How Can You Build a Better Strategy for Patent Prosecution?

How Can You Build a Better Strategy for Patent Prosecution?

You have heard your patent lawyer talk about patent prosecution. But for most patent applicants, this process is a mystery. And if you do not understand the process, you cannot develop a strategy to manage it.

Without a strategy, your success rate depends wholly on your patent attorney’s skills and, unfortunately, chance. Why does this happen? The patent office assigns applications to examiners randomly, and different examiners have wildly divergent allowance rates.

Here are some ways you can use Triangle IP’s TIP tool to gather intelligence relevant to your application and build a strategy for allowance.

Actionable Intelligence Provides the Basis for a Prosecution Strategy

Patent prosecution includes all the steps that happen after filing a patent application. When a patent lawyer refers to prosecution, they mean office actions and office action responses. These usually include arguments from the patent office giving reasons for rejection and arguments from your patent lawyer addressing the rejection. During this process, you may experience a dearth of information. As the arguments fly back and forth, you will have no way to evaluate:

  • How much the application will cost to finish
  • What’s the likelihood of allowance
  • Which claims might get allowed
  • Whether you have the right counsel for this application

Your company’s leaders need this information to make reasoned decisions about whether to continue with an application and, if so, how to prosecute the application.

Examiners with Low Allowance Rates Cost You Time and Money

Your application gets assigned to a technology unit in the patent office and then ultimately to an examiner with a background in your field. The examiner will be the person you argue with.

Some examiners are easy, and some of them are hard. The TIP tool gives you analytics on your examiner. This intelligence tells you if your application was assigned to an examiner with a low allowance rate.

You cannot change examiners. But this intelligence will tell you what to expect during the prosecution of that application. You could have a lot of back and forth with an examiner with a low allowance rate. The TIP tool takes the examiner’s track record into account since more rounds of prosecution will drive up your legal fees.

For example, you might file a case that you think will be quite simple. But suppose the TIP tool discovers that your examiner averages six rounds of argument and has a 20% allowance rate. This indicates that the  prosecution may cost 50% more than another case where the examiner has a higher allowance rate and averages fewer office actions.

This information provides your decision-makers with critical insight into the resources each application could need. This will allow them to allocate your company’s finite resources to focus on the applications that meet your company’s criteria, such as:

  • Most likely to get allowed
  • Greatest return on investment
  • Shortest prosecution

Whether your company is weighing the prospects of cutting budgets and abandoning applications or just needs to prioritize its prosecution docket, the TIP tool gives you the actionable intelligence you need.

Patent Counsel’s Record Can Predict Your Likelihood of Success

The TIP tool also looks at your patent counsel’s track record in your technology field. Most patent lawyers fall within a normal range for that technology unit. This means that most cases will not get flagged in one direction or the other and you should not be overly concerned. But sometimes the TIP tool will note that your patent counsel falls outside the normal range with an extraordinarily good or extraordinarily bad track record.

Taking Control Over Your Prosecution Strategy

It is likely that even your patent counsel lacks this information provided by the TIP tool. Using this information, you can:

  • Predict what will happen with your particular case
  • Decide how to allocate your prosecution resources
  • Change patent counsel if needed
  • Adjust the scope of the claims presented
  • Choose to request an examiner interview
  • Appeal rather than continuing prosecution with the examiner

The insights provided by the TIP tool are based on historical trends. The greatest factor that will influence your outcome will be the level of innovation in your invention. But the examiner’s track record and your patent counsel’s track record could tell you how much time and money you will invest between filing and allowance.

The predicted difficulty of your prosecution will also guide you in the decisions you make during prosecution. If you know you have an ace pitcher and a lenient umpire, you make different decisions than if you have an average pitcher and a strict umpire. You will pursue broader claims with an ace patent counsel and a lenient examiner than you will with an average patent counsel and a strict examiner.

The TIP tool gives you insight into questions like:

  • How much is it going to cost?
  • How likely am I to get a patent?
  • What is your success in this area?

The TIP tool provides breakthrough insights. And with those insights, you can make better decisions and, hopefully, get better outcomes.

To learn more about the TIP tool, you can find the product tour on the Triangle IP website. There, you can also read about ‘Case Analytics and Cost Prediction’ and ‘Patent Counsel and Examiner Analytics.’

How Can You Stay on Top of Your Patent Portfolio?

How Can You Stay on Top of Your Patent Portfolio?

One of the most common problems with a patent portfolio, even a small one, is that everyone involved has a different metric for success. As a result, decision-makers often have little insight into the overall status of the patent portfolio.

You might receive micro-status reports about where you stand in the prosecution of each case. But this does not give decision-makers the big picture about the coverage of certain ideas and inventions. Docket reports also lack key performance indicators (KPIs) for the people and processes involved in your company’s patent pipeline.

Here are some ways the TIP tool gives insight into your patent portfolio to everyone responsible for developing and obtaining patents for your company.

Personalized Dashboards For Each Role

You have many different people performing many different roles in your patent acquisition system. The people in each of these roles require different information to know how things are going with your patent portfolio.

  1. Inventors need to know about the applications for their inventions and where they fit into the portfolio.
  2. Administrators need an overall view of what is happening with the portfolio
  3. Managers must have statistics and KPIs for the cases under their management.
  4. Patent lawyers need detailed information about their docket so they can evaluate the prosecution situation.

Above all else, the people in each of these positions need KPIs that quantify their effectiveness in fulfilling their roles in the patent system. Each person involved in securing patents can access performance information for each stage of the patent pipeline from the idea phase to the prosecution phase.

The TIP tool’s personalized dashboards allow you to follow a thread from the idea to the patent application. The tool provides notification capability so that everyone involved in the portfolio can access the same information.

This accessible and transparent access to information is very different from the way things often happen. Without the TIP tool, your patent counsel often acts as the gatekeeper for this information. Your administrators get monthly docket reports. But your inventors and managers may not receive any tailored information until the patent lawyer requires their involvement.

The TIP tool gives open access to each person to find information tailored to their role. Inventors can see a list of patent applications naming them. They can also see the current status of those applications and a copy or the application as filed.

The Big Picture for Your Company’s Leaders

Additionally, your leadership needs to get their arms around the big picture. The micro status that accompanies the docket report only addresses individual matters at one instant in time.

Instead, they need a dashboard at a high level that covers the entire patent portfolio. This is where the KPIs provide some very valuable insight. 

Instead of thinking in terms of patents or inventions, company leaders often think in terms of product or service offerings. An executive might need to know which applications cover features relating to a particular mobile phone model. In the TIP tool, you can tag patent applications to tie them to specific products or features incorporated into many products.

Transparency and Accessibility Sets Everyone Free

The data provided to the people in each role will give them enough information to self-answer any questions they have. This frees up your in-house patent staff and your outside counsel to focus on the acquisition of patents rather than chasing down information.

By making this information transparent and accessible, you save time and money. Your in-house counsel does not need to field question after question from staff, inventors, and leaders. Your outside counsel does not need to receive call after call for which the lawyer must bill. Instead, your patent staff can answer these questions themselves using the information appearing on their personalized dashboards.

The dashboard interfaces give everyone the information they need in a simple and timely way. To learn more about the TIP tool and how this information gets presented, visit the Triangle IP website. There, you can view a product tour and view examples of the dashboards.

Cost Estimates for Filing Utility Patents in Top 7 Countries of the World in 2022

Cost Estimates of filing Utility Patents

One of the core considerations in developing an international patent portfolio strategy is the cost of patent filing. While the cost of patent filing varies per country, there are two basic components of the cost: government fees and attorney fees. We have created this guide as a one-stop list of the various costs involved in filing a patent in seven key jurisdictions that have the highest number of patent filings in the world:

  • USA
  • Europe 
  • China
  • Japan
  • India
  • South Korea
  • Canada

At a glance, you will be able to assess a rough estimate of the cost of patent filing in each jurisdiction. Bear in mind that the final cost you incur in each jurisdiction will also depend on the complexity of your innovation, whether you are making an international or domestic patent and the number of claims in your application.

USA

The USA is a hotbed for patent registrations. The United States Patent and Trademark Office (USPTO) has been receiving nearly 700,000 patent applications each year for the past five years. The cost of preparing and filing a patent application in the USA significantly depends on the type of innovation, the degree of complexity, and the type of entity applying for a grant of the patent. 

Below is a table showing the breakdown of costs of a utility patent filing in the USA:

In addition to the above fees, other official fees, including an extension of time, administrative charges, issuance fees, and post-issuance charges may apply. Professional drawing fees will cost between $300 and $400, while attorney fees will cost between $5,000 and $10,000, depending on the complexity of the patent. 

If filing an international patent under the international patent system of the World Intellectual Patent Organization (WIPO), through the USA, you should expect to spend a minimum of $8000.

Europe

As an alternative to filing a patent in each European country, a European patent gives its owner the same rights as a national patent in each country for which it is granted. It covers registration in 38 member states of the European Patent Convention – 28 member states of the European Union (EU) and 10 other non-EU member states. Once the European patent is granted, it needs to be validated in the designated states for it to be enforceable.

Below is a table showing the breakdown of cost for filing a European patent at the European Patent Office (EPO):

In addition to the above fees, note that additional costs may be incurred for translation of documents or appointment of national agents in designated states. Meanwhile, filing an international application through the EPO will cost at least €10,000, excluding attorney fees. Such costs will include a search fee (€1,775), an international filing fee (€1,233), and a transmittal fee (€135). You may refer to the EPO’s schedule of fees, for additional information on applicable fees.

Patent attorney fees for European patents depend on the scope and complexity of your invention. Attorneys may charge either a lump sum or an hourly fee, although the latter is more common. Fees for simple applications may range from €1,500 to €3,000, while more complex applications may attract a fee between €3,000 and €6,000. In summary, the total costs for filing a European patent can sum up to €15,000.

China

China is one of the most important global markets and innovators will often file their innovations in China, even where such innovations have not been introduced to the Chinese market.

The fees for filing a patent with the China National Intellectual Property Administration depend on the category of patent and the filing route. Generally, there are two ways of filing a patent application in China: a direct application through a licensed Chinese Patent Attorney and an international patent application under the Patent Cooperation Treaty (PCT). 

Below is a table of the patent filing fees and estimated attorney fees in China.

For more information on patent filing in China, here is a guide for SMEs published by the European Union.

Japan

Similar to other countries, the cost of filing a utility patent application with the Japan Patent Office depends on the route: direct filing or international filing under the PCT.

Additionally, if you do not have a permanent address or residence (office, if the applicant is a legal entity) in Japan, you are required to appoint a representative such as a patent attorney, in Japan. An attorney will charge you between 100,000 and 250,000 Japanese Yen (JPY) for preparing, filing, and registering a patent application in Japan.

The official patent application fees in Japan are as follows: 

In addition to the above, annual registration/renewal fees are required to be paid for each patent. If the patent application is opposed, opposition, appeal, and trial fees may also be required. Generally, a patent application in Japan will range from ¥200,00 to ¥500,000, excluding attorney fees. A complete schedule of these fees may be accessed at the Japan Patent Office

India

The cost of filing a patent in India is dependent on several factors, including whether the patent is being filed by an individual or a legal entity, the number of claims and pages in the specification, whether the normal or expedited process has been chosen, and whether the application is a provisional patent application, an international patent application or a plain application. 

Therefore, the total fees for filing a patent application in India will range from INR 45,000 to INR 95,000. For more details on the patent fees in India, see the schedule of fees on the Government website.

South Korea

The legal fees for preparing and filing a patent application in Korea range from 2,360,270.00 KRW to 4,130,472.50 KRW, depending on the complexity of the innovation. Below is a table of government fees for filing a patent in Korea:

If you’re filing an international patent in Korea, the examination fee and handling fee for a request for an international preliminary examination will cost 450,000 and 253,000 KRW respectively. A request for an international application search will cost 450,000 KRW in Korea and 1,200,000 KRW in English.

Canada

Canada is a relatively inexpensive jurisdiction, compared to other countries in which patents are commonly filed. 

The professional cost of drafting a new patent application in Canada may range from $5,000 to $15,000, depending on the complexity of the application. The actual sum will depend on several criteria, such as the complexity of the technological field covered by the patent, the completeness of the technical disclosure you give to your patent agent, and the number of different innovative conceptions that must be covered in the application.

Details of the government filing fees in Canada are as follows:

Additional fees may apply, such as fees for correction of an error, fees to advertise an application, and fees for requesting a re-examination of a patent. Full details of these additional fees may be accessed on the Canadian Intellectual Property Office’s website

The official fees for filing a PCT application are typically in the range of $3,500 – $4,500, depending on the size of the application.

Conclusion

We have provided the costs for filing patents in multiple countries, with a focus on the top countries of the world where patents are commonly filed. We have also included estimated attorney fees and the cost of filing an international patent in each of these countries. 

With this guide, you have more information to design your patent strategy and the cost implications of your filing decisions. Here is how you can make the most from a global patent portfolio strategy.

Also read: How to control patent costs without compromising on your patent?

Empower Your Patenting Decisions With Patent Analytics for Better Returns

Empowering your patenting decisions with PA

Obtaining a patent is a complicated and lengthy process, with many factors influencing whether or not an application will be successful. As a result, chief technical officers usually have to rely on their technical knowledge and experience with the patent process — in a word, their gut — to make decisions. This method may have served many CTOs well, but there is a better way. Patent analytics provides CTOs with the information they need to make fully informed decisions. Using your gut is a form of analytics, of course, since you are drawing on your own experience and knowledge. However, far more information is available to you through tools that provide patent analytics, along with the ability to use that information most effectively.

The Three Important Factors That Drive Patenting Decisions

When you are working on a patent application, three concerns stand out at every stage of the process:

  1. The likelihood of success
  2. The amount of time needed
  3. The total cost

Patent analytics offer critical insights into each of these factors, making your patenting decisions more informed. 

What is the Likelihood of Getting a Patent on this Idea?

Of the three factors listed above, the likelihood of getting a patent on a particular idea might be the most subjective. “Likelihood” is another way of saying “probability,” and determining the probability of an event often requires a vast amount of data.

You can look at data like the average amount of time it has taken for similar patents to receive approval and the patent counsel’s success rate to make an educated guess about your application’s chances. The patent examiner’s allowance rate could also have a role to play.

How Much Time Will it Take to Get the Patent?

When applying for a patent, the next question is how long it will take for your application to get patented or granted by the PTO. At least three factors will determine an estimate of the time of grant.

a. The Technology Domain of Your Application

The type of technology represented by your application affects the amount of time it will take because of the USPTO’s art unit system. When you submit an application, it gets assigned to an art unit associated with that type of technology. Each art unit has its own track record in terms of how many applications it allows and the average number of rounds each application takes. These data, in turn, affect how much time an application is likely to take. Therefore, an analytics tool can delve into a group art unit’s data to provide important metrics that can help you assess how your application is doing.

b. The Patent Examiner Handling Your Application

Once an application has been assigned to art unit assignment, it will get assigned to a particular patent examiner. Having a specific patent examiner provides information that allows an educated estimate of the length of the process.

Data are available in patent analytics that show the average amount of time a patent examiner takes on an application, the average number of rounds for each application, and how those data have changed over time. As with estimates of the likelihood of an application’s success, estimating the length of time needed for an application requires a nuanced look at an examiner’s data. Examiners who are early in their careers, for example, might take longer than experienced examiners to complete the process.

Much like with group art unit data, an analytics tool provides a wealth of data that can assist you in making decisions about the application.

c. The Patent Counsel Handling Your Application

Information is also available on the allowance rates and the average number of argument rounds for patent counsel and in-house legal departments. Again, the analytics tool can compare this to industry averages to see how they compare. Numbers that are higher than average, for example, could mean a faster application process, but again, these are only a few points of data in a much larger picture.

All this data put together can help create a detailed model for estimating the length of time an application is likely to take.

How Much Will the Patent Cost End-to-End?

Finally, you want to know how much your patent application is likely to cost from start to finish. Some costs are easy to predict, such as filing fees. Others will depend on factors like the length of time needed and the number of argument rounds. The data gathered by the analytics tool provide an estimate of total costs or the amount it might cost to continue a patent application in process.

a. What are the different costs involved in patenting?

The two main types of expenses involved in a patent application are the filing fees paid to the USPTO and legal and other professional fees. Fees paid to a patent attorney and their firm could include:

  • Patent search
  • Attorney opinion letter
  • Patent application preparation
  • Argument or negotiation with the patent examiner

Other costs might consist of professional illustrations for the application.

b. What is the remaining cost and the subsequent cost to be incurred?

The first few examples on this list are reasonably predictable. Every patent application needs a patent search, for example. The steps involving argument rounds are where uncertainty about total cost can arise.

Estimating the future cost of a patent application draws on information about patent counsel, the examiner, and the application’s technology area. Fees paid to outside patent counsels are different from the cost of an in-house legal department’s services. Patents in some areas of technology might, generally speaking, cost more than others. The more complicated the technology involved in your application, the more you should expect to pay.

You need to know, with a fair amount of certainty, how much you should expect the application to cost from the present moment until completion. An analytics tool can find meaning in all of these jumbled variables and give you an answer to this question.

c. Based on the evaluation criteria, does the returns-to-cost ratio look good?

You know your patent application better than anyone. You know what you stand to gain from an approved patent. The analytics tool provides you with educated estimates of the likelihood of approval, how long the approval is likely to take, and how much it will cost.

Based on all the available data, the analytics tool assesses your case’s “health,” showing whether it is good or otherwise. Then, the health rating lets you make an informed patenting or continuation decision.

Where Do You Get the Values for the Above-Mentioned Three Factors?

The Triangle IP Patent Management Tool (the “TIP tool”) will provide you with all this information, and it will present it to you in an easy-to-use format.

Request analytics on any of your patent cases today using this simple form!

There is more you can get from the TIP tool, for instance patentability score, detailed examiner analytics, etc.

 

Patentability Score

The TIP tool also gives your application a “patentability score” on a scale of 0 to 10 with 10 being the highest, showing your application’s likelihood of success. It automatically generates this score from information found in the summary of your application, including:

  • The art unit of your application
  • The average number of rounds for applications in this art group
  • The average allowance time for applications
  • The total cost to get the application granted and maintained

The analytics tool compares these numbers to the average number of argument rounds and allowance time for your patent examiner and others. A score of 8.5, for example, means that your application has an 85% chance of being allowed.

You may modify the patentability score, or you may enter your value in that field if you prefer.

Detailed Examiner Analytics

Information about a patent examiner’s past behavior can offer insight into how they might handle your application. Their allowance rate, for example, could help you make a prediction about your case. However, the percentage of applications they allow or do not allow is only one part of a larger story.

The application process can go on for years, so the allowance rate only shows you their decisions on old applications. It might not reflect how they are approaching applications that are still pending. For example, your examiner might have changed their approach over time. Perhaps they were stricter when they began their careers and are more willing to work with applicants now. A good patent analytics tool can place information about a patent examiner’s behavior into a helpful context that will yield better predictions by weighting recent data more than older data. How receptive is an examiner to an interview or an appeal is also insightful data to contribute to decision making.

Triangle IP’s TIP tool has this feature on it’s product roadmap. You will be able to make use of this feature in one of its future releases.

Learn More About Patent Analytics

Your gut has served you well, but perhaps it is time to give it a rest and try something new. Triangle IP can streamline your patent workflow while freeing you from the difficulties of complex IP management. Our TIP tool is available for a free trial, which will give you an idea of the actionable insights that you can draw from it. Sign up today! You also get to explore a sample portfolio to see how you can benefit from the tool.

7 Reasons Why Managing your Intellectual Property Assets on Excel Spreadsheet is a Bad Idea

Are Excel Spreadsheets Apt for IP Management

“You have a broken patent mining process if you are still using excel spreadsheets for managing ideas through patents.”

Managing ideas from innovation capture to patent expiration requires much different data handling than Excel spreadsheets are accustomed to handling. Some signs that your patent mining process is broken might include:

  • You feel that your business is not receiving enough invention disclosures to capitalize on your research and development
  • You are not in sync with application updates at the USPTO
  • Last-minute rush to outside counsel for filing patent applications just around the product releases
  • Your staff spends a lot of time with your outside patent counsel to remain abreast of new office actions and other correspondence from the Patent Office
  • Your legal bills are high because you require frequent status reports from your outside patent counsel

These are all signs that managing your Intellectual Property assets on Excel spreadsheets is ineffective. Here are some reasons why this might be happening:

#1 Excel Spreadsheets Does Not Handle Text Well

Using Excel for managing IP assets like ideas and patents is like using a phone’s numeric keypad to send text messages. Yes, we did it for a number of years, but it was highly inefficient. It led to many clunky abbreviations and typos.

Excel is very efficient at numerical and statistical functions. But ideas and the process of protecting them create a text-based narrative. Like using your phone’s numeric keypad for texts, it can be done, but the process is not optimal.

Excel handles text poorly. Large blocks of text either disappear or create rows so high they take up an entire sheet of paper, depending on the cell settings. As a result, an Excel spreadsheet for even a small startup business can take dozens of pages.

Think about the process of pursuing a patent. While some status explanations like “filed” may be short, others might be extensive. Summarizing an office action in a few words is often impossible. The notes needed at many steps in the process of patent prosecution can often require long explanations.

Without easily accessible explanations, you will need emails, phone calls, and meetings to bring decision-makers up to speed. Your Excel spreadsheet is useless since everyone who is needed to prepare responses requires more information than the spreadsheet can deliver.

#2 Excel Spreadsheets Provide Stale Data

The data in a spreadsheet is only as current as of its most recent update. An administrator must manually update Excel spreadsheets for the management of ideas and patents. This means that most of your data risks being out-of-date at any time. This does not mean that it is out-of-date. It means that you do not know if it is current or out-of-date since you do not know how recently the manual update occurred.

At various stages during a patent application’s life cycle, events can happen quickly or slowly. After filing, months may elapse before receiving an office action. But once an examiner sends an office action, resolution of the issues in a rejection could occur with a phone call. As a result, the case may move to allowance within a few days.

Staying on top of the prosecution is almost impossible with manually updated Excel spreadsheets. The information is often no longer relevant when you see it. Updates from the Patent Office’s PAIR system are instantaneous. But your staff still needs time to run your docket reports and manually update the spreadsheet.

Even reports from your outside counsel might take a few days to docket and be sent to you. After receipt, your staff needs to manually enter the new data.

Having an administrator search PAIR every day for new information can cost your business time and money. Moreover, having an administrator manually enters the PAIR status can create data integrity problems.

#3 Excel Spreadsheets are Error-Prone

Maintaining a spreadsheet in Excel is quite comfortable when you use it for numerical data. Excel will often help a data entry administrator find a typo during the analysis of the data. If the budget totals look off, the administrator knows where to go to identify the error.

A typo or other error in the text might not be as easy to identify and correct. For example, suppose your patent administrator hits CTRL + V instead of CTRL + C in a cell. The administrator just pasted data from the clipboard into your patent management spreadsheet that came from another application. Or, if the opposite happens, the data on the clipboard was overwritten by the data in the cell.

Excel Spreadsheets are prone to human error

At best, this creates inefficiencies as your patent administrator must go back and correct these typos. But if the administrator does not catch the typos as they occur, you could end up working with a spreadsheet riddled with bad data.

When you communicate with your legal department or outside patent counsel, you could end up talking about two unrelated cases because your Excel spreadsheet has duplicate application serial numbers. A nightmare scenario could happen when you instruct your patent lawyers to abandon the wrong case, and they cannot reverse the express abandonment.

#4 Excel Spreadsheets Provide Limited Filtering

The power of Excel spreadsheets comes when you need to turn a mountain of numbers into usable information. Spreadsheets, however, provide very few tools for working with a mountain of text.

Excel can alphabetize rows based on the first letters of a text field. They can search for a text string within a text field. They can even replace text strings once they find them. But Excel provides almost nothing beyond these built-in functions and any other tools for text analysis or manipulation must be created using macros.

This can be a problem when managing ideas and patents. Your business may find it useful to categorize ideas and patents to identify which departments had input into them. For budgeting purposes, you might need to tag patent applications according to which subsidiaries need to contribute to the fees and costs. But Excel provides no intuitive way to tag rows so that you can recall the tagged rows in a robust way.

Excel Spreadsheets Provide Limited Filtering

For example, if you need to know which patent applications are paid from your R&D budget or your manufacturing budget, Excel provides no intuitive way to filter text-based tags with an “OR” operator. As the filtering operations become more complex, you will need more customization of your Excel spreadsheet.

#5 Excel Spreadsheets Have Limited Collaboration Tools

One of the greatest benefits of cloud-based applications and databases is that collaboration becomes seamless. But for most Excel users, collaboration is clunky, with different versions of Excel spreadsheets sent by email. Stakeholders update the spreadsheet with their most current data and share them in group messages. But users can easily lose track of which is the most current version.

As a result, one user must manually maintain a master version with all the changes introduced by the various users. Again, this introduces costs in labor and time.

There are cloud-based spreadsheets like Google Sheets that allow collaboration. But bear in mind that patent law requires the strictest of control over your information. Under the Patent Act, you can lose the right to patent inventions that are publicly known. Under the Patent Office’s rules of practice, you lose attorney-client confidentiality for information that has been publicly disclosed.

While hackers might not specifically target your data, Google presents a valuable target that hackers could attack. By leaving your valuable idea and patent data on Google’s servers, you risk data loss.

On a side note: Would you want to know how your patent application is progressing at the USPTO compared to other applications in the same domain? 

The TIP tool offers statistics of the law firm and the examiner handling your case. Once the application is filed at the USPTO, and an examiner is allotted to your case, the tool indicates the relative performance of the law firm handling your case. The statistics revolve around the number of arguments, grant rate, and grant time. The tool also indicates the case health, for instance, it can tell you if a case needs your attention. There is a whole bunch of insights that you can gather from the TIP tool for strategic patent prosecution.

Request insights for any of your cases at the patent office using the form below.

#6 Excel Spreadsheets Provides Limited Visibility on Progress

Excel is an excellent tool for plotting numbers. A numerical graph can show trends and progress.

However, Excel spreadsheets do not have any comparable tools for plotting conceptual or text-based data. As a result, you have no easy way to identify bottlenecks in your idea and patent application process.

For example, your in-house counsel might take four weeks to send invention disclosures to your outside counsel. Similarly, your outside counsel might sit on office actions for two months before sending them to your legal department. By identifying timing issues, you can improve workflows and avoid unnecessary fees for late filings.

#7 Excel Spreadsheets Have No Inherent Functionality to Manage Workflows

An Excel spreadsheet can perform mathematical functions between the contents of two cells. But merging the text from two different rows and splitting text into two separate rows are not intuitive. This can make it difficult to manage all the ways that ideas and applications may evolve over their lifetimes.

More importantly, Excel spreadsheets do not produce action items, calendars, and dockets that identify tasks that must be taken care of within a workflow. Without a way for stakeholders to know what must be done, they can become a bottleneck in your patent process.

Moving Beyond Excel Spreadsheets

Law firms invest heavily in docketing systems. Clients kludge together spreadsheets. But there is room in the middle for tools that capture innovations and track the progress from ideas to patents. This is the role filled by Triangle IP.

Contact us to learn how to implement a streamlined and robust patent mining process at your enterprise.

Note: The preceding is general business advice and not to be construed as legal advice. IP laws vary by country and retaining licensed legal counsel is advised to confirm this information. Any expressed or implied opinions are of the author and do not necessarily reflect the views of Triangle IP or any other entity who might be associated with the presenter. We hope this content is helpful to you, but should not be relied upon without confirming the advice and accuracy with local legal counsel. Any comments or inquiries are not confidential so please discuss your issues directly with counsel.

7 Crucial Mistakes to Avoid while Patenting a Mobile App

Patenting a mobile app can be tricky, but it’s important to do so before releasing it to the public. If you don’t patent your app before launch, competitors can come along and copy everything that makes your product unique. With so many pitfalls along the way – from not understanding what’s patentable to not finding out about a potential competitor’s application until after you submit yours – it can be hard to avoid making mistakes altogether. In this post, we’ll explore some of the most common mistakes people make while starting the process of patenting their mobile app and how to avoid them.

  1. Building an app for patent and not to fill a gap in the marketplace
  2. Releasing a test version to the public before filing a patent application
  3. Choosing the wrong IP protection
  4. Being unable to identify patentable features in the mobile application
  5. Not researching what already exists in the market
  6. Drafting an Improper patent application (in absence of a patent attorney who’s an expert on software patents)
  7. Not being clear about “provisional” and “non-provisional” patent applications

Building an App for a Patent

Steven Covey said, Begin with the end in mind. When building an app, ask yourself what the end goal is – are you building this app as an arsenal in your IP portfolio or are you building this app to fill a gap in the marketplace, with money as a by-product? Having an honest and clear answer to this question is the first, crucial step. If you’re building an application for the sole reason that you could secure a patent on the same, think again. Strategic business sense doesn’t allow for that.

Building an App for a Patent

Disclosing to Public Before Filing a Patent Application

The objective of a patent is to create a monopolistic right. If you do choose to go down the patent route with your app, rolling out even a test version to the end user before you file patent applications is the wrong move. Unlike copyright, which subsists as soon as publication is made, the premise of a patent is secrecy until the time you make disclosure through your patent application. Remember, everything that is in the public domain before you file your patent application will qualify as prior art. And will of course become open to duplication completely nullifying the purpose of a patent.

Disclosing to Public Before Filing a Patent Application for your mobile app

Choosing the Wrong IP Protection 

Patents are not the only way to protect your mobile app or its features. You also have design patents that many choose as a preferred mode of protection for apps, especially to protect the UI and UX.  Facebook, in 2017 had made a design patent application for “The ornamental design for a display panel of a programmed computer system with a graphical user interface, as shown and described.” This design patent showcases the app’s UI/UX. 

Copyright protection can help protect the look and feel of your app. And buttons, features and slogans can be protected by trademark.

Also read: Patents v. Tradesecrets – Which Way to Go?

Being Unable to Identify Patentable Features in the Mobile Application

We’ve said it before, we’ll say it again. Knowing what not to patent is as important as knowing what to. When you’re looking at building a mobile app, research shows that it makes better business sense to patent certain features of your app rather than the app as a whole. We say this for more than one reason. For anything to be granted a patent, it must fulfill the criteria of novelty and non-obviousness. Here are some features of apps that have strong patent potential. 

  • Communication Improvements

Think communication with servers and all the changes happening there with changing technology. Communication improvements that you make to your app can be the subject matter of patents.

  • Backend Processing

How your app works in crunching numbers on the cloud is a potentially patentable feature. The flow of operations on a phone may not have a lot to patent. But the phone’s interaction with other systems is potentially patentable

  • GUI

Applying for design patents on graphical user interfaces can prove to be strong patents. Essentially, these patents help protect the look and feel of your app. A lot of big players including Facebook and Apple have strong design patent portfolios. For instance, check out this design patent by a popular mobile application company on the “Display panel of a programmed computer system with graphical user interface”. Presented below is a glimpse from the design patent.

Source: Google Patents

  • Lite Versions

Operations that happen on the phone in lite versions of your app are patentable. With the advent of AI, these use cases are rapidly increasing. With the way you train AI being a unique element, this can make for a strong patent. Constructing a claim around a mobile device specifically may increase your chances of success. 

Not Researching What Already Exists in the Market

“Having an idea is just work half done.”

The other half of the work includes confirming the feasibility of the idea. It becomes ridiculously important to conduct extensive market research. The chances of an idea being made into an app, especially in this crazy tech age, is extremely high. So before you embark on a patent journey, look for what is already around. 

A novel idea is an important eligibility criterion. This is because a patent is a way to show the world that your idea/invention is yours alone. So, you must make sure to document the whole process of development. It may be a good idea to also develop a prototype. This will not only help your patent attorney draft a comprehensive application but also to understand the impact of your application and what parts of it are eligible to be patented. 

Drafting an Improper Patent Application

A patent is only as strong as its application. A properly drafted application setting out claims that are specific and well-defined is key. If you have an app that utilizes more than just the mobile phone to process, your claim must state as such. This helps to create a stronger patent in the event of changes in patent laws or technology. Client and server level methods must be claimed. It is also important to include device and/or apparatus claims. The physical storage of the app software – computer readable claims – must also be included. 

A patent is enforceable for up to twenty years from the date of filing. The rapid growth of technology may render your invention completely redundant well within the 20 years during which your patent is enforceable. This makes it even more pressing for the patent application and claims to be well-drafted and comprehensive. All processes and potential technology developments must be factored in during the application process. Also consider how the final user will be interacting with your app in the future and how that affects the functionality of your app. Remember we went from floppy discs to CD roms and candybar phones to touch screens way faster than we imagined.

Also read: 3 Qualities of a High-Quality Patent Application

Drafting an Improper Patent Application while patenting your mobile app

Choosing the wrong type of application between a “provisional” and a “non-provisional”

When choosing to apply for a patent for your mobile app, you can either file a provisional or a non-provisional application. Provisional applications are the most common in the case of patenting apps. This is because they give you an added advantage of time and help secure your ideas. Also, a provisional application can be filed without you having to provide a detailed description of your invention. Here’s a round up of some reasons you would choose to file a provisional application: 

  1. It gives you a 12-month head start to develop the product before you are bound by disclosure
  2. It allows you to use the term ‘patent pending’ on your product
  3. It’s economical as opposed to non-provisional applications

Non-provisional applications on the other hand must be filed with a complete claim and specifications. They must contain a written description of the invention and a claim which legally defines the invention. This means this document makes full disclosure of your ideas and your app. When all aspects of your app are finalized and ready to go is when it makes sense to file a non-provisional application. 

Patenting a mobile app - Choosing the wrong type of application between a “provisional” and a “non-provisional”

Wrap Up

We’ll leave you with some final thoughts that you ponder on before going down the patent route:

  • The purpose your mobile application serves –  it’s important that the app fills a market gap
  • What’s the right type of IP protection various features of your app need
  • Which apps already exists in the market that are similar to your app
  • Have you disclosed the app to public before the patent protection
  • The timeline of developing and preparing the patent application in line with your business plan for the app

Understanding whether your app is eligible for a patent is only the tip of the iceberg. Whether this fits into your business plan for the same is a bigger consideration. The want for a patent must balance with the fact that doing so will ultimately make your innovation public. Remember, patents don’t make products successful. Patents protect great products, but it is your product that you need to invest in before you have a patent to protect it. 

Note: The preceding is general business advice and not to be construed as legal advice. IP laws vary by country and retaining licensed legal counsel is advised to confirm this information. Any expressed or implied opinions are of the author and do not necessarily reflect the views of Triangle IP or any other entity who might be associated with the presenter. We hope this content is helpful to you, but should not be relied upon without confirming the advice and accuracy with local legal counsel. Any comments or inquiries are not confidential so please discuss your issues directly with counsel.

IP Strategies SMEs Can Learn From Large Companies

Patent Stratgies SMEs can learn from Large Companies

IP strategies could be defined as establishing a plan of action to maximize the returns on IP investments. Let’s explore how SMEs can implement the IP strategies used by large companies to make the most of their IP budgets!

Large companies and small and medium-sized enterprises (SMEs) undeniably operate with different available resources and business goals. Aside from basic differences in numbers of employees, SMEs typically focus on niche markets while large companies tend to offer a wider variety of products and services. Large companies can raise money by selling shares of stock while SMEs often seek financing from outside investors such as venture capital firms or pursue opportunities to be acquired by larger entities. 

One area where differences between SMEs and large companies is particularly salient is how these entities approach their patent/IP portfolios. Some of those differences are driven by budgetary constraints, some are driven by the availability of manpower, and some are driven by business goals. In some cases, however, SMEs simply have not had as much experience with patents as larger entities. SMEs are unaware of how to change their approach to patenting in ways that provide strategic business advantages.

What are some IP strategies that large companies employ that SMEs do not, and how can those strategies be adopted or adapted by SMEs?  

IP Strategy #1 – Large Companies Employ Best Possible Legal Expertise

Not all patents are the same. In fact, many are not worth the paper they are printed on. That is because patents often issue with claims that are too narrow or with terms that are interpreted to mean something different than what was intended. 

The more elements that are included in a claim, the easier it is to distinguish the claim from what has come before and therefore establish patentability. That is why it is often relatively easy to obtain an issued patent with very narrow claims. The problem with such claims is that they are easy for competitors to get around. For example, a claim to an incandescent lightbulb with a carbon filament would not cover a competitor’s incandescent lightbulb with a tungsten filament. If the claim had been drafted instead to recite an incandescent lightbulb with a filament, this broader claim would better protect against commercially viable variations of the patented product. 

Sometimes a seemingly simple word choice is enough to render a patent completely worthless. In an infamous patent case involving baking dough, a patent was rendered useless because of the phrase “heat the dough to 450 degrees.” The phrase was literally interpreted to mean that the internal temperature of the dough had to reach 450 degrees, when what was intended was “heat the oven to 450 degrees.”    

In addition to general issues of claim interpretation, particular technology areas require specialized claim language and structure, and there are also many legal requirements that must be met for a patent to hold up in court. All of this adds up to the fact that patent law is a highly specialized area of law that requires a lot of training and skill. Large companies understand this and typically use established expert patent law firms or build their own in-house patent departments and budget for that expertise. In contrast, SMEs, due to their limited budgets, often try to cut corners by drafting patent applications themselves or seeking affordable (not necessarily expert) service provider, only to discover years down the road that a core part of their business is not adequately protected.

IP Strategies for SMEs

IP Strategy #2 – Large Companies Look for Broader IP Protection for Key Products

Large companies with significant financial resources often pursue a strategy of procuring and maintaining a large quantity of patents. As an example, Samsung Electronics had 76,638 active US patent application families across all its subsidiaries in 2019

Large patent portfolios allow more varied levels of coverage for key products while also allowing large companies to pursue protection for products or aspects of their business of lesser importance but that still have value. Large companies use multiple patents to protect a broad class of products and services around an invention, with follow-on filings used to cover new developments as they arise. For instance, different patents may have broad vs. narrow claims, or claims directed to different aspects of a product or service such as component parts, software elements, electrical systems, methods of use, and manufacturing aspects. The cumulative effect of such an approach is to minimize the importance of any one patent to a company’s business goals.    

Another aspect of large patent portfolios that large companies leverage to their advantage is their ability to deter potential infringers and competitors from trying to compete in the marketplace. It is time intensive and expensive to analyze a patent and determine whether it is invalid or whether a proposed competing product would infringe. The more patents a company holds in a given area, the more resources others need to spend to determine if they have freedom to operate in that area. 

In contrast, SMEs have budget constraints that typically drive them to focus on a small number of core patents. For many SMEs, every patent matters, and a single patent can make or break the company. SMEs are often under a threat to be gobbled up by large companies in the absence of a strong defensive patent portfolio.

Patent Strategies for SMEs

IP Strategy #3 – Large Companies Do More Strategic Patent Planning Than SMEs

Decision makers at large companies know that not every product needs to be protected in every potential market. For example, if the market for a product is only in the US and Europe, it doesn’t make sense to apply a one-size-fits-all IP strategy that includes patent filings in Canada, Japan, and Australia. However, if it is anticipated that a market for the product will emerge down the road in one of those countries, then a patent filing is justified.  

Large companies tend to employ more strategic planning when it comes to mapping their IP strategies onto what is known or anticipated about markets for a product, where manufacturing plants are planned, and the location of potential partners/licensees or competitors. They typically develop a clear plan early on for which countries are most important for patent coverage for a given product, and also reassess those decisions over time. If market forces change over time, large companies identify these trends and adjust their IP strategy accordingly by abandoning applications or deciding not to pay patent maintenance fees in different countries.

SMEs may either seek too few countries for protection in an effort to save costs, or pursue applications in as many countries as possible in an effort to make their portfolio more attractive to potential investors or acquirers – neither of which aligns their patent approach with the true market for their product.   

IP Strategies for SMEs

IP Strategy #4 – Large Companies Seek to Invalidate Competitors’ Patents More Than SMEs

Just because a patent is issued does not mean that it is valid and enforceable. Invalidity actions can be pursued either through litigation in court or via pre- or post-grant proceedings before the issuing patent office. For example, the US provides several avenues to challenge the validity of a patent after it has been granted, and almost 11,000 petitions to initiate such proceedings were filed in the USPTO between 2012 and 2019. Whether invalidity actions are decided by a US district court or in a proceeding before the USPTO, around 40-45% of all challenged US patents are determined to be invalid in whole or in part.

Large companies typically monitor and analyze their competitors’ patent portfolios on an ongoing basis. Such monitoring allows the opportunity to initiate offensive actions to invalidate patents of strategic business interest, but also provides additional benefits. Competitive patent monitoring can provide insight into competitors’ future product offerings and marketing strategies, allowing companies to modify their own market or product strategies in response. Tracking patent filings can also highlight untapped markets where a low number of patent applications have been filed and where a company can potentially gain a patent foothold or technological advantage.

SMEs often lack the resources or the sophistication to monitor and analyze their competitors’ patent portfolios on an ongoing basis. And hence it not in their capacity to initiate offensive actions to invalidate patents.

Intellectual Property Strategies for SMEs

What Can SMEs Do Differently?

You Get what you Pay for

The US Supreme Court has long recognized that a patent application constitutes one of the most difficult legal instruments to draw with accuracy. SMEs can take big leaps based on the strength of its core patents, they should consider not to cut costs especially from the drafting budgets.  

SMEs should avoid basing their hiring of a patent attorney or agent solely on who provides the cheapest services. Of course, budget is a factor. But sacrificing top notch skill and experience for the lowest bidder may not be a great move.

IP Strategies for SMEs

Drafting Patent Applications

SMEs should also avoid trying to have the application written in whole or in part by a non-patent professional. SMEs often think that they can cut costs by having one of their scientists or engineers prepare the application, and that a patent attorney or agent can just edit it or add claims to it. This is dangerous – a patent application is not an academic manuscript or a summary of technical specifications. While a write-up from the inventors is very useful to a patent attorney or agent, as described above there are ways of drafting patent claims that can either provide broad scope or severely limit protection. In addition, there are legal requirements that must be met for the application as a whole – for example, claims are routinely invalidated on the basis that a particular element was not described adequately or at all in the supporting text (specification) of the patent.   

Provisional Patent Applications

Another danger area is improper use of provisional patent applications. Provisional patent applications have relaxed requirements regarding formatting, supporting documents, and claims compared to full patent applications, but allow applicants to establish a filing date so long as the full application is filed no more than a year later. Because they can be produced faster and cheaper than full applications, SMEs often file bare-bones provisional patent applications with the intention of fleshing out their description of the invention in the full application. This is dangerous because provisional patent applications are still held to the same standard as full patent applications when it comes to legal requirements for describing the invention completely and in a way that explains how to make and use the invention. Patent cases abound where claims are held to be not entitled to the filing date of their provisional patent applications because of inadequate disclosure, with consequences that often result in findings of invalidity.  

A Hybrid Approach for Quantity with Quality

SMEs obviously have budgetary constraints on the number of patent applications they can file and maintain. There are, however, some cost-conscious approaches they can pursue to expand their patent portfolios without sacrificing quality. 

Even with large companies, not every patent application is treated the same. Some are extremely high value and receive extra time and attention, while others are of lesser value and receive merely the resources needed to competently provide reasonable coverage. SMEs can follow suit on their own scales by prioritizing patent applications into first and second tier filings based on their strategic value. A second tier of applications can be pursued while controlling costs by narrowing the scope of the drafting (and limiting the number of countries in which applications are filed – more on that below.) 

IP Strategies for SMEs

Where available, SMEs should also explore their options when it comes to continuation applications. A continuation application enables an applicant to pursue additional claims based on an earlier-filed patent application, so long as that earlier application has not been issued or abandoned yet. The continuation application is afforded the same priority date as the earlier application. Because it is often easier to get narrow claims allowed compared to broader claims, SMEs should consider narrowing claims initially or in response to an examiner’s rejection. This will allow them to quickly obtain a first patent with narrow claims (e.g., a specific version of a product) while filing one or more continuation applications to obtain additional related patents with claims of varying scope (e.g., to a range of different versions of the product). 

IP Strategies for SMEs
IP Strategies for SMEs

Work Smarter, not Harder

In order to avoid pursuing patent applications in either too few or too many countries, SMEs should, ideally, clearly identify their markets when the patent application is initially being drafted and develop a country-by-country filing strategy accordingly. Of course, that is not always possible. When decisions on where to file need to be delayed, SMEs should take full advantage of the time allowed to them when filing an international patent application under the Patent Cooperation Treaty (PCT). SMEs can file a provisional patent application followed a year later by a PCT application, and then they do not have to decide upon (or pay for) related patent filings in individual countries until 30 months from the filing date of the provisional application. 

The provisional to PCT strategy described above assumes that SMEs only want to file in one of the 153 countries covered by the PCT. If a market falls outside of those countries, then related patent applications need to be filed directly in those non-PCT countries within a year of the provisional application filing date. This also highlights the importance of making these decisions as early as possible.  

Global Patent Portfolio Strategy

When determining what countries to file in, SMEs should consider the following questions with respect to current markets and anticipated markets in the future:

  • Where do I expect to sell/manufacture/distribute the product?
  • Where is patent protection available (e.g. software is not patentable in Europe, Russia, Argentina, or Brazil)? 
  • Which countries are competitors filing patent applications in?
  • Where do competitors want to sell/manufacture/distribute their product?
  • Where are your potential investors or acquirers doing business?

In addition, SMEs should review their patent portfolios every one to two years and/or any time there is a substantial change in business focus to make sure that patent filings still align with business goals. This review should focus not only on the relevance of geographic locations, but also to make sure that applications and claims are still relevant to the business. If either a location or the scope of an application or patent are no longer relevant, sell/license it or abandon it.  

Patent Strategies for SMEs

Targeted Monitoring

Even if SMEs don’t have the resources to initiate invalidation actions against competitors, there is value in knowing what patents are issuing around your core product or technology. Many companies offer patent monitoring services through which an SME can be alerted whenever a new patent issues or patent application publishes meeting search criteria of interest. 

Some of the key benefits of patent monitoring searches include:

  • Gaining insight into competitors’ product market strategies and the technology areas they are investing in.
  • Identify new market opportunities where patent applications directed to certain inventions have not been filed.
  • Reassess business goals if a market is “too crowded” (i.e., too many patent applications filed on similar inventions.) 
  • Where a competitor’s patent or patent application has claims that cover an SMEs product, the SME can develop a strategy to either defend against a patent infringement action or proactively initiate an invalidity challenge. 
  • Identify potential infringers of the SME’s patents, allowing for attempts to either pursue a license or initiate a patent infringement action. 
Patent Strategies for SMEs

On a side note: Would you want to know how your patent application is progressing at the USPTO compared to other applications in the same domain? 

The TIP tool offers statistics of the law firm and the examiner handling your case. Once the application is filed at the USPTO, and an examiner is allotted to your case, the tool indicates the relative performance of the law firm handling your case. The statistics revolve around the number of arguments, grant rate, and grant time. The tool also indicates the case health, for instance, it can tell you if a case needs your attention. There is a whole bunch of insights that you can gather from the TIP tool for strategic patent prosecution.

Request insights for any of your cases at the patent office using the form below.

Conclusion

Let’s summarize how SMEs can implement the IP strategies outlined above. Large companies have in-house patent counsel responsible for the company’s patent portfolio, either performing the patent preparation and prosecution themselves or directing every move made by outside counsel. Such in-house counsel can oversee and carry out the types of strategic approaches described above. SMEs typically solely rely on their outside patent counsel to alert them regarding such issues.  Alternatively, SMEs should consider assigning someone in-house as a point person for patent management who is responsible for working with management and outside counsel to coordinate and implement various IP strategies. 

Does My Company Need A Global Patent Portfolio Strategy?

WHEN IS THE RIGHT TIME TO THINK ABOUT GLOBAL PATENT PORTFOLIO STRATEGY

A global patent portfolio strategy depends on the vision of the enterprise. The three main considerations are:

  1. Market Expansion in Different Geographies.
  2. Patenting Costs Vs Profits.
  3. Studying Competitor Markets.

There is a golden rule for successful global patent portfolio strategy:

Pick key markets that lock up at least 60% of the future revenues for the product as inexpensively as possible. 

Filing patents is an expensive affair. Let’s say, you wish to get patent protection on your product in China. It shall cost you somewhere between 20000 to 50000 USD. This cost involves not just filing but also patent attorney expenses, professional drawing expenses, patent office expenses, government taxes, etc. Say you wish to expand your product line in China, the IP investment shall make sense only if there is a good demand for that product in China. Otherwise, spending so much money without significant returns is going to hurt you.

Here is how you can create a global patent portfolio strategy without breaking your bank: 

Market Expansion in Different Geographies

Why do you need to file patents outside the country? The answer to this is simple:  you may be making profits in those areas. Your product may have a market outside the country and you plan to expand in those markets.

If you own the IP rights for a product only in the US, you can not stop anyone else in the rest of the world from making that product. You need to apply for patents in each country. Multi-country protection is possible in places like Europe, Africa and Russia.

But, do you need IP protection in each of the 195 countries in the world? 

No, there is no need to protect your IP in countries that might not have potential customers. 

Credits: Pexels

Patenting Costs Vs Profits

Before you make a decision, it would be great to do little math because the different costs involved in patent protection add up real quick and the sums become humongous. To give you a quick idea, in the US, the costs for filing a utility patent ranges anywhere between $8,000 and $15,000. Under the Euro-Patent Cooperation Treaty (PCT), the cost of filing a patent is 47,000 Euros and it is valid in eight European countries. In India, the cost of drafting a patent application costs anywhere from $350 and above. You can know more about patent filing costs in more countries by using this link here. The more countries you look for protection in, the costlier it gets. 

Unless these costs can be covered up with the huge market potential in those countries, you should think hard before spending money in procuring patent protection there. If you think that stopping your competitors from being able to sell a similar product will add to your bottom line, then do go ahead with protecting your IP. The question to ask yourself is would you be able to recoup the money and make a profit if you sell in this market?

Look to see where you are going to make money and how the market is going to evolve over the term of the patent. The market landscape keeps changing. Although a patent protects you for 20 years, things keep evolving much more rapidly. You need to have a pulse of where the market is heading, the costs associated with IP protection, and your own objectives.

Studying Competitor Markets

Apart from having a patent in the country that you operate, you should also identify what your competitors are up to. A local competitor might be making huge money by selling a product like yours in another country. But you cannot stop them as you do not have any IP protection in that country. You need to protect your IP assets in that country to either stop them or license your technology. 

For example, you have a patent in the United States and you are only doing business there, but your competitor makes most of their money in Mexico. Picking up a patent battle with them in the United States may not be harmful to them, hence you would want to expand in Mexico and assert your patent there.

Does this make you worried about the IP expenses in various countries? Here’s the good news: you don’t have to protect your IP in all the countries in the world. That would be a frivolous waste of money, time, and resources. All you need to do is ‘make it painful enough so that the competition doesn’t want to introduce a competing product.’ Identify the key markets and lock these markets. The following section tells you how.

Lock key markets (Rule of Thumb)

Sometimes the thing to consider is that you get a broader protection in the countries you file in. For example you have a big patent portfolio in the United States. The likelihood that a competitor can launch a really similar product and sell only in Canada (which has only 1/6th of the population of the United States) is very less as some of the products require a lot of investment before you can make money in a country. Hence, the economics of protecting the market and building the market may not be there in Canada. So if some of the profits can not spill to the United States, it would be very difficult to build out the North America market. Thus, the United States becomes one of the key markets.

Similarly, there are key markets in Europe such as France, Germany and the UK. Once you get a protection in these countries, there is very less likelihood that a competitor is going to release a product in the other smaller jurisdictions such as Monaco, Liechtenstein. Hence, you don’t need to file in all jurisdictions. All you need to do is ‘make it painful enough so that the competition doesn’t want to introduce a competing product.’ 

For example, you have a strong patent portfolio built out in Germany. Because in Europe, the borders are very porous and Germany is a big market, any patent asserted in Germany is going to be very painful to your competitor, who might have wanted to sell a similar product. Most of the retailers, and sales channels are all across Europe, and a lot of retailers would not want to sell a product only in one part of Europe and not in the other (as it makes the logistics very difficult). Hence, if you are asserting a patent in one of the key markets in Europe, which is Germany, the competition may have to shut doors to all of Europe. 

While a world-dominion for your IP protection might sound fancy, it will certainly not be the smartest move in your playbook. Here’s what we would suggest to you:

Pick key markets which will lock up at least 60% of the future revenues for the product as inexpensively as possible. 

Let’s say you are in the electronics and software space, just by protecting your IP in Europe, USA, and a few Asian countries, such as China, you can lock up most of the market for many products. Getting coverage in these jurisdictions will cost you roughly $100,000. (Disclaimer: The rates of getting your IP protected also depends on the kind of patent. The $100,000 number is approximate for basic IP protection.) By protecting your product in these markets, you leave your competitor high and dry as they are forced to compete in secondary markets. Would that even be worthwhile for them? Chances are high that they may end up focusing on a different product which will make financial sense for them. 

While some companies might look at rich markets, there are industries where a huge population is appealing when they sell low-cost items. Drug manufacturers might prefer to go by headcount when it comes to deciding the countries that can be a part of the 60%. 

Hence, figure out what the revenue model for your product is, identify the key markets and lock 60% of your market as inexpensively as possible.

On a side note: Would you want to know how your patent application is progressing at the USPTO compared to other applications in the same domain? 

The TIP tool offers statistics of the law firm and the examiner handling your case. Once the application is filed at the USPTO, and an examiner is allotted to your case, the tool indicates the relative performance of the law firm handling your case. The statistics revolve around the number of arguments, grant rate, and grant time. The tool also indicates the case health, for instance, it can tell you if a case needs your attention. There is a whole bunch of insights that you can gather from the TIP tool for strategic patent prosecution.

Request insights for any of your cases at the patent office using the form below.

Conclusion

Protecting your IP can be a tricky business in itself. Coming up with a strategy to protect it from competitors in countries where your IP is not protected deserves a lot of your time and effort. Having the right strategy in place with an IP Consulting firm can save your firm big money. Hire an experienced IP attorney to help create a global patent portfolio strategy.

Note: The preceding is general business advice and not to be construed as legal advice. IP laws vary by country and retaining licensed legal counsel is advised to confirm this information. Any expressed or implied opinions are of the author and do not necessarily reflect the views of Triangle IP or any other entity who might be associated with the presenter. We hope this content is helpful to you, but should not be relied upon without confirming the advice and accuracy with local legal counsel. Any comments or inquiries are not confidential so please discuss your issues directly with counsel.

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Everything You Should Know About USPTO Patent Center

Everything about USPTO patent center

USPTO Patent Center – A Great Initiative!

The patent community has long been short-changed by the issues marred by missing or inconsistent patent data.

The companies and their respective patent attorneys have been on the receiving end of a system. The system, that was not user-friendly and involved multiple levels of cyber-bureaucracy. This led to inordinate delays and, on occasions, even missing deadlines. 

The drawbacks were so cumbersome that certain industry thought leaders came together to build a platform to fulfill their requirements. And this is how the Open Pair Initiative (OPI) was formed.

The OPI aimed to address the issue of the unavailability of Image File Wrappers (IFWs) in the short-term. The OPI is simultaneously working on a feasible long-term solution for IFW extraction.

Considering the pertinent issues raised by OPI, the USPTO recently unveiled the Patent Center. The aim behind the creation of the Patent Center is to rationalize the patent application procedure. This shall be done by allowing seamless management of documents and communication channels.

However, to better understand the importance of the Patent Center, it is imperative to take a walk through the memory lane. And understand the evolution of the USPTO tools.

Timeline of USPTO Tools

Public Patent Application Information Retrieval (PAIR)

This system is the de facto source of IFWs as of date. However, it is besieged with numerous issues such as slow loading of the website and erroneous verification process. 

Global Dossier

Global Dossier is another source of IFWs which is relatively free from verification issues. But is heavily dependent on the Public PAIR, which may not always be up to date. Another pesky problem with Global Dossier is that each office action is required to be downloaded separately. There is no functionality to download all IFWs in a single click.

Reed Tech

This is the USPTO’s answer to make available outsourcing of IFWs. But it has been flagged for serious speed issues. Due to which many companies had to resort to building their own patent repository.

As can be observed above, each of the above tools had shortcomings that needed to be addressed.

The beta version of the Patent Center aims to negate these shortcomings by providing for complete and seamless open access to Public PAIR records without the demand for continuous verification. 

Key Highlights of the USPTO Patent Center

Following are the key highlights of the Patent Center:

  • Integrated interface for e-filing and management of patent applications.
  • Use of existing USPTO.gov accounts and sponsorships. 
  • Submission of a joint .docx file involving specifications, claims, and abstract without the need to separate these sections manually.
  • Elimination of the need to convert .docx file into a .pdf document for e-filing.
  • Same authentication and sponsorship process as EFS-Web and PAIR.

The entire list of the features alongside proposed features (and any known issues) can be found here.

Given that the current version of the Patent Center is in the beta stage, the feedback from various stakeholders is being collated by USPTO to make further changes.

Here is a timeline of the Patent Center shared by the USPTO:

USPTO Patent Center

Credits: USPTO

TIP Tool – Feedback Incorporated

Although the information provided through Patent Center is a welcome step, the Patent Center is still, nevertheless, just an API which provides for information in a form that a user cannot comprehend/read – this is where tools like TIP comes into the picture. 

With multiple years of product experience behind it, Triangle IP has developed the TIP tool (currently in beta phase). It analyzes the patent data to offer powerful insights. These insights can assist IP professionals in monetizing their patents with enhanced quality and lower cost of patent protection.

Another critical feature of the Patent Center is the availability of rejection files. Through the diligence of the TIP tool, the acknowledgment and rejection data surrounding patents are used to define the extent of the rejection or prosecution histories, i.e., the intensity of the rejection and the number of claims impacted by the rejection. 

Through the Patent Center, access to the full transaction history of a patent is made available. This is relatively crucial as it enables tracking of patents during the prosecution cycle. But with the TIP tool, companies and attorneys can ensure end-to-end tracking of innovation from idea capture to the publication of patent by leveraging the patent data to manage the entire lifecycle for each patent.

Conclusion

The introduction of the Patent Center is a major boon to the patent industry as it addresses issues of missing and inconsistent patent data.

Furthermore, the release of the IFWs and rejection data has enabled the development of the tools like TIP to provide for powerful data-based insights that can go a long way in the effective monetization of a patent.

As more data become available, the insights offered by these tools are only going to become more penetrative and customized – exciting times beckon.

Note: The preceding is general business advice and not to be construed as legal advice. IP laws vary by country and retaining licensed legal counsel is advised to confirm this information. Any expressed or implied opinions are of the author and do not necessarily reflect the views of Triangle IP or any other entity who might be associated with the presenter. We hope this content is helpful to you, but should not be relied upon without confirming the advice and accuracy with local legal counsel. Any comments or inquiries are not confidential so please discuss your issues directly with counsel.

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Foreign Patent Filing: 5 Strategies to Develop an International Patent Portfolio

Foreign Patent Filings Strategy and Insights

Should you protect your invention in 4 countries or 16 countries or 100 countries?

If you ask your patent attorney, the typical advice is to just file patents across all international jurisdictions in which your products are made, used, or sold.

On the face of it, the suggestion may look good.

You have a product or a technology that may have a worldwide market and so worldwide protection seems valuable. But this is rudimentary thinking and may not maximize your limited patent budget.

I have seen companies – big and small, doing a ton of due diligence before investing millions of dollars on a new product line, a new technology innovation, or on R&D. But surprisingly the same companies commit to a $1 million patent strategy without doing any due diligence.

I wonder why companies spend so much money securing a patent in Saudi Arabia when your market was in the US and Europe alone. As a strategy owner of the company, you must ensure that capital-intensive patent filing exercise must show positive ROI over years.

This is because companies often file foreign patents and grow their patent portfolios without a clear strategy resulting in bad investments and out-of-budget patent costs.

You would understand the cost-effective process of filing international patents with these 5 steps.

Validate your business need (if unsure when to go for foreign filing)

The first question that I would consider before filing a foreign patent is whether there is a strong business need?

When I say a strong business need…..

Is that a market you want to protect?

Do you see making money in that country?

Think for a while….

If you are unsure, I would prefer a strategy that delays the filing of foreign patents until the latest possible moment so that you can test your market meanwhile.

The Patent Cooperation Treaty (PCT) allows preserving international rights for most jurisdictions to delay choosing specific ones for thirty months from your earliest priority date.

This strategy gives you the longest possible time to evaluate the commercial prospects of your innovation before committing large funds to the foreign patent application process.

Now, it makes sense to file for foreign patents if a market indeed has a strong enterprise value to protect in the next twenty years.

Also, you have to consider your business model and see how it fits into your patent strategy.

For example, we are seeing a huge explosion of innovation in  AI and machine learning as of today.

If your company is dealing with AI technology and your business model is a function of the population, then China and India would be the markets to file foreign patents.

Europe would be the market to file foreign patents if your business model is a function of per capita income given that European countries are relatively affluent.

Therefore, understanding your business goals and business model is very important to carefully craft a global patent portfolio strategy.

Tip: Along with validating your business needs, one way to develop a foreign filing strategy is to conduct a worldwide patent search on the key foreign patents of your competitors. This will provide you with a list of baseline countries where patents are valued by your competitors and by your industry.

Protect your patent budget from misdirected investments and out of control costs

What’s the point of spending $70,000 on filing a patent in Japan?

It’s very difficult to get a patent in Japan’s patent office and extremely difficult to enforce that patent against a Japanese company.

You should check the effective cost to file a patent in a particular country. The basic cost to file a patent per country can be anywhere between $25,000 and $70,000 (depending upon the country) over the 20-year life of patents.

This means a simple patent filed across 10 different countries would cost you at least $250,000 over the life cycle of patents.

Complex patents can cost more.

Stage Total Estimated Costs
Filing (with necessary translation costs) $5,000 – $10,000
Prosecution (argument phase) $3,000 – $5,000 (per round)
Issuance and Miscellaneous legal fees $5,000
Government fees (filing, issuance and maintenance) $10,000 – $30,000

So understand the likely returns before committing large sums of money even if you are a company with deep pockets.

A strategic way to do this would be to leverage your patent attorney’s (or your law firm’s) relationship with the local law firms of those countries where you plan to file a patent.

Also read: Here’s the 6 things to know before hiring a patent attorney

Pick the local law firms that give you the right advise on

  • the likelihood of receiving a patent
  • your end-to-end costs
  • patent strategy
  • practicality of patent enforcement

Let me give you another example of how to optimize your patent budget by adapting the right strategy.

Let’s compare a particular drug that has only three patents protecting it with a mobile phone that has thousands of patents on it. The value of one additional patent on that drug is much higher than one additional patent on the mobile phone because there are just three patents on the drug.

Meaning, density of patents should be considered before you decide to file patents- foreign or domestic.

If it’s a super dense thicket, each patent has a relatively smaller value. If it’s a sparse thicket, every single patent is worth a substantially more presuming the market value of each product is the same.

For electronics and software technology, I wouldn’t recommend to file patents overseas because each has a smaller value.

Similarly, IoT (Internet of Things) is another technology which has become a dense thicket. When IoT was just emerging a few years ago, it was a sparse thicket and so filing patents would have made sense then.

Consider the latest hot technology Artificial Intelligence.

According to World Intellectual Property Organization, 3054 patents on artificial intelligence which includes machine and deep learning were filed between 2007 and 2017. Of those patents 1030 were applied for in the United States, 674 in China, 467 in Korea, and the remainder in other countries.

In each of those countries, patents were filed both by domestic companies as well as foreign companies seeking protection in those markets.

When it comes to deep learning, an advanced subset of machine learning, Chinese companies hold hundreds of patents in China.

From a sparse patent thicket, machine and deep learning are slowly moving towards a dense patent thicket in US, China, and other countries.

Take a look at the Gartner Hype Cycle for Emerging Technologies below.

Emerging-Technology-Hype-Cycle-for-2017-

 

Anything that is high in the hype cycle is moving towards the dense thicket.

As such, if you were an enterprise or an inventor innovating with deep learning, machine learning, or connected home technology (IoT), for example, proceed cautiously with filing foreign patents in these areas so as to utilize your patent budget effectively.

A better strategy would be to file patents only in those countries where:

  • When the density of patents in your technology area is sparse
  • the likelihood of getting a patent is high
  • the legal system in the country is fair when enforcing patent rights of foreign companies

Know which countries to file and which to avoid (using two-thirds market filing strategy)

One approach that can help you in identifying which countries to file patents in and which ones to avoid is the two-thirds market filing strategy.

In other words, you should file in a limited number of jurisdictions that cover the most lucrative percentage of the market.

For example, if your business model is a function of population and if two-thirds of your market is in United States, China, India, Indonesia, and Europe alone, then your patent application pursued in these jurisdictions would capture the majority of worldwide revenue.

While the costs for filing patents in these countries might be higher vis-a-vis United States, it still would be less expensive than trying to file patents in a larger amount countries across the world for a small fraction of the market.

From a cost-benefit point of view, you might miss out on only one-third of the market but have protection in the remaining two-thirds of the key market. The remainder of the market would be too costly to protect and likely include jurisdictions where enforcing your patent wouldn’t make sense anyway.

Importantly, from the economies of scale perspective, you have an enormous competitive advantage as your exclusive geography of patent protection in the key two-thirds market deters your competitors from even entering the unprotected one-third market.

That’s because once you take away the major 67% of the market, it is very difficult for your competitors to gear up for the remaining 33% of the market as they no longer have the economies of scale advantage.

The remaining market is small, scattered and difficult to capitalize on.

I know of company which was ready to commit about $5,000 – $10,000 to file in every possible country (some 177 countries participate in the Paris Convention) to incur a seven figure amount just to begin pursuit of one idea worldwide. Upon applying the two third market filing strategy it made sense to file patents in only 4 countries, bringing down the total cost of filing to a low five figure amount.

Therefore, the key is to place the bets on the right countries that cover the most lucrative percentage of the market for your product/technology.

Be wary of unfriendly jurisdictions for software & business methods and other innovation

What is common among companies such as Mastercard, Paypal, WebMD, Blackboard, 23andMe, LinkedIn, Spotify?

They are all disruptors driven by innovative software and business method models in Fin Tech, Health Tech, Ed Tech, and other areas.

Software includes applications, programs or underlying algorithms and processes that run on computers or mobile phones.  Business methods are processes of doing traditionally human performed tasks using little or no substantial technology.

Also read: Ultimate Patent Strategy For Your Software Startup (A Comprehensive Guide)

More often than not for companies in the Fin Tech, Health Tech, and Ed Tech areas, the foreign patent you want to file is related to either software or business methods.

Software and business methods patents face significant patent eligibility challenges both in US and most foreign countries.

In fact, some places like New Zealand, India and Europe are known to be unfriendly jurisdictions for software and/or business methods patents.

Europe, in particular, is very difficult for software and business methods patents as the onus is upon the patent applicant to prove that the invention actually makes a contribution in a technical field by solving a technical problem. New Zealand just prohibits software patents altogether.

Most countries have their own set of requirements when it comes to software-related inventions and business methods.

Japan, for example, allows business methods to be patented so long as they include technical features in the claims.

In Australia, software inventions are patentable provided that a mode or manner of achieving an end result using technology is claimed.

In South Korea, software related inventions are considered patentable provided the software is combined with a hardware such as a computer. And pure business methods are not considered patentable unless combined with the technical layer.

Point being, while your business goals and budget might encourage securing patent rights in a number of foreign jurisdictions, you need to estimate the likelihood of patentability for your inventions particularly the ones involving software and business methods.

Tip: Have your patent counsel consult with a foreign associate in each jurisdiction before wasting a filing so that they can opine on your particular patent claims. A good foreign associate will give you the right advice prior to filing without charge.

Evaluate your business goals before developing a foreign patent strategy (like using your patents to get acquired)

In 2011, Google acquired Motorola for a whopping $12.5 billion dollars. People thought that the acquisition happened because Google wanted to compete in the handset space by acquiring the market leader.

But there was more to that strategy.

As this Forbes article “How Google Used Motorola to smack down Samsung” says, Google acquired Motorola so that it could leverage Motorola’s 20,000 mobile patents to stop Samsung from promoting its proprietary OS at the cost of Android.

Some believe it was all about patents.

Similarly, Apple picked up three European patents and seven PCT applications with its purchase of an augmented reality startup “Metaio” in the year 2015 and the acquisition could help Apple bolster its virtual reality and augmented reality efforts.

Whether you are a company or a startup, understanding your business goals is key to developing a robust foreign patent strategy.

  • Is your goal to use your international patent portfolio to get acquired?
  • Are you looking to enforce your patent rights against your competition?
  • Is your goal to use your patent portfolio to defend yourself?
  • Is your goal to use your patents to gain exclusive market access?
  • Are you looking to use your patents in cross licensing and partnerships?
  • Is your monetization plan just to license your patent portfolio?

For example, if your goal is to use your overseas patents to get acquired then you need to have a foreign patent strategy that is likely to match the strategy of whoever is trying to acquire you.

But, how do you know who is going to acquire you?

One way to understand the typical foreign patent footprint is to do a landscape study and zero in on candidate companies.

These companies could be your competitors or the ones that want to expand their business into your space.

Understanding what these potential acquirers are doing with their own patent portfolio so you file patents accordingly in those foreign jurisdictions to avoid missing something that would stand in the way of getting acquired.

Different foreign patent filing options (which route is best)

You can directly file your patent in almost any country on earth.

But a more prudent approach would be to delay the substantial cost of foreign filings while you test your innovation in the market.

It would be nice to delay forever but most foreign countries adhere to an absolute novelty standard which means you must secure a priority date by filing your patent before any release or disclosing of your innovation.

There are several strategies and treaties that allow the filing of foreign national applications to be delayed.

For example, there are 177 countries which have adopted the Paris Convention that allows use of your filing date in signatory countries if done within one year.  A subset of 152 countries have also adopted the Patent Cooperation Treaty (PCT) that allows for centralized review of your patent application to delay foreign filing for around 2.5 years from your earliest filing.

These programs can delay foreign filing for 12-30 months from your US filing with the PCT route giving some feedback on your prospects of receiving patent rights.

Almost no one does direct filings except for the few countries that might not be in the Paris Convention such as Taiwan and Burma.

Most companies file a US patent followed by a PCT application within 12 months to comply with the Paris Convention. That gives another 18 months for the PCT phase to delay nationalization decisions for 30 months from the original US filing.

The delay afforded by this strategy provides time to validate the market potential of your patent idea (innovation).

Some companies forgo the US filing and start with a PCT filing and circle back to the US filing within 30 months. This is probably the least expensive foreign portfolio strategy but delays the allowance of your US patent which may be the most important market to have a patent.

One good advantage to the PCT filing is that if the patent examination finds no troubling issues, you can accelerate national filings in many countries to cut delays as your application moves to front of the line.

The Patent Prosecution Highway (PPH) is one such program that recognizes the hard work done in the PCT phase by speeding up the examination process to reduce the workload in each country.

PPH-Filing-Procedure

Image Source: USPTO

The below chart shows which countries have PPH programs with others

 

CountriesWithPatentProsecutionHighwayProgram

 

Your patent attorney should be able to tailor the possible options to match your portfolio strategy, timing and budgets.  Although daunting, a foreign patent strategy makes strong sense so long as it aligns with your strategic direction without breaking the bank in that pursuit.

 

Note: The preceding is general business advice and not to be construed as legal advice. IP laws vary by country and retaining licensed legal counsel is advised to confirm this information. Any expressed or implied opinions are of the author and do not necessarily reflect the views of Triangle IP or any other entity who might be associated with the presenter. We hope this content is helpful to you, but should not be relied upon without confirming the advice and accuracy with local legal counsel. Any comments or inquiries are not confidential so please discuss your issues directly with counsel.

TIP Tool is free for your whole team

No credit card required. No setup fees. No need to download.


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