TecEsq provide macro level IP strategic support starting from conception of a client’s IP assets to the eventual monetization of the client’s patent portfolio.
Conceptual Analysis
Prior art search also referred to as Patentability/novelty search, is often conducted before filing a patent application or after filing to find one or more relevant publications that predate the filing date of an issued patent or pending patent application. A prior art search helps an inventor determine if the invention is novel before committing the resources necessary to obtain a patent. In the United States, inventors and their patent agents or attorneys are required by law to submit any prior art they are aware of to the United States Patent and Trademark Office so that the patent examiner can take the prior art into account when examining the patent application.
Prior art search reports enable clients (or their legal departments) in accessing the applications in light of published documents. We perform various levels of searches depending upon the requirement of the client. Typically level 1 search includes US patents, US publications and non US patent references (mostly WIPO, and EPO) and web searches. These searches are limited to 7 hours. The level 2 search includes more detailed search of patents and published applications determined by the product description. These searches are generally for 15 hours. The level 3 searches are more focused on the invention and limited to maximum 40 hours.
State of the art search gives an indication to the client as to the IP scenario in a particular domain and enables the client to make intelligent decision with respect to investing in that IP space.
TecEsq has trained professionals who have years of experience and know-how to review complex patent-related documents. Our scientists have the ability to search through online patent and literature databases for thorough searches. Our team conducts searches on USPTO, EPO, Delphion, IEEE, ACM and in various other databases. The searches are performed using keywords, most relevant classifications and other techniques.
TecEsq prepares the report includes a short summary of the invention, most relevant classifications, relevant US patents, relevant US publications, Non US Patents and publications and web url’s along with the citation.
IP Asset Protection Level
Proof Reading - Proofreading identifies errors that can affect the patent's enforceability. From a sample of 1600 patents issued by the USPTO, our team found that 98% of the patents contained mistakes. Over half of those mistakes were made by the USPTO, over a third required a Certificate of Correction to be filed, and 2% contained mistakes serious enough to impair the core claims. Our standardized methodology ensures uncompromised proofreading quality by focusing on specific guidelines and procedures. TecEsq have a multiple level, graduated review process depending on the experience level of the proofreader and the complexity of the patent. Our proofreaders receive extensive training both initially and on an ongoing basis to refresh their skills and are capable of proofreading scanned or electronic documents.
Docketing - Each patent or trademark application handled by an attorney requires the docketing and meeting of a plurality of deadlines. For example, a typical utility patent application may impose a dozen or more time deadlines on a practitioner over the course of its prosecution. While some due dates may merely be reminders to take some action, others are critical deadlines (i.e., prescribed by statute) and failure to timely act prior to these so-called "statutory bar dates" may result in the loss of valuable intellectual property rights or in a legal malpractice claim against the practitioner. Typical actions, which may be docketed and performed by a practitioner in evaluating an invention for patentability, preparing, filing and prosecuting a utility patent application, or in tracking actions anticipated to be taken by the Patent Office.
TecEsq take the stress out of docketing by taking on the burden of maintaining the mountain of dates. Using our state of the art systems and software we can track any number of dates and send out timely alerts of actions to be taken.
Patent Illustration - Patent drawings are critical to any patent application. Our technical staff provides the highest quality output in a timely fashion. Our dedicated illustration staff is highly educated and trained, with degrees in various engineering fields and provides a high-quality alternative for both simple and complex patent drawings and trademark illustrations. Our illustrators are equipped with state-of-the-art CAD software and proprietary delivery system, and are capable of importing a variety of CAD file formats. We can use your CAD files as a starting point or send us instructions and/or rough sketches. We will complete the drawing quickly, usually within a week, and then send you, electronically, a draft of your drawing for your review. After your review, we will send the final formal drawings in a PDF format, and if required, we can also send them in a variety of other formats, including the TIFF format. Our formal drawings will comply with the United State Patent and Trademark Office (USPTO), as well as the Patent Cooperation Treaty (PCT), the European Patent Organization (EPO) and other major patent offices. Illustration services provided are Electronic Schematics, Mechanical, Biotechnical Disclosures, Designs, Chemical Diagrams, Flow charts.
Patent Prosecution - Our team produces technology analysis reports by identifying technical distinctions over applied art that enables a client to prioritize funds for various pending application with USPTO.
Our experts can draft office action responses along with claim amendments that can be verified the client attorney and filed directly in USPTO. The client attorneys need to spend only a fraction of their billing hours which results in huge cost savings for the client.
Assertion Level
Patent Invalidity/validity Analysis
Invalidation Studies – Invalidation studies are conducted to aid infringement litigations.
Invalidation search – An invalidation (or infringement) search is performed to determine actions that violate or are covered by a patent that has not been terminated. The search is conducted with aim of uncovering prior art which invalidates or limits the scope of the patent. Our three levels of invalidation searches are –
High level search – Covers all the aspects of novelty and FTO searches. The search is conducted over a span of 40 hours and is very detailed in nature. Our experience engineers carry out a thorough search of patent and open literature. A citation analysis of the patent is also carried out along with a review of USPTO PAIR information.
Elevated search – Covers all aspects of high level search in a more detailed fashion. The search is conducted over a span of 80 hours and our engineers work in close conjunction with the client’s litigation counsel. Additionally a specification mapping is done to identify prosecution history estoppels.
Leave no stone uncovered search – This is our highest level search and has no time constraints. The search is concluded when the reference which invalidates the patent or at the instruction of the client is uncovered. The client’s counsels can constantly monitor the search directions and can work with our engineers to alter the search strategy.
Validation search – Validity searches are similar to invalidity searches. Validation searches can be performed to access the value of a patent for licensing, negotiation, and procurement of IP assets (or company holding that patent). Validation searches are also conducted to access whether the patent can survive the litigation if enforced. Validation searches are conducted in a similar fashion as invalidation searches and we offer same three levels of searches.
Product infringement analysis – Product infringement analysis is a reverse engineering process, where we access a client’s patent and analyze potential infringers. We carry out extensive searches on the internet to reveal products which could be infringing on our client’s IP. The analysis can be coupled with other invalidation study services to prepare a litigation case.
Claim mapping - Claims mapping is a comprehensive
analysis of patent claims and their mappings with product
features, competitor patent claims. It enables attorneys
and business managers to understand the scope of a
patent or a product. Depending on client requirements,
this analysis can also be used for freedom-to-operate/infringement searches, licensing support services, patentability assessment, invalidity searches and competitor product infringement analysis.
A claim map comprises of claim elements of a patent, mapped onto the features of a product or claims of other patents. This map can be provided as an independent report or as a part of other relevant reports. As an additional feature, we provide you a complete hierarchical chart of independent and dependent claims so that you can understand the scope of the claims in a quick, organized fashion.
Monetization Level
IP Strategy formulation
Technology landscaping – Our team analyze industry leaders, emerging players, geographic influences and identify commercial opportunities. The report gives you an insight of the actions in a technology domain and enables you to fine tune your strategies.
Patent watch - Patent watch is a process for monitoring newly issued patents on a periodic basis to see if any of these patents might be of interest. Patent watches may for instance be performed on a quarterly basis. It is common practice for corporations in patent-based businesses (e.g. manufacturing) to circulate the results of a patent watch to the appropriate technical people to determine if any newly issued patents are of interest.
A newly issued patent may be of interest if it appears to cover one or more products or processes sold by a given company. That company then runs the risk of being sued for patent infringement. In this case, it is prudent for said company to commission a clearance opinion to at least show that they were diligent in making sure that they did not infringe the issued patent.
If the opinion finds that the company is indeed infringing the patent, then the company can:
- modify its products or processes so that they don’t infringe (designing around),
- seek a license from the patent holder, or
- see if they can find evidence that the patent is not valid.
Technology watch – Technology watch monitors the current and future directions of a specific technology domain. We perform a quantitative analysis on patent and open literature to help you access the activity in a specific technology domain.
Freedom to Operate Analysis - Freedom to operate, also referred to as clearance, freedom-to-use, freedom-to-practice or right-to-use searches, is similar to an infringement search, but also uncovers expired prior art documents.
Planning for the development, production and launch of a new product is as much a matter of forecasting future market developments as it is of minimizing risks. A major risk for any company, particularly companies in technology sectors in which there is extensive patenting, is that the commercialization of a new product or technology may be blocked by a competitor holding a patent over a technology that is incorporated in the new product. In extreme scenarios, there may be "essential patents" that are indispensable for developing certain types of products or for meeting certain technical standards. In such cases, without prior authorization of the patent owners, the risks of being accused of infringement are extremely high. This is why many companies, prior to launching a new product, and often even prior to initiating a new line of research that may lead to the development of a new product, seek to minimize the risk of infringement by securing their "freedom to operate" (FTO), i.e. ensuring that the commercial production, marketing and use of their new product, process or service does not infringe the intellectual property rights of others.
The search is conducted over a span of 15 hours and covers all the aspects of a novelty search. In addition, a more detailed patent search is conducted in multiple technology domains, as determined by the product specification. A review of competitor products and patents is also carried out along with a more detailed search.
Upon concluding the search, our team delivers a good quality formatted search report along with a copy of non patent references and a search log.
Patent Portfolio management - To strengthen our client’s litigation case, we study our client’s patent portfolio and analyze competitor’s patent and portfolio to reveal if the competitor is infringing on our client’s IP.
Patent analytics and mining - Patent analytics is the evaluation of patent information in order to determine IP and commercial trends that would be difficult to see when working with patent documents on an individual basis. It’s a business tool used to understand a company, a competitive landscape or an entire industry’s potential. We’re at the forefront of this emerging patent service and can help you or your client, incorporate patent analytics into a successful business strategy. By analyzing patent publications you can gain a greater understanding of a company’s position in the marketplace, insight into a rival’s plans for the future, spot individual attorney activity or gain an invaluable overview of an entire technology sector. In other words, if you want to stay ahead, it’s a resource you can’t afford to ignore. These services are conducted in close collaboration with the client and timeframes are determined based on the client’s requirements.
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