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Best Practices for a Comprehensive Post-Allowance Review

When a Notice of Allowance (NOA) is received by the Applicant, it means that a patent application will no longer be reviewed by the examiner and it is entitled to the patent under the law. In other words, an application is about to be issued after the prosecution phase.

However, the NOA may have errors or data missing, failing to correct them at this critical stage may impact the quality and the enforceability of the patent. Depending on the severity of the issue, an RCE may need to be filed to make necessary corrections or even defer or withdraw patent from being issued by filing a petition. Once the patent is issued the chances of correcting these errors get drastically reduced.

Once the NOA has been issued by the patent office, an applicant will have three months to pay the issue fee during which the application should be reviewed thoroughly to ensure correct.

Collating a series of checkpoints at the NOA stage with reference to various critical fields in the Image File Wrapper (IFW) before paying the issue fee, is very important.

best-practices-for-a-comprehensive-post-allowance-review

Here are a few critical sections that should be examined as a part of a post-allowance review:

  • Inventorship details
  • Cited art review
  • Application review

1. Inventorship details

The accuracy of the following matters should be checked

  • Inventor’s name (Spelling and initials)
  • Title of the patent
  • Filing date
  • Small or large entity status of the applicant

2. Cited art review

Any uncited references should be checked whether they should have been included in the application. A reference check at the post-allowance stage should include:

  • Determine if all family and related cases have been identified and cross-cited
    Identify all the related dockets and verify if all the references is cross-cited among the dockets in the family.
  • Determine if the examiner signed off/reviewed all cited art
    All IDS and 1449 from PAIR is downloaded to check if the examiner has completely reviewed the cited art or if there are any strikethroughs.
  • Determine if any uncited art is required for submission under 37 C.F.R. 1.97(D)
    Determine if the art is from a foreign OA for the corresponding docket and if it is within the purview of 37 C.F.R. 1.97(D).

3. Application review

Statutory restrictions and amendments should be reviewed including

  • Identify discrepancies
    Discrepancies in priority information, ADS, specification, filing receipt, and PAIR should be verified.
  • Determine if there were any restriction requirements
    With the help of IFW the requirement of restriction, response to restriction, detailed action, and restricted claims are checked.
  • Determine if any examiner amendments are included in the NOA
    Examiner amendment to claims should be verified with the latest claim document.
  • Determine if there are any notice to file corrected papers pending
    PAIR data should be reviewed to determine if ‘Notice to File Corrected Application Papers’ was received with or after the NOA.
  • Determine if there are any notices requiring inventor’s oath/declaration pending
    incomplete or missing middle names, transposition of names, spelling mistakes in ADS and Filing Receipt against Oath/Declaration should be verified.

Along with the above mentioned checks, there are also other portions which needs to be examined to to keep the issued patent error-free.

MaxVal provides such services to review the applications that are in allowance and provide a comprehensive report.
Please drop us a line at bd@maxval.com for a post-grant review or for a free template of NOA review checklist.

 


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6 Things Startups Need to know about IP

Intellectual property (IP) protection is as important today as it has ever been for start-ups. For beginners, the prospect of where to start can be daunting.

Why do startups need IP protection? Registering IP can do several things, including:

  • Creates an asset that will have value even if the business model fails
  • Creates an asset that can be used as collateral for commercial loans
  • Justifies a higher valuation when seeking venture capital
  • Provide higher value for its products/services when listed in  public market by facilitating licensing or sale
  • Identify  more contribution margin which could reduce the need to raise investment fund
  • Helps in making strategic choices when new opportunities or change of direction is required

Here are a few IP-related approaches a start-up can should consider while formulating strategy.

6 Things Startups Need to know about IPStart early
In 2013, the United States IP system changed to a first-come-first-served basis. So regardless of who actually invented, the first one to file the patent gets all the protection. And more importantly, the one-year grace period given by the USPTO to file an application is not applicable outside the US. Therefore, start-ups planning to seek IP protection abroad should not publicize their invention before filing an application. File early and keep your invention under wraps until you do so.

Additional filing
The initial patent filing is not enough, since  the technology  will evolve as the company goes about refining the product before entering the market.  As the product evolves, the patent protection therefore needs periodic re-evaluation.  Continuations are an effective way to extend the coverage of the initial filing.

Prioritize
Initially, start-ups may not be able to afford broad IP protection. Compared to larger corporations, startups must have a better understanding of the impact that IP can have on their business. In some cases, IP may be their only asset. So prioritizing the revenue spend on IP protection according to the overall business plan may be necessary.

Trade secrets
While all the concentration is on patents, trade secrets can be  an important option, if feasible. Generally, patent protection lasts up to 20 years but, trade secrets continue indefinitely as long as the concerned party decides not to disclose it to the public. Companies like Coco-Cola and KFC are well known to have benefited from their well-protected trade secrets (recipes). However, maintaining secrecy of valuable information could be a challenge.

Worth of the invention
Patents are without doubt intended to protect the assets most valuable to a startup. So startups must assess the potential of the invention through suitable metrics before venturing to protect it.

Types of IP protection
Understanding the benefits, expenses, and the level of protection offered by various forms of IP is crucial. Trademark or service mark protection is necessary to protect each unique business or product identify. Another important area where startups need to have clarity is in ownership of IP assets. The company needs to have well-drafted agreements with its employees as to ownership of IP, non-disclosure of valuable information or avoidance of conflict in the event of separation.

Startups must engage with a skilled intellectual property counsel so that their business can meet the due diligence requirements of investors. This will also prepare them for commercialization of their product or service, when it would be required to ensure freedom from third party conflicts that can jeopardize that step. Being IP-savvy will prepare start-ups for the next phase in their journey.


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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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Do Semantic “Similarity” Searches Produce Better and Faster Results?

The Prior Art Search Challenge

It is difficult to identify novelty of an invention without a thorough understanding of previous work in the field. Prior art search is essential to define the boundaries between a potential invention as claimable in a patent and the published prior art. It is common practice to perform keyword-based and/or classification-based searches of the disclosed concept. Getting a comprehensive result including hidden or unexpected prior art using classic methods is challenging, particularly when working under time constraints. The quality of the search greatly depends on how much time is spent on the search, and on the technical background and skill of the searcher.

Semantic search, similarity search or citation analysis approaches could be combined to overcome the above challenges in many cases. This article emphasizes the benefits of similarity search for finding potential prior art.

Similarity Search

A number of patent databases (both public and paid) provide similarity search options. Similarity search engines may operate in one or more of the following ways:

  1. Perform text mining and machine learning to extract contextual similarities between the target patent and the assets stored in the patent databases;
  2. Search for patents that have common citations or share citations within the same family;
  3. Retrieve a list of similar records leaving out stop words and common words such as “method”, “process” or “device”;
  4. Display potentially relevant prior art documents ranked based on the relevancy.

MaxVal validated the effectiveness of a similarity search engine¹.  MaxVal conducted similarity search for a set of three patents filed under different IPCs viz. US8315756B2, US8838292B2 and US9149609B2. In each case, the similarity search retrieved a large number of patents ranked in downward order of relevancy score, starting with the most similar with 100% rating. The top results with rating above 90% relevancy were filtered using either keyword or classification-based restriction to retrieve a handy number such as 200-300 that were easy to review. In each of the three cases, the examiner-cited references were retrieved with rating above 90% relevancy through the similarity search as shown in the table below.

Target Patent

Technology Examiner Cited References

Examiner Cited References Retrieved through Similarity Search

US8315756B2 G01C 22/00

(Decentralised systems, e.g. inter-vehicle communication)

US20100121518A1
US20140039716A1
US20130325210A1
US9092987B2
US9070022B2
US8838292B2 G05D 1/00

(Control of position or course in two dimensions specially adapted to land vehicles…)

US20030225477A1
US20040024527A1
US20040254729A1
US20080269992A1
US20060106538A1
US20070043502A1
US8315756B2
US9149609B2 A61M 25/06

(Guide tubes)

US4611594A
US5074871A
US5968057A
US5688234A
US20020026203A1
US5908435A
US20020068954A1
US7169154B1
US6517551B1
US20060135987A1
US20050119668A1
US20060253145A1
US20070191878A1
US20070208351A1

In summary, similarity search augments keyword/classification-based searches and dramatically increases the quality of the results set that needs to be examined. Thus, similarity search function could enhance the efficiency of prior art search by minimizing the probability of missing relevant prior art in given time.

¹MaxVal used Questel Orbit to test the functionality of Similarity search


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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


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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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MaxVal’s Max-IDS: New Features Make It Easier Than Ever For Your Team To Manage Information Disclosures

Max-IDS is MaxVal’s cloud-based, hosted, Information Disclosure/Reference Management solution.  Max-IDS is much more than a form generator.  Max-IDS stores your references in a centralized database together with information about the cases citing each reference. This promotes consistency, reduces confusion and makes ad-hoc solutions (such as individual spreadsheets) unnecessary.

MaxVal is constantly looking for ways to improve Max-IDS.  Based on user feedback, we have recently added the following enhancements to Max-IDS:

  • Reference source comments
  • Reference comparison chart enhancement
  • Case and Group functionality

Reference Source Comments

Max-IDS helps you keep your references organized.  Reference “Source Comments” are tags users can assign to their references. For example, relevant tags may include “search result”, “PTO” or “Inventor”.   Source Comments make references easier to find and sort, and communicate the source of the references.  MaxVal has just added the following new source related functionality:

  • “Additional Source Comments” – Your Max-IDS administrator can now define tags specifically for your organization, and add new tags at any time.
  • “Copy Source Comments from One Case to Another” – Users can compare cases, copy and append source comments from one case to another.

We have also added a handy “Reference Extractor”.  Users can import references directly from the Max-IDS PDF viewer. This eliminates the time consuming and error-prone process of OCR-ing documents to extract references. The Reference Extractor complements the existing Max-IDS bulk import tools.

Max-IDS Reference Extractor

 

Reference Chart Enhancements

Reference Charts are one of Max-IDS’ most powerful features.  Reference Charts show all references shared between a set of documents, and show which documents cite the reference.  This makes inconsistencies immediately visible.  This is extremely valuable when working with foreign filings and patent families.

The Status of each application is now visible in the Comparison Chart.   For example “Abandon”, “Filed Pending”, “Pending Published”, “Allowed” or “Issued”.

Max-IDS Reference Comparison Chart

 

Case and Group Functionality Enhancements

In addition to tracking references, Max-IDS tracks the cases that use the references.  These cases contain the patent applications, granted patents and related foreign family filings.  Cases can be grouped to enable outside counsel can see just their cases.  MaxVal has just released these enhancements to the Case and Group features:

  • “Search within a Case Group” – A new feature is the ability to search for references within a group of cases. This makes it easy for outside counsel to find the references for their cases.
  • “Group List Asset Count Report” – Clicking on the Export option in the List View will now download the group list along with the asset count for each group into an Excel spreadsheet.  Users can also export all the IDS records from a search result in a single instance.

Finally, we have improved security by enhancing the password security policy.

Support and Managed Services

Of course, MaxVal continues to provide Live Support to Max-IDS users and administrators.

Max-IDS is a cloud-based hosted software product.  Users and administrators access Max-IDS through a browser based interface.  MaxVal provides support and training for Max-IDS administrators.  MaxVal also offers Max-IDS as a fully managed service.  We can configure, maintain and administer your Max-IDS server for you.

If you would like more information on these new features, or you would like to see a Max-IDS demonstration, please contact us at bd@maxval.com.