Patent Mining: 5 Ways To Go About It At Your Enterprise

5 Ways to go about patent mining at your enterprise

As a patent portfolio manager, you want to keep abreast of innovations within the enterprise.

You want to detect and capture likely patentable innovation early enough.

It’s you, who best understands the importance of creating valuable IP.

Maybe you are super technical or maybe not.

You may be comfortable in one technology domain but may not understand other technology domains so well. However, you need to capture innovations from all product lines in the enterprise.

This process of patent mining can be challenging in the absence of a systematic approach.

“Patent Mining is like a treasure hunt, the key to the treasure lies in asking the right questions to the right people.”

Patent Mining at your enterprise

The right people being:

  • Developers
  • Engineers
  • Scientists
  • Product Designers
  • Marketing
  • C-suite

And the right questions frame the patentable aspects of innovations across the enterprise. Ready to dive in? Here are the 5 ways you, the patent portfolio manager, would go about mining for patents at the enterprise.

Hanging around innovators

Tapping into existing development checkpoints

Staying up-to-date with product rollout plans

Learning key selling features from the marketing team

Knowing the strategic vision from the C-Suite executives

Hanging Around Innovators for patent mining

Having the smartest employees is wasted if there is no opportunity to uncover their inventive ideas. Hang around people within the enterprise who have titles such as developers, engineers, scientists, and product designers. Find out about the problems they are solving and the technology they are developing to do so. The company presumably hired these sorts of employees to build new things so certainly they are coming up with new ideas as they carry out their work.

Hanging Around Innovators for patent mining

Networking with these groups of technical people will lead to discussions about their work and patenting opportunities.

Tapping Into Natural Checkpoints

Product development is multifaceted. The process has many stages from conceptualization through market release with the process varying in every enterprise. Usually, during the product development process, you have natural checkpoints that you should look out for. For example, during the product development stage, you might have a proposal, design review or customer presentation. These are often opportunities to get insights so lookout for things that could be patented.

Tapping Into Natural Checkpoints for patent mining

Ask questions about the uniqueness or novelty of the product being developed or its advantages. Focus on the responses and get feedback about the products satisfaction of customer needs. The feedback received would often expose a path to new improvements or enhancements that can place you at an advantage over your competitors. Feedback during the product development process identifies inventive ideas which can lead to a patent.

Staying Up-To-Date With Product Rollout

Closely watch as products get ready for rollout. Product rollout is a term used for the introduction and integration of a new product or service to the market. It is important that you listen to people talking about products that are about to be released. The key questions to ask here will be:

Is there anything new?

What is the problem that this product solves?

What are the advantages of the product?

How is it better than the previous version?

Does the new product make use of new technology?

Staying Up-To-Date With Product Rollout for patent mining

Asking these questions can lead you to terrific new insights and you shall be able to spot some potential patenting opportunities. Timeliness is of the utmost importance here. In the U.S. you lose the right to file a patent after one year of disclosing any information about the new product to the public. Marketing often controls the release of product information to create filing deadlines.

Learning Key Selling Features From The Marketing Team

Marketing usually goes hand in hand with the process of new product rollout. It is crucial that you look out for the key selling features that the marketing team is using to sell the new product. For example, the marketing team can claim the new product is more user friendly than previous products of its type or that it is 20% faster than the previous product. Uncover the technology or innovation associated that is creating that difference, and that might be something to file a patent on.

Learning Key Selling Features From The Marketing Team

Catching Up With The C-Suite Executives for patent mining within the enterprise

Networking with key executives on the technical staff, for example, the Chief Technical Officers, Chief Scientists, etc. is key for patent mining within the enterprise. These technical executives usually have a good grip on the strategic vision. They might not be familiar with how patents work so it’s important that you educate them. These key managers usually have their tentacles going in different product directions because they engage firsthand with the technologies used in the enterprise daily. The key managers should be trained to look out for and identify innovations or ideas that can be patented within the enterprise. It is important to catch up with these executives on a regular basis to know their innovative direction.

Catching Up With The C-Suite Executives

Let’s Sum It Up

These 5 patent mining strategies are the ways to go about gathering up inventions for patent protection. Here is a quick recap of the 5 strategies for you:

  • Professionals with roles like scientists, engineers, developers, and designers work on new products, and hanging around them can lead to patenting opportunities.
  • Tapping on the natural checkpoints like proposal, design review or a customer presentation may also help you find patentable innovations.
  • Whether the product is more user-friendly or 20% better at its performance; there is a good possibility of innovation that led to the improvement. Exclusively owning those marketing advantages is a must.
  • Many times marketing goes hand-in-hand with product rollout; learning key selling features from the marketing team may direct you toward the underlying innovations that might be patented.
  • Catching up with the C-Suite executives can help you spot strategic direction; as these are the people who have a complete picture and insider information on what’s happening across the enterprise.

Our founder recently talked about patent mining in one of his Youtube sessions. Here is the video:

Hope this would help you break down the sometimes-overwhelming task of identifying patentable ideas within an enterprise. Patent mining is one task and managing the patent capture is a whole different game. In the absence of the right tool, the information might just be a mess, that no one wants to get into. Hence, you might like to explore software that simplifies the process into stages:

Idea Capturing

Internal Vetting

Patent Drafting

Patent Filing

Portfolio Managing

Patent Mining framework

Here is a good guide for you to evaluate the tools for innovation capture for a sound IP strategy.

3 Ingredients of High-Quality Patent Application

Understanding and decoding a patent can feel like reading a foreign language. Patent claims are littered with legalese and hard to parse. We might rely on recommendations or go to an established firm to get a patent drafted. Sometimes, the tendency is also to get it done as inexpensively as possible.

However, when you can’t judge the quality, then you can’t make a sure decision. So, differentiating a good quality patent from a not so good quality patent may seem like a daunting task. But it doesn’t have to be. Here are a few tips and tricks that make this easy.

There are three ingredients of a high-quality patent application you must look for:

1. Substantive coverage

2. Simple language without ambiguity

3. Technical details: Visuals, Citations, and References

Substantive Coverage

Contrary to popular belief, in a patent application, less is not more. A detailed description of the invention along with alternative solutions is essential to ensure broad coverage. 

Good patents tend not to be short. A short patent may have 4-5 figures and are very high level. They have very little detail in them. A really good patent would have about 10-15 figures correspondingly with detail that can be added to the claims if needed. Hence, when you get a draft back, check whether it is 3 pages long or 15 pages long. Generally, the more said about the innovation, the more likely you are going to get a better coverage.  Description of alternative solutions to the underlying problem will allow claiming those later as your competition tries to design around your roadblocks.

Claims are a very important part of a patent application. It’s quite debatable on what the claims should look like. A long book could be written on the topic and still would not make things easier. As a broad rule a high-quality patent application must have claims directed to how your innovation uniquely solves the underlying problem that originally motivated the invention. Dependent claims can add details as possible fallback positions. 

However there are few red flags you can look for while evaluating the claims:

  • Claims should be written in such a way that others cannot design around that would create legal gaps.
  • Too narrow claims reduce infringement opportunities, but if they are too broad it is unlikely that they would be allowed.
  • Technology covered in claims must be relevant 10-15 years down the line as the industry evolves.

Substantive Coverage Example: Techniques In Transit Advertising

Let’s take a look at the claims of this high-quality  patent application on “Techniques in Transit Advertising” for example. It has 3 independent and 13 dependent claims with 26 figures.

In summary the patent is for a method to generate a request for an advertisement based on an identified ridership pattern of a user of a transit system:

Let’s take a look at claims.

The illustration above is from the patent AU2013262776B2 picked up using Google Patents Database.

Let’s take a look at the coverage of this claim:

  1. The claim talks about retrieving information to find the advertising preference for the rider of the transit system to tailor the experience.
  2. It also talks about the kind of information that shall be retrieved: entry point, exit point, duration of transit, time and location of plurality of such transactions so that the advertising is location relevant.
  3. The claim also covers the places for displaying the advertisement like faregates, kiosks, countertops, etc. for the rider.

Going through the complete claims set of this patent, gives a good idea of what claims should look like. The other claims cover a lot of possibilities around the invention like merchant proximity, information that can be displayed other than advertisements, type of media (machine readable) etc. to provide further detail and fallback positions.

The Heart Of The Invention

Once you have a draft patent application, the inventor(s) should read it critically. Has the draft properly detailed the heart of the invention (i.e., the key differentiator that enables your invention). Is the heart of the invention only mentioned in a cursory manner? Or, is it filled with creative detail and alternatives? Reading of the draft should surprise the inventor with its thoroughness and detail. This goes to show how much thinking has gone into describing the invention. Remember, the patent application is not a marketing tool. It doesn’t need to be flashy with marketing language. The purpose of a patent application is to get the patent granted. And for that, the application must be detailed and thorough. Failure to disclose the details of the invention amounts to a failure to describe how the inventor was in the possession of the claimed invention.

The patent office requires the inner workings and technical detail on how the heart or the core of the invention works.  It should provide the detail to allow another to make and use the invention.  The drafter should go in much deeper detail even if the product has not been built.

You should see that detail in the draft.

Think about what the most important technological thing is. For one, it should be captured in the claim. Because it is hard to parse the claims, ask the drafter, where it is mentioned in the claims. Then work your way back and see how much writing is there about that. A good patent application should have at least 2-3 pages of the core of the invention i.e. selling point of the innovation. 

Scope of Application

Does the draft speak to what is unique about that invention and define its scope too?

In addition to the uniqueness of the invention, the application must also have a wide scope to enable others to understand how it might be built. Ensure that it covers the existing and future scope of innovation as far out into the future as you might imagine. 

Simple Language

High-quality patent specifications are written in unambiguous language to be easily understood. The simple language also ensures that the ideas are not lost in translation.

This means the application must read like something familiar to you or any other similarly trained engineer, developer or scientist. If vague or confusing, it leads to potential attack down the road. If only the claims could be written to avoid the legalese, but the precision of their meaning requires the use of language that the courts have defined in their legal decisions.

Technical Details

A long, thoroughly drafted specification with thorough technical detail must have 

  • Block Diagrams
  • Citations
  • References

Block Diagrams

The visual impact of an application is almost as important as the written word. Make sure that the application includes pictographic representations of the invention – block diagrams, mechanical drawings, graphs, screenshots, etc.

Like ample description, the visuals should portray the innovation from different perspectives. For example the block diagram shown below is from a patent on “Techniques in Transit Advertising” (We have used the same patent as a reference throughout the post for easier understanding :)). The patent has 26 figures – a sign of high-quality patent application.

The illustration above is from the patent AU2013262776B2 (Google Patents Database).

Citations

A citation is a reference to prior art that’s relevant to a current patent application. 

There are two different types of citations 

Backward Citations

Backward citations are patents that are cited by a specific patent and forward citations are patents that cite a specific patent. In other words, these are earlier published documents that are publicly available before the filing date of a new patent application/prior art. 

Forward Citations

A good application must find and cite documents that 

  1. may anticipate the claimed invention, 
  2. or might be similar to the claimed invention and limit the scope of the patent protection, 
  3. or which generally reveal the state of the art of the technology.

These are forward citations. The number of forward citations a patent receives is often reflects on a patent’s significance.

The use of citations in a patent application shows the thoroughness of research. These can also act as markers to detail the scope of the invention. 

References 

A patent includes citations to other patents and literature that the examiner may find relevant to patentability (i.e., prior art). Adding references to the patent application makes it easier for the examiner to evaluate the same and indicates sophistication by the filer and generally indicates searching may have guided the draft.

They also add weight and credibility to the application, thereby increasing the chances of a grant.  The examiner will also search for references.  All the references will appear on the face of the patent application and more is better.

A good search prior to drafting helps define the novelty in the context of what others have done.  Claims should be drafted to broadly cover the innovation, but not step too far into the prior art.  Especially where your drafter may be unfamiliar with your technology, a good search can help familiarise them.

Tools To Evaluate Patent Quality

You might consider using a tool to evaluate patent quality. That is not a bad idea, but it has a downside. Let’s see how.

The quality of a patent encompass objective as well as subjective factors.

Objective factors are the ones that can be computed or measured by software. These include

  • Length of Specification
  • Number of claims
  • The number of words in the independent claims

Subjective factors are more traditional like:

  • Scope of the application
  • A correct and complete description of the heart of the innovation
  • How important innovation is to your business?

The tools available in the market can help you judge the quality of a patent defined by objective factors. It’s even possible to manipulate these objective factors. In fact, experienced and expert drafters can remarkably improve the quality of a patent. But for the subjective factors, human feedback is necessary.

In case you want to watch more about filing high quality patents, I suggest watching below video:

 

A Quick Recap

With this post we have tried to equip you with the ability to differentiate between a low and a high-quality patent application. To summarize presented below is a 7-points checklist for high-quality patent applications.

  1. High-quality patent specifications are written in unambiguous language to ensure that the ideas are not lost in translation.
  2. Claims should be directed to how your innovation uniquely solves the underlying problem that originally motivated the invention. Dependent claims can add details as possible fallback positions. 
  3. A high-quality patent application should have at least 2-3 pages of the core of the invention i.e. selling point of the innovation. Failure to disclose the details of the invention amounts to a failure to describe how the inventor was in the possession of the claimed invention.
  4. Make sure that the application includes pictographic representations of the invention – block diagrams, mechanical drawings, graphs, screenshots, etc. Like ample description, the visuals should portray the innovation from different perspectives.
  5. Numerous references in a  patent application make it easier for the examiner to evaluate the same and indicate sophistication by the filer. They also add weight and credibility to the application, thereby increasing the chances of a grant.
  6. A high-quality patent application covers the existing and future scope of innovation as far out into the future as you might imagine.
  7. The use of citations in a patent application shows the thoroughness of research. These can also act as markers to detail the scope of the invention. 

Conclusion

A well-drafted patent application, as expensive as it may be, is one of your best business investments. To ensure a high-quality patent application, hire the best. Read and re-read, keep editing, and amending and make the application thorough. In exchange for a limited monopoly, description and enablement are the “consideration” that you must provide to the public. 

To make the patent application even stronger, ask the following questions:

  1. Can this patent be adapted to the jurisdictions you would like to take it to in the future? Gain some insights here on the global patent portfolio strategy.
  2. How easy or difficult does the application make it to detect or prove infringement based on public information?
  3. Will competitors be able to understand the relevance of the patent?

Let’s keep that discussion for another day!

Wondering if your IP strategy is strong or not; read this “Is My IP Strategy Headed In Right Direction”!

Patents Vs. Trade Secrets: Which Way To Go?

Patents vs Tradesecrets which way to go

Patents Vs Trade Secrets | Choose Wisely!

‘Patents are expensive, why don’t we just trade secret everything?’ If this is a thought and cost cutting is something you’re looking to do, read on. It is no secret that investing in patents is an expensive affair. At the same time, a rich IP portfolio is very advantageous. Here, we talk about Patents, Trade Secrets, and Defensive Publications as IP tools to help you decide which one to be used in which scenario.

Trade Secret:

A trade secret is any information that’s unique to your enterprise and gives you an advantage over your competitors. As a company, this could include formulae, technical data, code, manufacturing data, customer information or any other technical, scientific information that a company may take steps to keep secret.  To keep such things as a trade secret does not require any money however you need to take care of certain things to maintain the secrets (as described later).

Defensive Publication:

A defensive publication is a disclosure of invention by the inventor to the public. This disclosure allows the inventor to safeguard the freedom to use this invention by preventing others from patenting it.

In the event a patent is sought to be obtained for the same or similar invention, a pre-dated defensive publication will act as a deterrent to the issue of such patent.

Put simply, any printed or electronic publication that fully describes an invention and was published before the filing date of a patent application can disqualify that patent from being granted.

Patent:

A patent is an exclusive right granted by a government for an invention, which is a product or a process that provides, in general, a new way of doing something, or offers a new technical solution to a problem. 

In order for an invention to be patentable,  

  1. It must be new
  2. It must involve an inventive step, one that is non-obvious to a person skilled in the field
  3. And it must be capable of industrial application

Patents protect your inventions for 20 years during which you enjoy a monopoly in the market place. However patent protection is country specific. So you enjoy the monopoly within the geographic boundary that your patent has been granted in. As a patent owner, you can do the following:

  1. You have the right to prevent others from using it, abandon it, sell it.
  2. You may also assign it or license it in totality or for a specific purpose. 

So, how does one choose what kind of protection to use for an invention? 

Trade Secrets

There are three vital things to do when you think of protecting something as a trade secret:

  1. Define your trade secrets and maintain an inventory of the trade secrets of your organization.
  2. Make your employees aware of the fact that these are trade secrets. Ensure confidentiality and non-disclosure agreements are in place.
  3. Do not make any information about your trade secret publicly available.

Here are some questions that will help you choose the right type of IP protection: “Patents Vs Trade Secrets”.

How easy is it to reverse engineer your invention?

The thumb rule of trade secret protection is to use it when inventions are impossible or require a very hard degree of effort to be reverse-engineered. By its very nature, a trade secret is vulnerable to reverse engineering because it only remains secret until it’s a secret! So, patent protection for inventions that can be easily reverse-engineered is more appropriate. How easy reverse engineering is; depends on the nature of your invention.

Mechanical inventions

Products that are a result of this kind of innovation are fairly easy to reverse engineer. With anything that is easy to reverse engineer, trade secret protection becomes completely ineffective.  

Chemical Compositions, Software & Electronic Inventions

While these are not as easy as mechanical inventions, with a little time and effort these products can also be reverse-engineered. Read this to understand how!  

Processes

These are quite difficult to reverse engineer. Since processes are business-specific, they are easier to keep within the company. There is a long list of food products that have managed to keep their recipes or chemical formulae as trade secrets for many years e.g. Coca-Cola, Listerine, Twinkies, Krispy Kreme Donuts, WD-40, etc. Google Search Algorithm and NewYork Times criteria for creating the best Sellers list are two processes that serve as great examples for trade secrets.

How beneficial is it to your company to keep your invention a secret?

In a cut-throat market place, competition is everything. A major aspect to consider if keeping your invention a trade secret gives you a clear competitive advantage. There are six factors of competitive advantage: price, quality, selection, speed, turnaround and service. Does your trade secret serve or help further any of these purposes?

Who are your likely competitors and how motivated will they be to access your invention?

To choose the right kind of IP protection, it is important to understand your competition. The motivation of your competition to access your invention will be directly proportionate to your market position. So, having a clear understanding of your market, your product and the path of your company will help with answering this question. 

Will the invention be useful after 20 years?

One of the reasons you choose trade secret protection over patent protection is to extend the lifetime of protection that it offers. While patents offer you protection or a monopoly of 20 years; trade secrets can last you a lifetime. Although trade secrets are less of a strain on the pocket procedurally, keeping them a secret always comes at a cost. Being able to gauge the usefulness of your invention after 20 years is a great tool to decide how you would like to protect it. 

Patents

The following is a list of reasons to patent and questions that will help you evaluate the patentability of an invention:

Competitive Edge

A business usually wants to patent an invention to have a competitive edge, market power, and as a tool to earn more money. Hence the first question to ask is whether there is a market for the invention, the technology, or products incorporating it? 

Need in the Market

If there is a market for your invention, what are the available alternatives to it, and how do they compare with your invention? Check multiple factors such as utility, price, availability, customer satisfaction etc.

Utility of Invention

Once you have data on the market space, ask if the invention is useful for improving an existing product or developing a new product? If so, does it fit in with your company’s business strategy? 

Fund Raising

Another big reason for choosing to patent is using it as a tool to raise funds and attract potential investors. Before you choose to spend resources on a patent, check if there are potential licensees or investors who will be willing to take the invention to market?

New Revenue Stream

If you are looking to patent to sell your invention or as a tool to add a new revenue stream by licensing your patent, ask how valuable will the invention be to your business and to competitors? Also, just how easy is it to reverse engineer your invention from your product or to “invent around” it? Is reverse engineering easy enough to tempt others, especially competitors, to invent and patent what you have invented?

Sales & Profit

Purely as a tool to increase sales, profits, and revenue, do the expected profits from an exclusive position in the market justify the costs of patenting?

Commercial Utility

Lastly, what aspects of the invention can be protected by one or more patents, how broad can this coverage be and will this provide commercially useful protection

Defensive Publications

If you don’t want to walk down either the Trade Secret or the Patent route, you may consider a Defensive Publication. By making a defensive publication, your invention is neither a trade secret, nor patentable (if not done so within the time frame offered under certain jurisdictions). A defensive publication may be ideal for smaller inventions or inventions which do not serve your company greatly, financially.

What a defensive publication does is safeguards your right to continue doing what you are doing or at the very least opening yourself out to challenge patents. When you make a defensive publication, you essentially disallow someone else from filing a patent. Or giving you the arsenal you need to hold a patent invalid because you published first. With a defensive publication (made in the USA), you are given a one year grace period to file a patent based on such publication. 

A Quick Recap | Patents Vs Trade Secrets

To summarise, here is a tabular comparison of “Patents Vs Trade Secrets”.

FactorsPatentsTrade Secrets
Reverse EngineeringNot a factor that needs to be worried about since you make public disclosure with a patent, and are granted full rights.The easier it is to reverse engineer your invention, the riskier it is to protect it as a trade secret.
CostExpensive mechanism of protection. Involves attorney fee for drafting and filing and official fee for obtaining a patent.In theory, a trade secret is free. Practically, keeping it a well-guarded secret may cost your company a certain sum of money.
Life of the inventionIf your invention can stand the test of time and still be relevant after twenty years, this is not the right protection.The benefits of keeping a trade secret are directly proportionate to the life of your invention.
Funding and Marketing Better option to obtain funding as ideas become easier to explain to investors because of public disclosure. Difficulty in explaining the invention to an investor for fear of divulging a secret may prove to be a hurdle for funding.
First Mover AdvantageYou lose out on the advantage of being an initial significant occupant as disclosure through a patent application can help competition enter the same market space slightly quicker than otherwise. With choosing to protect your invention as a trade secret, you can extend this advantage to a slightly longer time as your competition will have no information on your invention in the public domain before its market entry. 

Conclusion

Choose wisely when deciding how you want to protect your ideas/inventions. Trade secrets are a great way forward and help you save your resources. Use these resources in patenting your best inventions. They don’t always have to cost a fortune. Here’s a guide to cost-effective patenting.

Like all things, life and business, IP protection is also all about balance. Trade secrets and patents can sometimes be used in a manner that is more complimentary than the contrary. IP strategy is personal to a Company and its journey. Hopefully, this shall make you choice easier: Patents Vs Trade Secrets.

Types of Intellectual Property & Related Costs – Triangle IP

Everything about you IP cost in US

A Quick Overview: Types of IP

Type of Intellectual Property (IP) protection needed for an invention depends on the nature of invention. Each of 4 main types of IPR – Patents, Trade Secrets, Copyrights & Trademarks has their own use cases. Patents are best suited for inventions that revolve around a product – process of manufacturing, its layout or appearance etc. If you wish to protect a recipe or a formula, keeping it as a trade secret shall be the best choice. Copyrights protection is well suited for artistic works like music. Trademarks are the best way to protect the visuals that represent a brand.

Each type of IPR protection costs different, this post shares great insights on costs related to each type of IP protection.

To Patent or Not To Patent: Inventor’s Choice

In August  2010, two MIT alums filed a patent for an application that helps multiple clients share and access files over a network. There are high chances that you’ve used this file-sharing app. You must have used “Dropbox”, Haven’t you? Today, it has more than 14 million users and is a billion-dollar enterprise.

Dropbox patent drawing - Intellectual Property related costs

Not every founder, inventor or developer is as generous as  Linus Torvalds, who gave his masterpiece (LINUX) to the world for free? 

If the founders (Drew Houston & Arash Ferdowsi) of Dropbox Inc. hadn’t protected their asset by patent, Dropbox might have even had 10 times its user base today, but they wouldn’t benefit from it. This is why individuals and organizations should safeguard their intellectual property. 

Most organizations are wary about the costs involved in protecting their intellectual assets.There is an assumption that it costs a bomb to get it secured. While there is no easy answer on how much it costs to safeguard your intellectual property, the safest answer is – “it depends on a lot of factors”. In this article, we will help you traverse the difficult terrain of intellectual property and your IP related costs. 

What Is Intellectual Property? 

The intangible creations of the human mind are called intellectual property. It refers to inventions such as literary work, artistic work, designs, symbols, names, product recipes, images, and so on. To ensure that others do not steal your intellectual property, you need to secure them.

There are four different types of intellectual property (IP) rights.  

  • Trademark
  • Patent
  • Copyright
  • Trade Secret

4 Types Of Intellectual Property : Patents, Trade Secrets, Trademarks, Copyrights

Trademark:

An American conglomerate filed a lawsuit against a Chinese company for using a brand name that was eerily similar to theirs. Even though the courts found that there were dissimilarities in products, since the latter was able to acquire clients and capture significant market share using the brand name, they had to pay up the American company. 

What Is A Trademark?

It protects brands. Under the law, a trademark is anything by which customers recognize a brand or the source of a product. A trademark offers legal protection for logo, design, symbol, phrase, wordmarks, or a combination of those that represents a source of goods or services. 

Example:

Trademark Example - Intellectual Property related costs
Credits: Legalwiz

Costs For Securing Trademark Rights in USA:

According to USPTO, the initial application fee for electronic filing for a trademark is $225 per class of goods/services. There are 45 classes of goods and services. 

  1. Your attorney will file a trademark application for you and the charges for it will be anywhere between $300 and $1000.
  2. Once the application is filed, it will be examined by a Trademark Examiner. 
  3. If the examiner issues an Office Action refusing the application, then the attorney’s fees to respond to that would be between $200 and $2000. 
  4. The application needs to be filed based on having used the mark already for sales or with an intent to do so in the future. A Statement of Use is filed if nothing has been sold using the mark. The government’s fee to file it is $100 for each class of goods. Attorney fees to prepare it is between $250 and $700. 
  5. After your application has matured to registration, you must fill the required maintenance documents. Between the 5th and 6th year of registration, Section 8 declaration has to be filed. 

i.) A Section 8 declaration is a signed statement saying that the trademark is in use in commerce and if not, then it should come with an excuse explaining the reasons. 

ii.) Between the 9th and 10th year after registration, a combined declaration of use/non-use and application for renewal under Sections 8 and 9 should be filed together. The fee for combined filing is $425 per class of goods or services. 

For a detailed account of the trademark fee, you can use this link here

How Long Does The Trademark Protection Last?

While the terms of trademark registration can differ, the duration is usually ten years. Also, the USPTO requires that between the fifth and sixth year after the date of registration, the trademark owner should file an affidavit stating that the mark is still being used commercially. If the affidavit is not filed, the registration is cancelled. The USPTO will not send any reminders requesting you to send the affidavit. 

Note: The trademark can be renewed indefinitely by paying additional fees. 

Patent:

One of the most famous patented inventions is the electric lightbulb. Another significant one is the telephone (Transmitter and Receiver for Electric-Telegraphs) which was patented by Alexander Graham Bell in 1876. Each of these made the patent owners significantly wealthy. 

What Is A Patent?

Patents protect the innovative ideas of processes. There are two types of patents:

  1. Utility patent – It protects a process, manufacture, composition of matter, and a useful machine. Example: Fully convertible high heel-to-flat shoe

Utility Patent: Convertible High Heel Shoe: Types of Intellectual Property

  1. Design patent – It protects the shape, appearance, pattern design, layout, and looks of a product. Example: Car or similar article by Warner Bros. (BatMobile)

Patent D311882 Bat Mobile - Intellectual Property related costs

Costs For Filing A Patent in USA:

For filing a patent, the costs vary not only based on the country, but also on the complexity of the invention. It could be $1000 if you plan to do most of the filing work or can be upwards of $40,000+ if your invention is complex. 

  1. The basic cost to file a patent application at the USPTO is $300. If you are an individual, and it is $75 and $150, if you are a small entity. 
  2. For professional attorney patent searches, it would cost anywhere between $800 and $3000. Find the best tips to hire a patent attorney here.
  3. Expect to pay anywhere between $3000 and $5000 on average plus the USPTO fees to an attorney to prepare a new patent application. 
  4. The costs for the patent depends on the type of patent you apply for. 
  1. Provisional Patent: $1500 – $3500
  2. Utility Patent: $5000 – $15000
  3. Design Patent: $2000 – $3500
  4. Plant Patent: $4500 – $8000
  5. International Patent- $100000+

Here is the USPTO link where you can find more information about the fees for filing a patent. 

If you want a cheaper route, then you can do all of this by yourself, but you need to be meticulous in terms of recording everything about your invention. You might have to spend hours filing everything correctly. 

Choosing Inventions For Patenting

While every innovation of your invention deserves a patent, it might not be feasible to patent everything as the prices are a bit steep. Not everyone has huge budgets so corporations may have to pick and choose on what to patent (according to the strategy that they might have). You need to evaluate your ideas before you decide. The company should take the call on which part of your invention to pursue for patenting. The most important part in this process is to keep a track of all ideas so that nothing is missed. You can use a simple spreadsheet but that tends to get corrupted with time along with having security issues. TriangleIP provides a free tool which helps you in maintaining and tracking your ideas. It provides you with 4 different workflow stages till the filing process – through which you can navigate and track your ideas. 

Maintenance Costs:

Patent maintenance fee is paid to the USPTO to keep up a granted patent and is sometimes applicable for pending patent applications. Note: Design and Plant patents do not require maintenance fees. Maintenance fees are to be paid at the fourth, eighth and twelfth year anniversary from the time the patent is granted. To calculate the maintenance fees for your patents, you can use this link from the USPTO website

Maintenance Fees of patents - Intellectual Property related costs

How Long Does Patent Protection Last?

A utility patent is granted for 20 years from the date the patent application is filed. A design patent is protected for 14 years from the date the patent is granted. To enforce the protection of the patent, there are fees involved. 

Copyright:

Vanilla Ice’s song Ice Ice Baby used parts of music from the song Under Pressure by David Bowie and Queen.

When they faced a lawsuit, Vanilla Ice confessed to sampling the work, and the case was settled out of court for an undeclared sum of money and crediting Bowie/Queen for the track. 

What is Copyright?

It protects the original work of authorship. It helps the copyright owner to control reproduction, performance, adaptations, and distribution of the work. Examples of such works are- literature, drawings, paintings, songs, music, computer software, films, photos, web content, etc. 

Copyright is generally attached to the work when the original work is available in a fixed medium. It means that the work has been written down on a piece of paper, saved in a storage device, or in some tangible format. 

Costs for copyright protection in USA:

Filing a copyright application involves a lot of forms and each of them has different fees. Here is a breakdown of the costs involved to copyright your work.

  1. The copyright registration fees for one work by one author costs about $45 if you are filing online. The fee is $125 for paper filing. 
  2. For all the other filings, it will put you back by $65. 
  3. There are special fees for registering an application claim in a group or obtaining additional certificates of registration. 
  4. The USPTO does special services that have a different fee format too. 

How Long Does A Copyright Last?

The terms of a copyright for a work depends on a variety of factors, including whether it has been published and if yes, then the date of publication. 

  1. Copyright protection lasts for the author’s entire life plus an additional 70 years, for works created after January 1, 1978. 
  2. For anonymous works, or a work made for hire or a pseudonymous work, the copyright is for a period of 95 years from the year of its first publication or 120 years, whichever expires first. 
  3. For works published after 1923, but before 1978 are protected for 95 years from the date of its publication. 
  4. If the work was created but not published before 1978, then the copyright lasts for the life of the author plus 70 years. 

Renewal:

For works that are created after January 1, 1978, the copyright is not subject to renewal registration. 

Trade Secret:

In 1953, inventors at Rocket Chemical company came up with a formula at the 40th attempt and called it WD-40 – “Water Displacement, 40th Formula”. The company never patented it because trade secret seemed like a better protection and wisely so. And the company managed to keep it a secret for 50+ years. By the fiscal year 2017, gross revenue for the company, including sales of the familiar WD-40 Multi-Use as well as other products, totaled $381 million in annual revenue. It was only in 2009, that “Wired” with advanced processes like gas chromatography and mass spectroscopy managed to find out what’s inside WD-40.

WD 40- Tradesecret - Intellectual Property related costs
Credits: Wikipedia

What is a Trade Secret?

A trade secret is any valuable information that is not publicly known and of which the owner has taken reasonable steps to maintain secrecy. It could be ingredients used in their dishes, business methods, customer data, ideas related to your business, marketing strategy, experimental technology, etc. 

Costs To Guard Trade Secrets in USA:

Since you don’t have to register with a government body for qualifying your product/business as a trade secret, there are no costs associated with it. Guarding the secret requires security measures, and these might accrue some costs.

As trade secrets costs feel nominal compared to patenting expenses, you might get tempted to opt for trade secrets. This may or may not be a good idea. Thomas Franklin, the founder of Triangle IP has shared great insights in the following video to choose between patents and trade secrets.

How Long Does Trade Secret Protection Last?

Indefinite protection to the trade secret as long as the secret is commercially viable. It will continue as long as the secret is not available to the public. Also, unlike patents or copyrights, trade secrets are protected without registration. 

How To Protect Your Intellectual Property?

We have discussed the major four types of intellectual property and how they can safeguard your business from infringers. It is the onus of the business to protect its assets. Losing one of your assets can result in significant damages to your business. Getting the right advice from professionals will make it easy for you to protect the interests of your business.

For starters, you could write down a list of ideas, discuss them with your lawyer and decide which are the ones that are worth going after. TriangleIP helps companies with a free tool using which ideas can be managed till the filing process.

Conclusion:

In summary, below is the list of the 4 forms of intellectual property related costs discussed in this article:

IP FormProtects Life (in yrs) Prosecution & filing costsMaintenance Cost
TrademarkInfringement/Damage of reputation by another company10 (can be renewed indefinitely)$225-$400 per class of goods/services depending on the type of application $425 per class of goods/services
PatentIt protects the commercial use of the invention without the consent of the patent owner20$75-$300 based on the size of your company$1,600 for large entity | $800 for small businesses | $400 for micro businesses
CopyrightIt protects the original work of an author70-120 yrsStarts at $45 for e-filingNo maintenance fees
Trade SecretIt protects information that is crucial to a business, using which the entity has a strong competitive advantageLasts as long as the trade secret is viable commerciallyThere is no need to register with a government body to guard your trade secretNo maintenance fees

A report from the Commission on the Theft of American Intellectual Property pegs the loss from IP theft between $225 billion and $600 billion annually. If you fail to protect your intellectual property because of the costs involved, you might end up losing a major chunk of revenue as competitors might copy it. You will lose your competitive advantage too when others claim to provide the same features that you do. 

It is normal to feel overwhelmed with the rigmarole of the lengthy procedures involved in filing applications for each intellectual property, which is exactly why you should delegate it to the experts, depending on the situation.

5 Strategies To Reduce Patent Expenditure

5-Strategies-to-Reduce-Patent-Expenditure

“Reduce Patent Expenditure”: Have we read your mind?

The on-going pandemic has drastically affected the availability of resources for discretionary expenses such as patents. It is of no surprise that many companies are proactively looking to conserve cash by pruning their patent portfolio.

So, what are some of the strategies that companies can opt to reduce their patent expenditure?

The following points aim to highlight the plausible ways:

Trade Secret

Patents are intangible assets, and so are trade secrets that enjoy legal protection from misappropriation.

The caveat here is that if a trade secret holder fails to maintain secrecy or:

  • if the information is independently discovered,
  • becomes released, or
  • becomes known in the general course of business,

then the protection of a trade secret is lost.

Nevertheless, here is how the Courts can enforce trade secrets in misappropriation cases:

1. By ordering maintenance of secrecy.

2. Payment of royalty to the owner.

Watch Webinar: How to manage your prosecution in the Covid environment?

Webinar: 5 Strategies To Reduce Patent Expenditure In The COVID World

Defensive Publication

Patents are expensive, defensive publication is a good alternative. You can curtail or defer expenses relating to patents by using the defensive publication to your advantage.

The defensive publication refers to the publishing of a technical disclosure of your idea in the public domain. This disclosure prevents competitors from obtaining a patent.

The reason behind the popularity of defensive publication is its cost-effective nature over patents.

Provisional Patents

Unlike a utility patent, a provisional patent is not reviewed by the USPTO.

A provisional patent acts as a reservation for the invention until an investor is willing to file a utility patent. However, the follow-up utility patent application needs to be filed within a year.

Thus, filing a provisional patent allows a company to defer patent expenses for a period of less than a year. In this period you can continue to conduct more research into the market viability of the patent. You can also use this time to refine the patent product/process itself. 

Also Read: Everything You Should Know About USPTO Patent Center

Curtail Overseas Spends

Patents are an expensive proposition, more so in foreign countries where patent applications stretch out over a year or sometimes more.

Furthermore, the patent protection regime in such countries may not be conducive to patent filing as enforceability is often lax.

Therefore, companies should reconsider their non-strategic patent spends and weed out jurisdictions after undertaking a cost-benefit analysis of obtaining a patent in that particular country.

Continuations

A continuation patent application is an extension of the existing patent application. The continuation patent application increases the scope of patent protection from multiple perspectives.

However, continuations are expensive to file. Since they are “designed” around an existing patent, it only serves to enhance coverage of an existing patent.

To conserve cash, companies can either forego filing continuations or defer them.

Other Strategies

Here are a few more high-level strategies that will ensure the optimization of patent spends for companies:

Ask Questions

Companies or clients should regularly question their patent attorney to gauge the timeframe as to:

  • when a patent will be issued,
  • what are the chances of getting a patent,
  • how best to curtail patent spend, etc.

By asking questions at every step along the patent application process, the viability of a patent can be determined. Whether it makes monetary sense to pursue the issuance of a patent or abandon it altogether.

Align Corporate Strategy

Often, patents are pursued with the sole intention of ensuring the protection of an invention rather than a monetizable invention.

Hence, in the prevailing scenario of depleting cash reserves, it is prudent to pursue patent applications of those inventions which:

  • align with the overall corporate strategy
  • or are expected to provide for economic benefits.

License to Litigate

Patents are a means to litigate. They provide for the legal protection of your inventions. In cases of infringement, the Court can award damages, court costs, and reasonable attorneys’ fees. Hence, it is a wise notion to pursue a strategy only for patents that are litigate-able.

Let’s Sum It Up

The COVID pandemic has thrown corporate strategies as well as financial forecasts for a toss. It is the all-hands-on-deck mode to conserve cash. It is widely acknowledged that patents, albeit extremely critical to the success of a company, incur exponential costs.

Companies can rationalize their patent expenditure over the short-term and medium-term by aligning it with the overall business objectives. Companies can also opt for ways to postpone filing a patent application.

Hope the insights presented in the post shall help you reduce patent expenditure.

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.