenance fees in advance, which would prevent the lapse of patents that are economically not viable.

Conclusion

For patent owners, annual renewal schemes seem to offer greater flexibility for making renewal decisions. When fees are payable annually, patent owner have more control over what to keep than they do in the US system.

From the perspective of a patent office, it would appear that forcing patent owners to make multi-year commitments increases renewal income. So, a multi-year scheme is beneficial for the patent office.

Owners of US patents should take care at the Third Stage. The data suggests that some patents that are routinely renewed at 11.5 years should be considered for abandonment. Those patents would be soon abandoned under an annual renewal scheme – but that option is not available in the US.

*Sources:

  1. 2014 USPTO Performance and Accountability Report
  2. Four Office Statistics Report 2010

MaxVal offers the Annuity Payer service to help companies plan and execute fee payments.


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IP Managers – Don’t Expose Your Company to IP Management Risk

Intellectual Property Management can be exciting and rewarding  but can also be very unforgiving if you don’t do it right. There are some mistakes that can be extremely costly, but are, unfortunately, easy for an IP Manager to make. These mistakes can cause your company to lose its IP rights and can result in competitors getting those rights.

Eleven IP management slip-ups that can increase IP risks and threats to your company:

  1. Failure to capture an invention.  With the “America Invents Act”, the US converted to “first to file” from “first to invent”. The first one to file a new invention gets the patent right – not the first to invent, unlike the olden days. If one of your inventors has a patentable idea, and you don’t find out about it – you risk having a competitor file ahead of you. Your company can be excluded from using the invention, thus losing competitive advantage..
  2. Failure to make a timely filing decision.  Once you have the invention disclosure, you need to quickly make a filing decision. If you dawdle, you again risk being trumped by a competitor.
  3. Failure to meet statutory deadlines.  Once you begin the patent filing process, you must meet strict statutory deadlines to file abroad and to respond to communications from the patent offices. These include conversion to non-provisional status, application filing deadlines, and national filing deadlines. Miss these dates and your patent rights go poof!
  4. Failure to Stay in the Loop.  Are there IP related conversations and actions happening in your company that you are not aware of? While you may be diligently tracking your activities, your inventors, attorneys or outside counsel may be taking actions (or not taking actions) that you need to know about. Things can easily fall through the cracks if you are not tracking them or in the loop. This can result in expensive mistakes and potential loss of patent rights.
  5. Failure to accurately project costs.  There are costs associated with building an IP portfolio. These include outside counsel fees, filing fees and maintenance fees. Your IP program can be adversely affected if you cannot accurately project what these fees will be and budget accordingly.
  6. Failure to respond to PTO actions on time.  During prosecution, your patent applications will receive communications from patent offices. Either you or your outside counsel must respond to these in a timely manner. Failure to take timely actions, can lead to expensive penalties and/or loss of rights.
  7. Failure to properly disclose material information. In many countries, including the US, you are required to file Information Disclosure Statements that include all relevant prior art. These statements need to be consistent across all of your related patent applications. Failure to make proper disclosures can result in the loss of your patent rights.
  8. Failure to maintain your patent. In most countries, you must pay regular maintenance fees for issued patents or annuities for pending applications. If you miss making a payment, are delinquent, or if a payment is not properly processed, you can lose your patent rights or may have to pay significant penalties to restore your rights.
  9. Failure to enforce license obligations.  If you have licensed patents to others, you need to monitor the agreement and track the royalty payments. Failure to do so can result in significant loss of royalty revenue, and unlicensed use of your IP.
  10. Failure to align patent portfolio to business needs.  Over time, your patent portfolio will grow.  At the same time, your company’s business strategy may change. You need to monitor your portfolio to make sure it is aligned with your business needs. Maintaining a portfolio of low-value patents that doesn’t support your business strategy is a bad investment.
  11. Failure to accurately disclose your IP portfolio. For companies with SEC reporting obligations, it is mandatory to accurately disclose your patent assets. If you don’t have an accurate picture of your actual portfolio, you will encounter costly and embarrassing legal problems.

As the IP Manager, you are always confronted with these challenges. You ought to be keeping eternal vigil to manage your company’s IP portfolio successfully.  This is definitely a daunting or impossible task.  But, there is technology available that can help.

How can an IAM System help?

An Intellectual Asset Management (IAM) system tracks all of your intellectual assets through their entire lifecycle.

Here are all the things an IAM system can do:

  • Capture invention disclosures and monitor progress through filing, prosecution and maintenance.   
  • Enable creation of workflows that route tasks to the appropriate person and ensure that deadlines are met.
  • Store all assets in one place. This enables you to access and track all the data that you need to make informed decisions based on correct, current and complete data.
  • Provide visibility into the entire IP portfolio. Make accurate reports for forecasting and strategy reviews.

How can an IAM system mitigate the risks mentioned above?  Here is my view:

Risk

IAM Risk Mitigation

Failure to capture an invention A robust and easy to use invention disclosure capture system will encourage inventors to disclose their inventions in a timely manner.
Failure to make a timely filing decision An IAM system will initiate workflow events and deadlines. Invention disclosure reviews and filing decisions will be scheduled and completion will be tracked.
Failure to meet statutory deadlines An IAM system,  which can connect to patent office application tracking databases, will automatically create tasks and reminders. Responsible parties will be notified of upcoming deadlines and responses will be tracked.
Failure to Stay in the Loop By maintaining a single calendar of events, the IP Manager can monitor all activities and their status.
Failure to Accurately Project Costs By tracking all applications, foreign filings and maintenance fees in one place, the IAM system can accurately project costs..
Failure to respond to patent office actions By maintaining a single calendar of events, the IP Manager can monitor all upcoming patent office actions, their status and who is responsible for the response.
Failure to properly disclose material information The IAM can provide a robust Invention Disclosure database.  This will ensure proper and consistent disclosures.
Failure to maintain your patent By having a complete and accurate portfolio database that is connected to a fee payment system, the IP Manager will be notified of upcoming payments and can forecast future payment costs.
Failure to enforce license obligations Tracking compliance is made easier by recording license terms in one central database.
Failure to align patent portfolio to business needs Having a portfolio level view of the assets and the pipeline of pending applications enables the IP Manager to accurately report on the current portfolio, and to support strategy reviews.
Failure to account for your IP portfolio Having a complete portfolio view, including the relationship between IP and products, enables the IP Manager to support accounting reviews and meet reporting requirements, e.g., with the SEC.

As the IP Manager, you have a significant responsibility to avoid the IP risks discussed above. An Intellectual Asset Management (IAM) system can help you mitigate your risks. To get better insights on mitigating IP management risk using an IAM system, please watch the SymphonyIAM overview video: SymphonyIAM by MaxVal

Please contact us if you would like more information on SymphonyIAM, or to find out about MaxVal’s service offerings. MaxVal is dedicated to making IP professionals, including IP Managers, successful. We can help you manage IP risk.


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Are You the IP Manager?

Are you the IP ManagerUsually in large companies, IP is managed by a senior IP counsel who runs a dedicated IP operations department. In your company, there may not be a dedicated in-house IP counsel.  But, in every innovative business there is always someone whose job includes managing the company’s IP. That person, the IP Manager, makes sure that the company’s patent strategy is implemented, deadlines are met, forms are completed, and documents are submitted, etc. The IP Manager makes sure that the IP train runs on time, so to speak. They may not have IP in their title or have a law degree, but they are the go-to-person for all IP matters.

In a start-up, the IP responsibilities may start small, with just one or two patent applications to file. In the beginning, most of the work is done by outside counsel.  But the job can quickly become challenging and time consuming as the company grows: more applications are filed and foreign filings become necessary.

For emerging technology companies, the IP Manager’s responsibilities will eventually include:

  • Work with in-house scientists and engineers to identify patentable ideas.
  • Work with outside counsel as they draft patent applications.
  • Work with outside counsel as they prosecute the patent applications.
  • Decide when and where to file foreign applications. Europe? WIPO? China? Japan? Korea?
  • Make decisions about budgets, patent maintenance, licensing and IP acquisitions.
  • Decide when to take legal action if there’s infringement on the company’s IP.

Finally, as the resident IP expert, the IP Manager must help senior management decide on an IP strategy and keep them informed on how the strategy is being executed. Mistakes can expose the company to significant risk.

Are you that person?  If so, congratulations!  Whether you planned it or not, you provide a critical service to your company. To a large degree, your company’s future prospects depend on you. As your company’s patent portfolio grows, your responsibilities grow and the amount of time you must commit to managing your company’s IP increases.

Automation has been a boon. Your company’s sales and support organization depend on a Customer Relationship Management (CRM) system to keep track of customers and prospects.  Your company’s finance department uses automation to keep track of accounts receivable, payroll, and other expenses.

Similarly, you can benefit from using an Intellectual Asset Management (IAM) system to keep track of your company’s IP. Such a system puts all IP related activities in one place so that you can access everything and manage everything through one interface. To see what we mean, please take a minute to look at the SymphonyIAM overview video:

Also see Steven Gong’s blog on how SymphonyIAM can make you a better IP Manager and visit our SymphonyIAM preview page for more information. MaxVal is dedicated to empowering IP professionals and IP Managers to mitigate risks and manage better.

MaxVal is now running an invitation-only trial of SymphonyIAM. If you would like to experience the prelaunch SymphonyIAM, please visit our SymphonyIAM preview page and sign up for a trial – http://symphony.maxval.com.

We hope to hear from you soon.

Dr. Bommi Bommannan, CEO


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Intellectual Asset Management Should be Affordable and Easy

For rapidly growing innovative companies, intellectual assets (patents, trademarks, copyrights and trade secrets) are the ultimate source of competitive advantage.  These assets usually underpin the company’s valuation and must be managed carefully.  The person responsible for managing the IP portfolio must orchestrate and coordinate activities of inventors, outside counsel, in-house IP operations staff and external service providers.  At MaxVal, we see our clients’ IP managers struggle with juggling docketing systems, spreadsheets and patent workflow management in general.  As the number of patent applications and foreign filings grow, keeping track and being able to report on status becomes a significant problem.

Intellectual Asset Management systems are available.  But, the current generation of products are expensive, difficult to implement and manage and costly to manage over time.  For very large organizations, these systems may be cost effective – but what about smaller companies who can’t afford the implementation and maintenance costs?

At MaxVal, we have been developing products to help companies manage their IP for several years.  These include:

  • Max-IM for Invention Disclosure Management
  • Max-IDS for reference management and IDS generation
  • Max-PAIR for keeping up with pending patent application status in your private PAIR account
  • Max-PPM for portfolio management and reporting
  • Annuity Payer for estimating renewal costs, making payments directly and as an affordable annuity payment managed service

While these MaxVal tools solve specific problems, they do not meet the needs of growing innovative companies who want to get better visibility into all of their intellectual assets.  Many of the companies who need this control and visibility are not large and are not well matched to large and expensive IAM systems.

What is needed is an end to end Intellectual Asset Lifecycle Management solution that delivers good value to companies of all sizes.  Everyone involved in your company’s IP would benefit from the lifecycle management tool, including your outside counsel.

Please stay tuned to MaxVal’s All Things Patents blog for more news on this topic.  Some exciting announcements are coming soon.

Bommi Bommannan, PhD, JD