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USPTO Recap – 7 Patent Issuance Facts of 2016 [INFOGRAPHIC]

Patents have gained importance as intangible assets in an increasingly competitive technology landscape. Consequently, patent filings have shown a more remarkable increase in numbers in the past decade than ever before. In many cases the worthiness and market position of a business is valued by the IP portfolio it holds. However, patents are expensive to maintain and a company’s IP assets need to be actively managed.

This infographic features the top patent awardees of 2016 in different segments based on USPTO data. This segmentation can serve as a reference point for performing deeper analysis to support patent prosecution strategies, product marketing strategies, as well as global acquisition and licensing strategies.

uspto-recap-7-patent-issuance-facts-of-2016

MaxVal provides custom range of landscape research and analysis services customized to fit your specific use case. We work with your in-house staff or through external legal counsel. Reach us at bd@maxval.com for your landscape and competitive analysis requirements.


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Yahoo Patents Smart Billboard for Ad Targeting

yahoo-patents-smart-billboard-for-ad-targeting

Yahoo has filed a patent for a camera equipped “smart” billboard that has a wide array of sensors and drone-based cameras to collect information about people for ad targeting.

According to the details in the application no 14/675,004 published on Oct 6th, 2016, the billboards or drones placed in public will have audio and video collection capabilities, speech recognition, and retina scan to determine what viewers are looking at or conversing about. The aim is to make billboards smart and show people ads that are most relevant.

The sensors in the camera would detect if people are paying attention, retina scan to check if people are looking directly at the ad, use proximity and image recognition to see if pedestrians are slowing down while passing by the ad, and microphone inputs would be used to check for ad-related keywords being spoken.

The patent application states, “instead of relying on “personalization” like online advertising, the techniques described herein rely on “groupization,” i.e., selection of advertising content based on an aggregate representation of the target audience that is derived, at least in part, from real-time information.”

The patent application was submitted March 2015 and was recently made public by the United States Patent and Trademark Office (USPTO).

Ever since the birth of online advertising, companies have been monitoring clicks on ads and collecting data. But, directly observing people when they are on the go was out of the question. That’s all about to change as Yahoo has filed this patent which tracks and monitors an entirely different kind of traffic.

Even though the proposed billboard is indeed smart, the conception raises two major concerns

  • Yahoo collects information on people and uses it to show relevant ads. Good, but where does the data go? Does Yahoo delete it or do companies who have placed a bid on the billboard content get access to that information?
  • People are not given an option to opt-out and disable the ads as it’s impossible to block a billboard

The application is still pending with the USPTO and if it’s approved let’s hope that Yahoo protects the privacy of the user’s data.

Here’s a diagram from the patent document which explains the concept

yahoo-patent-image_uspto

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USPTO Patent Issuance Report – First Half-Year of 2016

uspto-patent-issuance-report-first-half-year-of-2016

Technology growth is becoming increasingly complex and the long tail of inventions is growing day by day. Any business that comes with an innovative creation has to protect it through some legally enforceable rights, and this is where patents come into action by protecting your ideas through an extensive system that has been developed around them.

We have already crossed the halfway point of the financial year and the number of patents issued shows a steady growth.

So, do you know what’s happening in the world of patents? MaxVal has recapped all the latest US patent trends from the first half of 2016.

The total number of patents issued by the USPTO between Jan’16 to June ‘16 is 168,077

  • US is ranked highest with a massive number of 109,353 patents received so far followed by Japan 24,200, Slovakia 10,047, Germany 5,279, China 4,830, Taiwan 2,707, and France 2,202.
  • Filing for a patent with the US Government is indeed a crucial step. But, it involves a wide swath of legal formalities. The top law firms that have represented the most number of patent grants are Oblon, McClelland, Maier & Neustadt, L.L.P, Sughrue Mion, PLLC, Birch Stewart Kolasch & Birch, Fish & Richardson, and Cantor Colburn LLP.
  • Computer technology is no further behind this year than any other industry. Computer Technology, Digital communication and Telecommunications held on to the top three spots in the R&D areas with 35,464, 18,285 and 17,865 patents issued respectively. Top patent awardees in this arena were Qualcomm (542), Ericsson (828), Samsung Electronics (803), and LG Electronics (755).
  • When it comes to the tech industry, patents are their lifeblood. The number of patents filed by companies such as Samsung, IBM, Canon, and Google, proves how much these tech companies rely on patents. Some of the world’s well-known discoveries have been found through university research. Although the list is lengthy, here are few of the top research institutes like the University of California, Industrial Technologies Russia, Massachusetts Institute of Technology, and Stanford University who obtained the highest number of patents during the first half of 2016.

In today’s technologically driven world, it is imperative that every business steeped in new ideas or innovations should be more IP-aware.  The only way to keep the competitors at bay is creating a shield of strategic IP-protection to provide complete certainty that your place in the market is safe.

Download the complete report here

MaxVal provides custom range of landscape research and analysis services for in-house staff or through external legal counsel. Reach us at bd@maxval.com for your landscape and competitive analysis requirements.

IP5 Global Dossier


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The New Game Changer – IP5 and Global Prosecution Data

It has been over fifteen years since the release of Private PAIR. It was one of the most significant technical achievements by the USPTO and one of the major milestones in the patent data revolution by allowing electronic patent filing and data access.

Although a real game changer fifteen years ago, as anyone who tried to get through the latest Java updates to access Private PAIR (especially on a browser other than FireFox) can attest, Private PAIR is far from cutting edge in 2016.

Make no mistake; PAIR is still the bread and butter for US patent practice operations and a valuable source for patent prosecution data. However, today’s savvy IP Managers are looking for additional tools and data to elevate their IP management.

One of the major reasons why PAIR is no longer the game changer that it once was is the internationalization of patent portfolios. US patent data is simply no longer enough to provide the complete view of patent portfolios. For many companies, a significant portion of their portfolios are now non-US patent assets.

One indicator of the importance of non-US patent filings is the PCT national phase filings. Based on the latest WIPO data, although US is the single most popular national phase filing destination in 2014, the total number of national phase filings in four popular non-US patent offices (China, EP, Japan and Korea) is now more than twice the number of US filings (128,946 US filings vs. 267,688 non-US filings).

PCT national phase filings in China, Europe, Japan, Korea and US in 2014PCT 2014

Country

Number of national phase entries in 2014

China 79,612
Europe 92,627
Japan 58,337
Korea 37,112
United States 128,946

Table and Graph 1: PCT national phase filings in China, Europe, Japan, Korea and US in 2014 from WIPO IP Statistics Data Center http://ipstats.wipo.int/ipstatv2/index.htm?tab=patent.

The top five Patent Offices (IP5) have recognized this internationalization phenomenon and many directives have been introduced to facilitate cooperations between the patent offices. Perhaps the most significant since the PCT itself is the IP5 Co-operation.
IP5 CountriesIn their own words, IP5 is the name given to a forum of the five largest intellectual property offices in the world that was set-up to improve the efficiency of the examination process for patents worldwide (www.fiveoffices.org).

The members of IP5 are:

To IP Managers, the most immediate impact of IP5 is the efforts to facilitate greater integration of the global patent system through sharing of patent data. For example, the IP5’s Common Citation Document (CCD) application now allows access of up-to-date citation data of all five patent offices.

Perhaps even more impactful is the IP5 Global Dossier Service, which integrates prosecution data of EPO, JPO, KIPO, SIPO, and USPTO. For the first time, IP managers can now have a global view of prosecution history and status of five most popular patent offices that accounts for a vast majority of patent filings.

This global view that is now available to IP managers is the true game changer of intellectual asset management in 2016. Successful harnessing of this technology, especially in combination with private PAIR, will provide IP Managers the correct, current and complete view of their patent portfolios, and thereby allowing them to take informed actions and perform meaningful analytics.

Steven Gong, JD, MSCE
Director, MaxVal, SymphonyIAM Product Manager
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Transparency is Critical in a Patent Annuity Payment Service

MaxVal Annuity Payer was launched in 2014 with the goal of providing complete transparency on annuity payment fees, as well as simplified workflow and excellent service.

Pricing transparency is an important issue for customers. Things get complicated when negotiated fees are combined with currency exchange and foreign agent fees. Misunderstandings over fee amounts can easily occur. These misunderstandings can spill over into the courts.

MaxVal Annuity Payer provides comprehensive status updates and pricing transparency on all renewals, using a simple, easy to use web portal.

MaxVal’s simple and transparent flat fee structure (which is highly competitive) aims to take the uncertainty out of budgeting for annuity cost. The flat service fee eliminates the need to keep track of the foreign agent fees, exchange fees, etc., which can substantially add to the total annuity cost.

Proper annuity payment management is critical to any patent operation. Maintaining even a medium sized international patent portfolio can be expensive. MaxVal’s Annuity Payer has helped its customers to simplify their workflow and achieve transparency and cost savings to their annuity management.

Annuity Payer is available as a service administered by MaxVal, or as a SaaS software application and eCommerce style interface that can be used directly by IP Operations staff. Please contact MaxVal more information.


Why do We Pay Maintenance Fees?

Patent maintenance fees continue to increase. However, once the patent has issued, the USPTO does not provide any ongoing services to the patent holders. Therefore patent holders are correct in wondering why they must pay patent maintenance fees and why the fees are increasing. The requirement of maintenance fees has both economic and public policy reasons. First, maintenance fee revenue is used to fund the operations and expenses of the USPTO such as the examination of new patents. Second, maintenance fees allow for the promotion of progress of science and useful arts.

Funding the USPTO

The net cost of the USPTO program in 2014 was $2.73 billion. This was a 7.6% increase from the 2013 program costs. Additionally, the costs for the Patent business of the USPTO have increased 38.5% since 2010.  To combat this growing expense sheet, the USPTO must raise funding.

Maintenance fees are a big part of the USPTO revenue. Maintenance fees accounted for 41.4% of the USPTO’s $3.02 billion revenue in 2014.  The revenue generated from maintenance fees has increased by 49% from 2013 to 2014. This increase was preceded by a 20% increase in maintenance fee revenue from 2012 to 2013.Thanks in large part to the maintenance fees, the USPTO was able to have a net income of $290 million.

It is clear that without the maintenance fees the USPTO would be operating at a loss. The cost of collecting maintenance fees is low, whereas the USPTO is incurring most of their costs in the patent application examination process.

Foster Progress of Science and Useful Arts

This is unequivocally the goal of patent law as stated in the Constitution and maintenance fees have a strong impact in achieving this goal. The underlying public policy of collecting maintenance fees is to make technology available to the public as soon as possible.

Escalating maintenance fees force patent owners to decide if the patent warrants higher future maintenance fees. If a patent holder decides that a patent does not warrant the next maintenance fee, then the patent will be abandoned which frees the patent to the public.  Not only does this allow the public to gain free access to the patented invention but it also prevents patent holders from squatting on a patent to a certain extent. The statistics show that maintenance fees have continued to be a deterrent to squatting on unused patents.

In 2014, 91.8% of patents were renewed at their First Stage. The number of renewed patents dropped to 78.8% for the Second Stage. Furthermore, only 50.7% of patents were renewed at the Third Stage.  The First, Second, and Third Stage refer to the maintenance fee deadlines in the 3.5, 7.5, and 11.5 years of the patent term. These patent renewal rates have remained comparable and without much fluctuation since 2010.

It is evident  that many patent owners cannot justify paying the 3rd maintenance fee for a patent. Increasing the maintenance costs would only (which are discounted by 50% for small entities) further this goal of promoting progress of science since it forces patent holders to make a rational decision in regards to their patent.

Written by: Bharath Venkat, J.D.


Competition Monitoring Across Patent Lifecycle: Using 5 Powerful Email Alerts

The patent landscape is tougher and more complicated than ever before. The ever-increasing amount of patent litigation cases in district courts, federal courts, and PTAB trials and appeals courts is a clear indicator of the struggle inventors and companies face to secure their intellectual assets. Applying for a patent, getting it granted and monetizing it is harder than it was a decade ago. This state of affairs automatically makes the inventors and patent professionals obsessive towards competitor monitoring.

Collecting competitor data and deriving the relevant information is only one half of competent competitor monitoring. Inventors and patent professionals must also analyze and convert this relevant information into actions. It is important to keep tabs on competitors not just to learn their actions but also to benchmark and hone against their technologies and strategies.

However, the immediate question that comes to mind would be: With different stages available in a typical patent lifecycle, which ones should be monitored and most importantly, how to efficiently monitor these stages. Each stage comprises its own opportunities and threats which can be utilized effectively to improve competitor monitoring and safeguarding patent assets if extracted and analyzed correctly.

This post discusses the significant stages to be monitored in a typical patent lifecycle while answering why and how to monitor using technology enabled alerts.

Patent Monitoring Life-cycle

Patent Monitoring Life-cycle

Whom to monitor?

The publication stage is the first place that everyone should start competitor monitoring.

Discover new innovations: It is also critical to locate the new entrants who could become a potential threat. It also helps in staying up-to-date on the current trends of the relevant market in order to stay ahead of them.

Avoid unnecessary stress: In the IP world, due to the “First to File” concept, it is very common to see someone else file an application for an invention which is still under your idea formation stage.

Follow your competition: R&D and C-level teams can amend their IP strategies proportionately to their competitors based on their patent publications.

1) MaxVal’s Patent Publication Alert sends a custom email alert right to your inbox whenever a new patent application matches your interest or requirement gets published. The frequency can be set weekly, bi-monthly, or monthly as per your convenience. You can fine tune the search criteria as you wish and follow by assignees, inventors or technologies in the US, PCT, and EP.

What to monitor?

Now that you have found who to follow based on the applications published it is important to zero in on the published applications of your interest so you can keep an eye on them throughout the prosecution.

Here are a couple of patent prosecution resources worth monitoring.

USPTO_PAIR

USPTO PAIR

Latest IFW updates: The “Image File Wrapper” tab will show you what was filed by the applicant, accepted or rejected by the examiner, and how the applicant responded. You will be able to see all of the office actions that have taken place between the USPTO examiner and the applicant.

Continuity data: tells you if a patent of interest is a continuation application, or the parent of a continuation application.
These two alerts enable the attorneys to track their own applications as well as the competition’s. As Publication Alerts, the frequency and search parameters can be customized.

 

2) PAIR-Alert for Public PAIR offers PAIR/EPO patent prosecution status and IFW updates patent applications.

3) Max-PAIR for Private PAIR automatically logs into the USPTO Private PAIR using the attorney’s PKI certificate number and fetches PTO activities and prosecution status for applications associated with a customer number.

Stay ahead of competition

Through the patent process, the applicant can challenge the examiner’s decisions or a third party can challenge the validity of an issued patent with the PTAB.  The Patent Trial and Appeal Board’s duties include review of adverse decisions of the patent examiner, review of appeals from the applicant for re-examinations, derivation proceedings; inter partes and post-grant reviews, and rendering decisions on interferences.

Keeping a track on these trials and appeals will give you an opportunity to stay on top of what is happening around the application/patent of your interest.

4) MaxVal’s PTAB Review Alert  is an easy way to follow Interference/Post Grant and Inter partes review as they occur at the PTAB. This custom alert will deliver the patent bibliographic details and a docket report with searchable files of documents filed during the review process.

Identify Threats

Your competitor monitoring effort does not end at the prosecution stage or even after a patent is issued. A constant watch at this point helps you to proactively monitor if the patent of your interest is litigated as well as to gauge the filing trends, patterns of case outcomes, plaintiffs and defendants, etc. This is not only to understand current affairs but also to be prepared to handle future threats.

5) Litigation Daily Alert is a custom alert that helps patent litigation attorneys keep up with the litigation trends and  learn how a patent was dealt with in earlier cases so they can alter their strategies if needed. It is a targeted email which contains all new and closed ECF, PACER and ITC cases.


5 Everyday Tasks of Patent Attorneys/Paralegals (and Instant Solutions)

Patent attorneys and paralegals handle a sizable list of routine tasks for their clients every day. Some are minor but repetitive; some are complicated as well as time consuming. While it may not be possible to completely automate those complex tasks like drafting claims, prior-art search, proofreading or certain USPTO activities; it is feasible that certain simple tasks like patent term estimation, generating IDS forms or claim charts or even a mere litigation check can be done rapidly and efficiently by leveraging the power of online tools. These tools are the helping hands for Patent attorneys, paralegals and even for individual inventors, not only when they are looking to save time, effort and money, but also when they want to make some informed decisions.

Let’s see the 5 tasks that take the productive hours of patent attorneys or their team when it’s done manually but become easier when using some online tools.

1. Determining the term of a patent is primarily carried out to see until when a patent is in force. Usually the term of a patent is calculated by considering several factors like filing date; grant date, PTA, PTE, terminal disclaimers, maintenance fee payment details, etc. There are times when we look for a basic yet an instant way to estimate the term of a patent.

PTEInstant Solution-1: Patent Term Calculator
For those who want to get simple estimates, Patent Term Calculator is an instant tool that estimates the term of a given U.S patent number. It fetches the patent data from EPO/INPADOC to do this estimation.
It collects all the priority numbers/dates and identifies the right priority date (by eliminating the foreign and provisional priority) and adds the number of years based on the filing date and also extracts PTA days from the face of the patent when available and adds it to the term. It will also check for presence of TD on the front page and indicate in the interface.

2. Patent Family Tree is the graphical representation of a patent family based on genealogy and timeline. It is usually used to visualize the relationship of the patents and the jurisdictions covered.

PTFGInstant Solution-2: PTFG
Patent Family Tree Generator (PFTG) generates a visually interpretable family tree using any given patent, application, or publication number. The patent family tree is generated based on genealogy and timeline. This product extracts the priority information from INPADOC and groups it to generate an extended family tree where all the applications that share at least one common priority are included in the map, which includes provisional and abandoned applications.


3. IDS Submission (PTO/SB/08A and 08B)
is a critical part during the US patent prosecution process. An inventor or his representative is obligated to submit all the known prior-art material to the patentability of the invention. Attorneys and paralegals often spend hours generating IDS forms every time when they want to submit citations for their clients. Usually the time is spent on checking the accuracy of the data (i.e., the inventor/assignee names, publication dates, etc.)

IDS GeneratorInstant Solution-3: IDS Generator
Make this long process shorter. Through this tool, anyone can easily generate IDS forms in the USPTO-approved EFS-ready format. You simply enter patent or publication number(s) or copy and paste from a document (Word or Excel); the tool takes care of the rest. This tool extracts the relevant inventor/assignee and the dates from official public database and auto populates the form.

 

4. Claim Charts are usually prepared while evaluating the patent claims or during an infringement analysis.


Claim Chart Generator-newInstant Solution-4:
Claim Chart Generator
This handy tool generates claim charts broken down by claim element in a downloadable format in a click for any given U.S. patent/publication number, PCT Number, or EP patent/publication number. You can also choose the output formats as Word, Excel or HTML.

 

5. Checking whether a patent has been litigated is mostly executed by attorneys and paralegals for research, licensing, acquisition, or litigation purposes.

Litigation CheckerInstant Solution-5: Has This Patent Been Litigated?
This tool is a lighter version of the MaxVal’s Litigation Databank that gives a quick answer about the litigation history of a patent. You just input the patent number and it tells you if it’s been litigated or not along with the number of cases. One can use this tool to perform litigation checks for cases across US District courts, CAFC, ITC and the Supreme Court.


MaxVal’s PAIR Uploader – An Easy Tool to Upload Documents for IDS filing

PAIR Uploader (BPAIR Uploadereta) is a desktop application designed to allow users to upload their EFS ready documents in bulk into PAIR.  The tool obviates the need to upload documents one by one, thereby simplifying IDS filings.

In addition, the PAIR Uploader (Beta) is also integrated with our Max-Insight suite of tools. Once you have installed the tool, select the appropriate document type and category and then click “Submit”. After the initial setup, users can drag and drop EFS ready documents into corresponding category folders and the tool will upload the documents.

Key Features

With PAIR Uploader (Beta), now paralegals can

  • Follow simple work flow in uploading documents
  • Upload files category-wise with preview/edit option before submission
  • View dynamic acknowledgement from PTO as soon as the file is uploaded

Benefits

  • Saves time
  • User friendly
  • Data security with digital authentication
  • Ensures upload of all required documents without missing any
  • Competitive service fee