Want your patent renewals to be cost-effective? Consider these tips

IP strategists suggest that having a right strategy in place right from the outset of invention disclosure will help companies cut down their overall patent maintenance costs. With a little planning and preparation, you can learn how to manage your costs and achieve significant savings. Established companies, regardless of their assets or market values, look for every possible way to reduce direct and indirect costs. Patent renewal is one area where innovative companies hunt for opportunities to reduce the maintenance costs as much as possible. Anyone familiar with patent renewals would know how painful a process it can be and

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Increasing Patent Allowance Rate Using an Optimized Invention Management Solution

Huge sums of time and money are invested to support ongoing research and development efforts globally, particularly in the most innovative industries like pharma, healthcare and biotechnology. The global R&D spending [1] is at a record high of US$1.7 trillion of which 80% of total spending is only from the Top 10 countries. While these statistics may suggest increased intensity of companies in R&D spending, we should also understand that these efforts will only yield returns when they are awarded enforceable ownership through exclusive patent rights. Intellectual property rights, especially patents, help companies protect their business interests by allowing them to

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Acquisition and Predictive Analysis

It’s been a busy year for mergers and acquisitions, with a number of billion dollar deals that happened. We tracked and analyzed over 700 Mergers & Acquisitions that occurred in 2017 and extracted the 20 largest deals across 9 industries, valued above $5 B. $274.9B in large M&A transactions took place in 2017. 42% of the transactions occurred in the Medical/Pharma Sector totaling $86.6 B across 8 events. 21% of the transactions occurred in the Energy Sector totaling $28.3 B across 4 events. The largest acquisition in the most active sector: Medical equipment/Pharma was J&J | Actelion at $30B. The largest acquisition

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6 Signs That Your Invention Management Solution Is Strained

Is my invention management solution rational? As an IP Counsel, you already know from experience how crucial the invention disclosure is, as is having a scalable and future-ready Invention Management Solution (IMS) in place, because the destiny of a patent starts right from its conception. You probably have a system in place, whether internally developed or a third-party application, to manage your invention disclosure cycle. Gone are those days when the complete disclosure process was managed through emails, spreadsheets, Kanban boards and other methods. There are many good web-based applications out there that enable management of  your entire disclosure process;

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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

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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

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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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