Is your patent getting the life it deserves?

Patent Term Adjustments (PTAs) alter the patent term and are meant to account for delays in patent prosecution, and usually increase the life of the patent beyond their normal 20 year term. They are usually calculated by accounting for prosecution delays by both the applicant and the USPTO. The PTO automatically grants adjustments, but patentees can petition to recalculate the adjustment if they disagree with the PTO’s calculation. In our own experience, USPTO miscalculations, though rare, can be quite significant. In some of these cases, recalculation led to an addition of several hundred days to the life of the patent.

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Patent: Use of Common Sense in an Obviousness Analysis

The Federal Circuit decided Arendi S.A.R.L vs Apple Inc. in August of this year. The Court ruled that the Patent Trial and Appeal Board misapplied the law on permissible use of common sense in an analysis.

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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

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

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

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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

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5 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.

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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

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Patent Renewal Rates under Different Renewal Period Schemes

by Bharath Venkat In order to keep a US patent in force, the US Patent & Trademark Office requires that patent owners make maintenance fees at years 3.5, 7.5 and 11.5 after grant. This is in addition to filing, search, examination and post-filing fees. Other patent issuing authorities use different rules. For the European Patent Office (EPO), maintenance payments must be made annually and cannot be pre-paid. For Japan (JPO) and the Korean Intellectual Property Office (KIPO), fees are due annually and can be prepaid. If the patent owner decides not to pay the maintenance fee, then the patent owner

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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.

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