Patent
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Patent Research
Patent Research is a process to analyse and evaluate relevant patents and/or literature/publication available in public domain (which is referred to as “prior art”) to locate the closest existing disclosure to the invention/technology of interest. The patent search benefits an inventor by: Avoiding infringement: aiding individuals and companies avoid unintentional infringement on existing patents. By identifying prior art, innovators can understand what is already Patented and prevent an overlap with existing patented technologies. Assessing patentability: identifying the closest prior art to evaluate how patentable the invention is, and also what specific parts of the invention are the most different (i.e., novel, and inventive) from the prior art. Research and development: providing valuable insights into the state of the art in a particular field. Researchers can use this information to identify trends, gaps in technology, and areas where innovation is needed. It can guide the direction of future research and development efforts. Licensing opportunities: Patent Research is often used in uncovering opportunities for licensing. If a Firm or individual holds a patent that aligns with its interests, it may explore licensing agreements to use or commercialize that technology. Strategic planning: using patent searching for strategic planning. Understanding the competitive landscape and the intellectual property held by competitors helps in making informed business decisions and developing effective business strategies. Investor confidence: seeking investors or partners, having a clear understanding of the intellectual property landscape enhances confidence. Investors are more likely to support projects that have been thoroughly vetted for potential patent issues. Litigation avoidance: conducting comprehensive patent searches, companies can reduce the risk of patent litigation. Proactively identifying potential conflicts allows for adjustments to products or services, or seeking licensing agreements, before legal disputes arise. Validating innovation: serving as validation for the novelty and inventiveness of an idea. This can be particularly valuable when seeking funding, partnerships, or collaborations. Patent portfolio management: using patent searching to manage and optimize their intellectual property assets. This includes identifying patents that may no longer be relevant or valuable and making decisions about whether to maintain or abandon certain patents. Competitive intelligence: providing means of gathering competitive intelligence. Understanding the patents held by competitors can offer insights into their technology roadmap and potential areas of collaboration or differentiation.Patent Searching
Patent searching is an integral part of the innovation and IP landscape, contributing to legal compliance, informed decision-making, and the strategic development of intellectual property portfolios. Our team caters a wide range of clientele to the following searches:- Patentability analysis/Novelty Search Determining if a similar invention already exists. This helps assess the novelty and non-obviousness of the proposed invention. Time duration: This process usually takes 2-5 days as per requirements.
- White space/gap identification Accessing proprietary patent and literature tools/databases to direct the inventors towards the to-be ventured technological gaps within their field. Time duration: This process usually takes 2-5 days as per requirement.
- Landscape Analysing trends in the domain of interest. Analysing patents in a specific field can help researchers and businesses understand the state of the art, emerging technologies, and key players. Time duration: This process usually takes 6-10 days as per requirement.
- Competitive analysis Conducting patent searches to analyse the intellectual property portfolios of competitors. This can provide insights into the technological landscape, potential threats, and opportunities. Time duration: This process usually takes 6-10 days as per requirement.
- Freedom to operate Search (FTO) Evaluating and providing/reporting a legal opinion to conclude if a product/process can be made, used, sold, or offered for sale without any legal liabilities within the client-curated jurisdiction. Time duration: This process usually takes 6-10 days as per requirement.
- Invalidation/ Invalidity search Challenging the validity of a granted patent as per client curated jurisdiction to present evidence that the patent should not have been granted in the first place due to existing technology or publications (that the patent examiner was not aware of), lack of novelty, non-obviousness, or issues with the patent application process.
Methodology:
Our patent team performs in-depth analysis by using open databases such as USPTO, EPO, google patents, IPO, T-Plat Pat, and WIPO. In addition to this, we also implement proprietary patent and literature tools/databases such as PatSeer (Paid database), Web of Science, Pubchem, IEEE, ACM, STN, Research gate, Lexis Nexis, Citeseer, PACER, SPE for further validation. Our team undertakes searches by:
- Understanding the invention 🡪 forming a search strategy 🡪 conducting searches 🡪 analysing the search results 🡪 drafting a report
- Understanding the invention: Understanding and evaluating the disclosure (invention/technology) in its entirety, and identifying the key features of the same.
- Forming a search strategy: ✔ Identifying key words and their variants (synonym) ✔ Identifying classes associated with the keywords, and the domain in its entirety such as CPCs, F-terms, File index (FI), and IPCs ✔ Class-based searches help in overcome language barrier and help in achieving domain-defined results. The classes are identified by way of: google patent search, EspaceNet classification search, classes of Target, and cited patents, USPTO, etc ✔ Strategically formulating search strings to garner maximal information on the invention/technology. Our team specialises in ✔ devising combination search strings comprising of classes, as well as keywords to access significant data. ✔ Evaluating, identifying, and selecting appropriate fields such as assignees, publication date, priority date, etc. for carrying out pin-pointed and relevant searches ✔ Selecting appropriate databases for relevant information
- Conducting searches, and analysing search results ✔ Carrying out in-depth analysis of the search results to determine the registrability, gaps or trends as per requirement.
- Compiling a report A patent search report is a crucial step in the process of filing a patent application. It involves conducting a comprehensive search to identify existing patents and published applications that may be relevant to the invention in question. It fundamentally involves: ✔ A brief overview of the technology/invention as per the analyst’s understanding ✔ An excerpt of key features identified by the analyst (search criteria identified) ✔ Search criteria encompassing keywords, classifications, and search strings identified and evaluated ✔ Search methodology encompassing search protocol, and the databases/search engines employed. A brief summary of the search result encompassing:
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- the total amount of data screened.
- number of relevant patents, and publications, as well as noteworthy applications identified.
- Feature specific mapping demonstrating its relevancy. Analysis and conclusion
- Highlighting similarities and differences between the prior art and the invention and discussing any potential obstacles or challenges that may arise during the patent application process.
- providing recommendations for the next steps, including whether to proceed with the patent application, modify the invention to address potential issues, or explore alternative strategies.
- Summarizing key findings and providing legal opinion to conclude the report.
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Patent Drafting (Provisional and Complete Specification)
We take pride in working closely with inventors to transmute an invention or technology into a strong techno-legal document and build a robust patent right. Our technical experts specialize in implementing clear and concise techno-legal language, avoiding the use of ambiguous terms, evaluating and identifying what can be claimed, disclosing the best mode for practicing the invention, ensuring the claims are supported by a detailed description, and understanding and incorporating drawings to aid in comprehending the invention, thus ensuring the creation of a fortified and robust document.
Time duration: This process usually takes 2-4 weeks, as per requirement.
Patent Filing (India or Overseas)
Patent filing refers to the process of submitting a formal application to a government authority, typically a patent office, to seek protection for a new invention. There are several formal requirements that needs to be taken care of in order to successfully file a Patent application. Our dedicated filing and formalities team specialises in evaluating requirements and compliances for Domestic and Overseas Patent APPLICATIONS.
✔︎ Domestic filings:
Filing a patent application in India involves a series of steps that must be carefully followed to secure patent protection for an invention. The process is governed by the Indian Patents Act, 1970. We specialise in:
- Evaluating, and determining the right type of patent application: deciding whether to file provisional or complete specification. A provisional specification provides a priority date and allows filing of complete specification within 12 months.
- Filling out requisite forms (Form 1, 2,3, 5, and 26 etc.) and fees
- Requesting for examination and publication (expediating the process as per requirement if the expediating conditions are fulfilled)
Our dedicated filing and formalities team remains updated with changes in Rules and Procedures for Online filing and advises the clients accordingly.
✔︎ International filings
The firm possesses ability to file Patent applications before the International Bureau of World Intellectual Property Office (WIPO). Alternatively, the firm relies on its International Network of Patent Law firms spanning over 150 countries to file Patent Applications via Paris Convention Route. We will be pleased to provide quotations of various costs associated with International Filing of Patents via PCT or Paris Convention Routes. Please do not hesitate to contact us.
Source: WIPO
What is a PCT Application? Filing an international patent involves a coordinated process to seek protection for an invention in multiple countries. The most widely used international framework for this purpose is the Patent Cooperation Treaty (PCT). We specialise in:
- Determining the receiving office: Receiving office is where an applicant wishes to file an international patent application. It can be your own country or any other competing authority.
- Filing PCT application: submitting international patent application through selected receiving office with requisite forms and fees.
- Requesting international search
- Evaluating international search report
- Optionally requesting supplementary international search
- Evaluating and determining designated countries
- Providing support to ensure patent grant in designated countries through legal networking.
What is filing of a Patent via Paris Convention? Filing a patent application through the Paris Convention involves leveraging the priority right provided by the Paris Convention for the Protection of Industrial Property. This international treaty allows an applicant to claim priority for an earlier-filed application in one member country when filing a subsequent application in another member country. We specialise in:
- Carrying out initial filing
- Evaluating and claiming priority right
- Preparing subsequent/ convention application
- Filing convention application along with required forms, fees, and documentation to the IP office of the selected member country.
- Requesting examination and evaluating reports to ensure grant.
Our well-systemized filing services adhere to the local requisites and assure fortified and swiftly timed/quick-paced/fast paced Patent filings within the desired jurisdictions (India or Overseas).
Time duration: This process usually takes 2-15 days as per requirement.
Patent Monitoring
Patent Monitoring involves the ongoing surveillance of newly published or granted patents to keep track of developments in a specific technology or industry. The goal of a patent watch is to stay informed about the activities of competitors, emerging technologies, and potential threats to one’s intellectual property. Patent monitoring ensures efficient Patent management and aids in identifying attempts made by businesses or people to register similar inventions/technology. Our team engages in well-regulated assessment and reporting of applications/inventions/technologies that closely relate to our client’s criteria, permitting them to feasible undertake suitable action to curb any potential infringement.
Stratjuris Law Partners perform Patent monitoring for:
- Staying informed about the progress of patent application by monitoring the office actions/ examination reports/ hearings issued by the patent examiner/ Controller. Responding promptly and professionally to any requests or rejections to ensure a smooth examination process.
- Continuously monitoring newly granted patents in field of interest, especially those issued to competitors. This helps in understanding the competitive landscape and assessing the potential impact it has on the filed IP.
- Keeping an eye on patent litigation cases within the industry of interest. Understanding legal challenges and disputes related to similar technologies can provide valuable insights into potential risks or opportunities for the filed IP.
- Staying updated with market trends and emerging technologies that may affect a filed IP. This information can help in adapting strategies or identifying new areas for innovation.
- Continuously monitoring patent landscape to ensure that the filed IP remains within the bounds of freedom-to-operate. This is particularly important business evolves or expands into new markets.
- Exploring licensing opportunities by monitoring patents available for licensing. Additionally, identify potential partners for collaboration based on their patent portfolios.
- Extending monitoring activities to international patent filings and grants. Changes in the global patent landscape can impact the ability to protect a filed IP in different jurisdictions.
- Keeping track of maintenance fees and deadlines associated with granted patent. Failing to pay maintenance fees can result in the expiration of patent rights.
- Periodically reviewing and reassessing patent portfolio to study if IP within the portfolio continues to align with business objectives.
We understand that actively monitoring the patent landscape is imperative as it can help in making informed decisions about patent strategy, responding effectively to changes, and maximizing the value of an intellectual property.
Time duration: This is a recurring process and is usually done on Monthly or Quarterly basis
Patent Prosecution
Patent prosecution refers to the process of responding to the Objections raised by the Patent Examiners and securing the patent. It involves interactions between the inventor or their representative (usually a patent attorney or agent) and the patent office examiner/ authority/ Controller. The goal of patent prosecution is to persuade the patent office to grant a patent for the claimed invention.
Our team specializes in evaluating, and prosecuting patent applications to ensure their speedy registration by:
- Replying to examination reports
Evaluating examination report and strategically drafting appropriate responses to address the contentions raised by the Examiner / Controller. - Attending hearings
Appearing before the Examiner/ Controller and strategically addressing contentions raised by the Examiner/ Controller to secure patent registration.
We, at Stratjuris Law Partners understand the cruciality of effective communication with the Controller for feasible patent grant, and ensure effectuating significant role in navigating complexities of patent prosecution and increasing the likelihood of a successful outcome. - For international filing:
- Providing legal opinion with respect to international search report (ISR) produced by the international search authority (ISA), and/or evaluating/ providing support to evaluate and strategically draft appropriate responses (written submissions) to address the contentions raised therein.
- Providing legal opinion with respect to office actions/ national examination reports of designated countries and/or support to respond to contentions presented therein.
- Providing support to initiate hearingsTime duration: This process usually takes 7-15 days as per requirement.
Patent Licensing and Patent Assignment
We understand that licensing and technology transfer aids in commercializing IP and maximally capitalizing its gains. We expertise in identifying and studying the requisite domain, and strategizing and directing our clients to seek/propel their prospective business goals by:
A. Licensing:
Licensing a patent involves granting permission to another party (licensee) to use, make, sell, or distribute the patented invention, subject to the terms and conditions agreed upon in a licensing agreement. This can be a mutually beneficial arrangement for both the patent holder (licensor) and the licensee. We understand that licensing patents can be a strategic way for patent holders to monetize their intellectual property, expand market reach, and foster innovation.
We provide support in:
- Evaluating a patent: Assessing the value and potential applications of an invention. Understanding its market potential, competitive landscape, and any limitations or improvements that could enhance its value.
- Market research: Conducting market research to identify potential licensees who may be interested in a patented technology. Considering the industry, market demand, and the relevance of a patent to potential licensees.
- Determining licensing terms: Defining the terms of the licensing agreement, including the scope of the license, duration, geographical limitations, and any exclusivity provisions. Specifying whether the license is exclusive (only one licensee) or non-exclusive (multiple licensees).
- Royalties and payment terms: Determining the royalty structure and payment terms. Royalties are the payments made by the licensee to the licensor based on sales, usage, or other agreed-upon metrics. Establish how and when payments will be made.
- Drafting licensing agreements:
Preparing a comprehensive licensing agreement that outlines the rights and responsibilities of both parties. The agreement fundamentally evaluates and covers all relevant aspects, including the scope of the license, financial terms, confidentiality, and dispute resolution mechanisms.
- Negotiating the agreement:
Engaging in negotiations with potential licensees to finalize the terms of the licensing agreement. Opening up to discussions and consider seeking legal advice to ensure the agreement is fair and protects your interests.
- Due diligence:
Conducting due diligence on potential licensees to ensure they have the capability to commercialize the patented technology successfully. This may involve assessing their financial stability, reputation, and relevant experience.
- Executing licensing agreement:
Once the terms are agreed upon, both parties sign the licensing agreement. This legal document formalizes the relationship and specifies the rights and obligations of each party. We shall also provide you details on the Stamp duty applicable on the agreement.
- Enforcing the agreement:
Monitoring and enforcing the terms of the licensing agreement. This includes ensuring that the licensee complies with payment obligations, abides by the agreed-upon scope of the license, and respects any confidentiality provisions.
- Renewal and termination:
Specifying the conditions for renewal or termination of the licensing agreement. Include provisions for addressing breaches of the agreement and outline the process for resolving disputes.
Time duration: This process usually takes 15-30 days; more specific timelines can be worked out in actual situations.
B. Assignment:
Patent assignment involves the transfer of ownership of a patent from one party (assignor) to another (assignee). This transfer is typically documented in a legal agreement known as a “Patent Assignment Agreement.” We understand that patent assignments are essential for businesses, inventors, and organizations that want to transfer or acquire patent rights.
We provide support in:
- Strategic negotiation and defining of terms: This includes identifying the specific patent(s) being assigned, any limitations on the assignment, and the consideration or compensation for the transfer.
- Drafting Patent Assignment Agreement: This includes preparing a formal patent assignment agreement that clearly outlines the details of the assignment. The agreement fundamentally includes the names and addresses of the parties, a description of the patent(s) being assigned, the effective date of the assignment, and the terms and conditions of the transfer.
- Consideration and Compensation: Specifying the consideration for the assignment, which is the payment or other benefits exchanged for the transfer of the patent. This could be a lump-sum payment, ongoing royalties, or other agreed-upon compensation.
- Execution of the Agreement: Both the assignor and assignee must sign the patent assignment agreement to make it legally binding. Depending on jurisdiction, additional formalities, such as notarization or witnessing, may be required.
- Recording the Assignment with the Patent Office: In many jurisdictions, it’s advisable to record the patent assignment with the relevant patent office. This serves to notify the public and establishes the assignee’s legal ownership rights. The process and requirements for recording assignments vary by country.
- Notifying other parties: The parties involved may need to notify other interested parties, such as licensees, of the change in ownership. This is to ensure that the rights and obligations under existing agreements are properly addressed.
- Updating Patent Office records: Ensuring that the patent office records are updated to reflect the change in ownership. This may involve submitting documentation and paying any required fees.
- Post-assignment obligations: Clarifying any post-assignment obligations, such as the assignor’s duty to cooperate with the assignee in matters related to the assigned patent.
- Enforceability and Legal Compliance: Ensuring that the patent assignment agreement complies with legal requirements and is enforceable. It’s advisable to seek legal advice to make sure that the agreement meets the relevant laws and regulations.
- Maintaining Documentation: Keeping copies of the executed patent assignment agreement and any related documents in a secure and easily accessible manner for future reference.
This process usually takes 15-30 days; more specific timelines can be worked out in actual situations.
Patent Portfolio Management
Patent portfolio management involves the strategic and systematic administration of a collection of patents owned by an individual, Firm, or organization. A well-managed patent portfolio aligns with business objectives, maximizes the value of intellectual property, and mitigates potential risks. We provide support in:
- Defining business objectives: Clearly articulating the business goals and objectives that the patent portfolio is intended to support. This may include protecting core technologies, generating licensing revenue, or creating a competitive advantage in the market.
- Portfolio assessment: Conducting a comprehensive assessment of the existing patent portfolio. Evaluating the quality, relevance, and strategic alignment of each patent with the business goals. Identify strengths, weaknesses, opportunities, and threats (SWOT analysis).
- Prioritization: Evaluating, identifying, and prioritizing patents based on their strategic importance to the business. Focusing resources on maintaining and strengthening patents that are most critical for achieving business objectives.
- Market and Technology trends: Staying informed about market trends and emerging technologies. Regularly reassessing the patent portfolio in the context of evolving industry landscapes to identify new opportunities or areas that may need additional protection.
- Competitior analysis: Monitoring competitor patent activity. Understanding their patent portfolios, identify potential threats, and look for opportunities to strengthen your own portfolio in response to emerging competitive challenges.
- Implementing strategic filing decisions: Making informed decisions about filing new patent applications. Aligning patent filings with business priorities and ensure that each application supports the overall patent strategy.
- Managing cost: Optimizing costs associated with maintaining and enforcing the patent portfolio. Periodically reviewing and reassessing the value of each patent in relation to the associated costs.
- Licensing and monetizing: Exploring opportunities for licensing patents to third parties. Licensing agreements can generate revenue and allow others to use the patented technology under specified terms.
- Enforcement and litigation strategy: Developing a strategy for enforcing patents against potential infringers. Assessing the feasibility and cost-effectiveness of litigation, and considering alternative dispute resolution methods.
- Portfolio alignment and business changes: Regularly reviewing the patent portfolio to ensure that it remains aligned with changes in business strategies, product offerings, or market conditions. Considering divesting or acquiring patents as needed.
- Documenting and record-keeping: Maintaining accurate and up-to-date records of all patents in the portfolio, including key dates, assignments, and any licensing agreements as per jurisdictional requirements. Our team performs well-regulated/systematic follow up of every IP in our database to ensure that you are always notified/well-informed with the status of your IP.
- Regular Portfolio Review: Scheduling regular reviews of the patent portfolio to assess its overall health and effectiveness. These reviews may include the evaluation of new opportunities, the removal of obsolete patents, and adjustments to the overall strategy.
Litigation Support Services
Patent litigation refers to legal disputes that arise when one party asserts that another party has infringed on its patent rights. This process involves taking the dispute to court or other legal forums to resolve issues related to patent validity, infringement, and related claims. Our services are curated to identify the commercial prospects of your patent. We specialize in:
- Preparing cease and desist letter/notice: This is drafted before initiating litigation to the alleged infringer. This letter notifies the accused party of the alleged infringement and demands that they stop using the patented technology.
- Initial assessment: For accessing the validity of the patent and the alleged infringement.
- Filing lawsuits/ initiating suits: If a resolution is not reached through negotiation, the patent holder may file a lawsuit in a relevant court. The lawsuit typically includes claims of patent infringement, and in some cases, challenges to the validity of the patent.
- Drafting appeals: Dissatisfied parties may appeal the court’s decision to a higher court. Appeals can focus on legal issues, factual determinations, or both.
- Settlement: Many patent litigation cases are resolved through settlement agreements before reaching trial or during various stages of the litigation process. Settlements may involve licensing agreements, financial compensation, or other mutually agreed-upon terms. We evaluate and provide legal consultancy with respect to the same.
- Enforcement: If the court finds infringement in favour of the patent holder, we help in seeking enforcement of the judgment, which could include injunctive relief to stop further infringement and monetary damages.
- Allied Services: Appearing in all the court, as well as providing expert support/expert opinion(s) on ongoing trials.
Handling Patent Oppositions
Patent opposition is a legal process in which a third party challenges the grant of a patent application before it is officially granted. The objective of a patent opposition is to prevent the issuance of a patent by presenting arguments and evidence against the patentability of the claimed invention. The fundamentally practised types of Oppositions are:
- Pre-Grant Opposition:
Occurs before the patent is granted.
Third parties can file oppositions during the examination phase of the patent application.
- Post-Grant Opposition:
Occurs after the patent has been granted.
Third parties can challenge the validity of the granted patent within a specified period.
Our team specializes in:
✔︎ Opposing patent applications
- Identifying grounds of opposition
- Prior art: Claiming that the invention is not new or inventive in light of existing prior art.
- Patentability Criteria: Arguing that the invention does not meet the patentability criteria, such as novelty, inventive step, or industrial applicability.
- Incorrect Inventorship or Ownership: Asserting that the named inventor is incorrect or that the person or entity applying for the patent is not the rightful owner.
- Drafting robust opposition statements, and Attending hearings/ providing litigation support to challenge the same.
Time duration: This process usually takes 3-6 weeks as per requirement.
✔︎ Defending patent applications
- Evaluating oppositions and strategically drafting appropriate responses to rebut contentions of an Opponent.
- Attending hearings to defend an application
Time duration: This process usually takes 3-6 weeks as per requirement
✔︎ Appealing opposition decisions and filing Writs
We specialize in evaluating, drafting, and providing legal support to rebut the decision of the Controller at higher courts.
Time duration: This process usually takes 3-6 weeks
Freedom to Operate Opinion (for Indian Jurisdiction)
A Freedom to Operate (FTO) opinion, also known as an infringement or clearance opinion, is a legal analysis conducted to assess whether a particular action, such as manufacturing, using, selling, or importing a product or process, would infringe upon the intellectual property rights of others. We understand that Freedom to Operate opinion is a proactive step taken by businesses and individuals to assess and mitigate the risk of infringing on existing intellectual property rights before engaging in a particular action or business activity. We expertise in:
- Comprehending the purpose: We understand that the main purpose of an FTO opinion is to help businesses and individuals identify and mitigate the risk of infringing on existing intellectual property rights held by others.
- Understanding the Scope: Our analysis typically covers relevant patents, trademarks, copyrights, and other intellectual property rights that may be in force in the relevant jurisdiction. Our aim is to determine whether there are any existing rights that could be infringed upon by the proposed action.
- Strategizing a Process: To conduct an FTO analysis, we typically search through existing patents, trademarks, and other relevant databases to identify potential obstacles, and then accordingly analyse the identified rights to determine their scope and validity. Our goal is to provide a comprehensive opinion on whether the proposed action is likely to infringe on any valid intellectual property rights.
- Mitigating Strategies: We help in identifying potential risks, as well as providing recommendations for mitigating those risks. This could involve making design modifications, obtaining licenses, or seeking permission from the intellectual property rights holders.
- Providing legal Advice: We provide legal opinions which ensure accuracy and reliability of the report.
Time duration: This process usually takes 6-10 days as per requirement.
NBA Approval and Foreign Filing License
Stratjuris Law Partners also provides other allied Patent services such as:
- Aiding in procurement of Foreign Filing License to feasibly expand patent portfolio outside India.
Time duration: This process usually takes 3-6 days as per requirement.
- Seeking Approval of National Biodiversity Authority
Our Patent team is well-versed with the requisites of the National Biodiversity Act (NBA) with respect to/concerning Patent Law. We evaluate, advise, and aid in achieving vital NBA approvals.
- Advisory on microbial culture collection
We provide information and advisory on legally depositing novel microbial culture(s). We understand that culture collections are valuable resources for the sustainable use of microbial diversity and its conservation.