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Why Outsourcing to Trademark Search Companies is Recommended for Businesses

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Why Outsourcing to Trademark Search Companies is Recommended for Businesses

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Before beginning the process of filing a trademark application, a trademark search is an essential step. While some companies may choose to conduct their own trademark searches in an effort to save money, hiring a third-party expert is highly advised. This is due to the serious consequences of erroneous trademark research, which include application rejection and legal action for infringement.
To get more information, read the entire article about Trademark Search Companies.

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Trademark search is a critical step before initiating trademark application filing process. While some businesses may decide to perform trademark search themselves to reduce costs, it is highly recommened to avail the services of a third-party expert. This is because inaccurate trademark searching can have serious repercussions, such as application rejection and infringement lawsuit.

A novel way to tackle this challenge is to leverage the services of skillful trademark search companies adept in trademark searches to fetch relevant results promptly and at a reasonable cost. This approach can significantly reduce the risk of trademark legal issues at a later stage.

This article lists the perils of not conducting a trademark search and emphasizes on the need to engage experts. It also narrates the difference in conducting trademark search in-house or through an expert service provider to make an informed decision.

Risks of Not Conducting a Trademark Search

All businesses must perform a comprehensive trademark search before launching products and services in the market. Failure to conduct the search at the right time invites several risks which are listed below.

1. Rejection of your Trademark Application: Trademark search helps identify already registered competing marks before launching any product or brand in the market. Failure to conduct a thorough trademark search could mean missing a similar pre-existing registered trademark. This could spell trouble for your company or client, and result in the rejection of the trademark application.

2. Loss of Time and Money: Filing for trademark registration consumes a lot of time and money. Imagine receiving a legal notice stating that the mark you are using infringes the third party's brand name. Whatever resources you and your team have spent on filing the application for the mark would go in vain. This will not only waste time, but infringement lawsuit expenses and the damages arising out of it will only add burden on the company's finances.

3. Infringement of your Registered Mark: While only a few businesses realize this, a trademark search is also necessary after registering your mark. Failure to search or monitor your existing trademark invites possible infringement by third parties. Rampant use of potentially infringing competing marks in the market can diminish your brand's exclusivity and also significantly affect your brand's success. Thus, trademark owners must always keep an eye on newly filed marks to check for any similarity with their registered marks/names.

4. Potential Revocation of an Existing Mark: In case a trademark search was not conducted or improperly carried out before registration, the registered mark may be susceptible to revocation. Discovery of a pre-existing trademark at a later stage can easily revoke your trademark. The risks of a delayed or improperly conducted trademark search can arise at any stage during the lifetime of a trademark. This type of search must be performed at the earliest.

5. Trademark Infringement Lawsuit: Use of brand names and marks without trademark search invites infringement lawsuits from third parties owning identical or similar marks. Such litigations often put a big dent in a company's financial and other resources. Trademark search is a simple process to avoid such setbacks for the business. It scours online and offline spaces for any marks that could raise issues at a later stage.

The different options for conducting a trademark search are broken down into two definitive ways - in-house and external searching. We compare the two in the next section.

In-House Vs. External Trademark Search

Conducting trademark search through in-house teams may appear cheaper than hiring external trademark search companies. However, this initial money saving may prove far costlier further down the line. The below table highlights the differences between the two options.

Regardless of whether you use internal resources or an external company, it is recommended to perform trademark searches regularly and promptly. Now let us explain how Sagacious IP has been helping companies from all over the world with their trademark search needs.

Why Choose Sagacious IP for Trademark Search?

Sagacious IP is a leading, award-winning intellectual property research and consulting company that has been helping stakeholders in the IP ecosystem through innovative solutions and services since 2008. We have served over 1,200 clients from over 45 countries with more than 12,500 projects in over 16 languages. The following are the main reasons that set Sagacious IP apart from other trademark search companies:

1. Leading Trademark Search Service Provider

Product-driven companies across the spectrum rely on trademark searches before launching products and services in new markets. And Sagacious IP has been helping such companies and numerous more to avoid any IP-related obstacles in entering new markets. We have been successfully delivering trademark search solutions globally since 2014, serving more than 200 clients in a year. Our trademark search solutions are designed to provide all the useful insights that clients need before filing a trademark application.

2. Cost Saving and Prompt Project Delivery

Sagacious IP's trademark search service enables businesses to save time and cost while filing trademarks by allowing them to side-step any form of infringement or rejection. Our clients rely on us for trademark searches and use the time to expand their businesses. We provide all required information within the set timeline so that they can make an informed decision for filing a trademark application.

3. Team Size and Experience of Trademark Experts

Our client-focused IP professionals provide relevant search results in the trademark search report for clients to make the most optimal decision. Sagacious IP has a team of experts boasting more than 35 years of combined experience in global and country-specific trademark searches. We provide trademark search solutions for small businesses, entrepreneurs, startups, Fortune 500s, etc.

4. Tools for Trademark Search

Tools are quite critical in performing trademark searches. Sagacious IP uses national and paid databases to perform these searches as per client needs. Moreover, we have also built proprietary tools, such as Trademark Dashboard, to offer seamless services to our clients.

5. Proprietary Tools

We have designed the "Trademark Dashboard" keeping our clients' requirements in mind. This centralized portal allows our customers to search and find their projects by name, so they do not need to locate reports on email. Another interesting feature in the dashboard facilitates reviewing the search results. Trademark Dashboard also has numerous other features, such as filtering by owner name and class, and generating the report in PDF and MS Excel formats. Feel free to contact us for a demo.

6. Experience with National PTO Databases

IP offices maintain national IP databases that contain information on all the trademarks registered within their jurisdictions. We have experience in database searching that is maintained by the following IP offices:

7. Access to Paid Databases

Sagacious IP also utilizes paid databases that provide a wide range of additional services as compared to national databases. However, they use algorithms to fetch relevant results, and can be quite complex. Therefore, they require the expertise of a professional trademark searcher. Since commercial databases can be quite expensive, not everyone can afford them. Sagacious IP has subscriptions to several such databases to help provide cost-effective trademark search solutions. We use the below-mentioned paid databases to offer trademark search services to our clients:

1. Markify

2. CorSearch - On Client's Request

3. Orbit Trademark - On Client's Request

8. Effective Pricing for Bulk Orders

Competitive pricing also sets Sagacious IP apart from other trademark search companies in the world. Outsourcing your searches to us is an optimal alternative to conducting these searches yourself, saving time and money.

Conclusion

Even though a huge number of businesses perform the task internally, it is a good idea to hire knowledgeable trademark search companies. The benefits of outsourcing trademark search go far beyond monetary savings, when done correctly. You get the most outstanding results while enjoying more time to concentrate on other crucial matters.

Sagacious IP is committed to delivering the most suitable solutions through its team of client-focused IP experts. We also offer effective pricing for bulk search orders. By using cutting-edge tools, we offer trademark search services to different participants in the innovation ecosystem, including startups, Fortune 500s, and facilitators. To learn more about our experience, please visit our trademark search service page.

- Gopal Singh Rawat (Trademark) and the Editorial Team

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Why Outsourcing to Trademark Search Companies is Recommended for Businesses

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Trademark search is a critical step before initiating trademark application filing process. While some businesses may decide to perform trademark search themselves to reduce costs, it is highly recommened to avail the services of a third-party expert. This is because inaccurate trademark searching can have serious repercussions, such as application rejection and infringement lawsuit.

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Overcoming Abstract Idea Rejection with Targeted Patent Application Drafting

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Overcoming Abstract Idea Rejection with Targeted Patent Application Drafting

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Frequently, claims are rejected by the United States Patent and Trademark Office (USPTO) as being abstract notions. This poses a serious problem for applicants that spend money on R&D initiatives to protect their innovations. Targeted patent application drafting is the most effective technique to tackle this issue. It gives patent drafters the ability to predict the art unit (AU) that will review the application in order to optimise the scope of claims for a smooth approval or grant rate.

To get more information, read the entire article about Patent Application Drafting.

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Overcoming Abstract Idea Rejection with Targeted Patent Application Drafting

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Targeted patent application drafting is essential to avoid abstract idea rejection and land patent applications in art units with high grant

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Leveraging Global Trademark Search for Usage & Protection of Marks

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Leveraging Global Trademark Search for Usage & Protection of Marks

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A distinctive brand's market launch requires a lot of resources. Therefore, companies need to make sure that the name, mark, or logo they choose can be used anywhere. Global trademark search is relevant in this situation. It assesses whether your mark is available for use to introduce infringement-free goods and services in global marketplaces, which is a crucial service in the trademark sector. Businesses must exercise due diligence and properly explore foreign databases before submitting trademark applications in order to successfully register a trademark globally.

To get more information, read the entire article about global trademark search.

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Launching a unique brand in the market is a resource intensive task. Thus, businesses must ensure that the name, mark, or logo they have chosen is available for use globally. This is where global trademark search finds relevance. As an essential service in the trademark industry, it determines whether your mark is available for use to launch infringement-free products and services in international markets. Before filing trademark applications, businesses must conduct due diligence and search international databases thoroughly to safely register a trademark globally.

Since a global trademark search is a necessary step before trademark filing, it is advisable to hire a reliable third-party IP service provider. These experts can ensure that your mark or name does not infringe on any existing trademark. Read on to understand why hiring an external vendor is the best option for most businesses.

Overview of Global Trademark Search

This search aids in avoiding the unauthorized use of trademarks belonging to third parties. Thus, it is a vital step to steer clear of future litigations. It helps trademark holders determine the probability of using a mark or name to protect their products and services. Global trademark search is also one of the most crucial and effective methods for any business to identify if others are using its brand name, logo, or slogan.

Registering with a global trademark system, such as the Madrid System, is critical as it protects trademark owners by preventing others from utilizing their brand name. Trademark registration with a global system applies to all countries that have signed the international agreement to protect intellectual property rights (IPRs). The primary goal of such systems is to preserve trademark owners' rights by allowing them to retain their marks in multiple jurisdictions and prohibit others from benefitting from them without permission. Trademarks with global registration are also known as "International" trademarks since they can be used anywhere in the world.

Significance of Global Trademark Search

A global trademark search is essential for identifying confusingly similar marks. It also acts as the foundation for making all critical decisions regarding trademark filing and legal action against infringers. The following are the major benefits of conducting a global trademark search.

A. Helps in identifying confusingly similar marks

A comprehensive global trademark search helps in discovering confusingly similar marks. This similarity could stem from the mark's phonetic appearance or the relatedness of the classes of goods and services. One can locate confusingly identical marks and commence infringing actions against them by conducting a thorough global trademark search.

B. Assists with trademark registration with multiple national PTOs

One can also identify the regions where the mark has not yet been registered and the rights can be safeguarded. With this information, the applicant can start the appropriate filing process in such jurisdictions.

C. Protects against infringement lawsuits

A thorough global trademark search can help the applicant determine if an existing registered trademark is infringed upon. Furthermore, if a company intends to introduce a new product or service to the market and discovers possible infringement, it can quickly update/alter the mark, to save time and money from multiple infringement litigations.

D. Saves time & money on unregistrable marks

This search can help determine the likelihood of successful registration of a mark, thereby allowing applicants to abandon infringing marks and names early on and pursue the filing of registrable names and marks only.

Five Key Reasons for Conducting Global Trademark Search via External Vendors

The process of conducting a global trademark search is costly and perilous if not done right. For instance, a minor mistake in the search could lead to an office action or even the rejection of an application. We cover below the major reasons why businesses should opt for a third-party vendor rather than performing global trademark search in-house.

1. Highly trained and skilled experts: Reliable IP research and consultation companies bring to the table years of experience in performing trademark search in multiple jurisdictions. These qualified and experienced professionals may conduct examinations through various portals, including Markify, TM TKO, TM View, Global Brand Database, several national PTOs, and others.

2. Advanced AI-based tools: IP experts use different tools for performing a global trademark search. Several vendors use Global Brand Database and other strong databases for this purpose. Aside from this, IP experts also cross-check the data on numerous national and international patent and trademark offices (PTOs), including the USPTO, WIPO, and others. AI-based searching is one of the most critical searches these days. Most IP experts use AI-based searching to find contradictory marks that might be overlooked due to human error. With the help of AI-based tools,these third-party vendors can draft comprehensive search reports for their clients to support decision-making related to trademark filing and prosecution.

3. Customized reports: IP service providers draft global trademark search reports in accordance with the needs of their clients. These reports are customizable and can easily be modified or altered to match the client's needs. For instance, if a particular client requests a global trademark search report for a specific region, the report can be made for those countries of interest. And if a client seeks a global trademark search report for a certain competitor, then the same can be done as well.

4. Protection against unfair practices: IP experts can help identify unfair trade practices or piracy by preparing comprehensive search reports and discovering similar as well as exact names on Google, Yahoo, and various other search engines and social media platforms. Once unfair trade practices or piracy is spotted, warning letters can be issued under 'infringement of competition law'.

5. Additional services (filing, maintenance & responding to office actions, etc.): Besides the afore-mentioned services, trademark experts also offer administrative services, such as trademark filings in the target regions of the client, and filing renewals of existing trademarks. Moreover, third-party vendors can also help companies in drafting a response to office actions by national PTOs, and monitor trademarks.

Global trademark registration is a daunting task as a single mistake can lead to legal and other challenges. An IP expert partner for global trademark search can play an important role in optimizing patent protection and avoiding infringement lawsuits. Sagacious IP is a renowned name in the IP space, offering a range of trademark-related services.

Why Choose Sagacious IP for Global Trademark Search

Sagacious IP offers a range of trademark services that help businesses register and defend their marks. Our highly experienced and adept team of trademark experts provide unparalleled service to our clientele. We do not just believe in offering high-quality services, but also develop a relationship with our clients. Here's what sets us apart from other global trademark search service providers:

One of the leading and most renowned IP experts in the market.

Affordable pricing for global trademark search reports.

Team of experienced IP professionals with a strong knowledge of various paid databases and national PTOs, with a combined experience of more than 30 years.

AI-based search reports available at competitive prices.

Manually drafted search reports with two free iterations, and knockout searches.

Timely delivery of projects to ensure smooth business functioning.

Capacity to deliver search reports on an expedited basis.

Diverse range of clients and more than 200 active customers availing trademark search and watch services.

Commitment to solving the IP challenges for all players in the innovation ecosystem, from small startups to Fortune 500 companies.

Customizable and flexible reports based on specifications shared by clients, such as owner searches, regional searches that are restricted to a particular place, global searches, etc.

Conclusion

Global trademark search wards off chances of trademark infringement and is a key step before launching goods and services in foreign marketplaces. While various companies run their searches utilizing in-house resources or through common search tools, it is wise to leverage the services of a reputed third-party vendor. These service providers have advanced searching mechanisms and years of experience offering global trademark search servicein the field. It can lower the likelihood of an office action by the patent office examiner.

Sagacious IP's reliable and comprehensive trademark search service provides you information required before trademark filing. Our team of expert trademark analysts offers quick and affordable trademark search solutions to help businesses avoid issues regarding infringement and rejection. To learn more, click the link above.

- Inderpal Singh Chowdhari (Trademark) and the Editorial Team

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Leveraging Global Trademark Search for Usage & Protection of Marks

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Launching a unique brand in the market is a resource intensive task. Thus, businesses must ensure that the name, mark, or logo they have chosen is available for use globally. This is where global trademark search finds relevance.

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Are you Ready for EU’s New Unitary Patent System?

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Are you Ready for EU’s New Unitary Patent System?

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A new era of innovation management is about to begin in the European Union (EU) market. The much-anticipated implementation of the unitary patent and unified patent court, scheduled to take place in early 2023, is anticipated to improve the development and trade of products and services that depend heavily on intellectual property and scale up European small and medium-sized businesses (SMEs).

To get more information, read the entire article about Unitary Patent.

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The European Union (EU) market is set to enter a new age of innovation management. The long-awaited introduction of the unitary patent & unified patent court, scheduled to come into effect in early 2023, is expected to enhance the development and trade of IP-intensive goods and services and scale up European small and medium-sized enterprises (SMEs).

With the intent to improve and strengthen the centralized European patent granting system, the unitary patent will set the foundation of providing innovators with cost-effective patent protection and dispute settlement process across Europe. Although the unitary wheels are set in motion, businesses are still struggling to adjust to the new norm and unclear about the compliances involved during the patent application process.

This article delves into unitary patents in great detail. We discuss the importance, registration process, benefits, application process and the role Sagacious IP plays in helping clients secure their IP under the new patent regime.

Understanding Unitary Patent

Also known as a European Patent With Unitary Effect (EPUE), a unitary patent is a single intellectual property right that may be used in at least 17, and possibly as many as 24 of the 27 EU member states. Non-EU nations will not participate in the UPC, and their laws regulating the application and enforcement of patents will remain the same.

A unitary patent will provide standardized protection in all participating EU member states. Thus, a single infringement lawsuit will enforce the patent throughout the European Union, and a single annual renewal fee will keep the patent valid in all participating states. However, third parties can have an invalid unitary patent revoked in each of the participating EU member states through a single revocation action.

Even though unitary patents will eventually apply to most EU member states, few countries are yet to ratify the Unified Patent Court Agreement (UPCA), which will come into force alongside UPs. Therefore, these countries will not be covered by the first set of unitary patents. Furthermore, Spain, Poland, and Croatia are three EU nations that have not yet ratified the entire UP package. Hence, it can take some time for the legislation to be approved in all participating nations.

Why Opt for a Unitary Patent

There are various reasons for businesses to submit a unitary patent application in Europe:

The unitary patents' primary goal is to support the centralized pre-grant procedure with a centralized post-grant procedure in which the EPO serves as a single point of contact for obtaining, maintaining, and managing all patents. A unitary patent will provide extensive and consistent territorial protection for a reasonable renewal fee, thereby offering better value for money and lower complexity for businesses.

Under the current system, businesses must file lawsuits concurrently in every nation where their European patent is recognized. Such multi-forum litigation is costly and difficult, and may result in legal ambiguity. The Unified Patent Court, a court shared by the participating member states, centralizes litigation for both unitary patents and traditional European patents. This further promotes the growth of consistent jurisprudence and boosts legal certainty, reducing fragmentation.

A unitary patent give innovators uniform and extensive territorial protection in the participating member states. Thus, the same restrictions, scope of rights, and remedies are available across the UP's jurisdiction.

Patent owners can obtain a unitary patent by submitting a single request to the EPO rather than validating their European patent in numerous different states, which can be an expensive, time-consuming, and difficult administrative process. The procedure for acquiring unitary patents is fairly easy to understand and completely free of charge.

A unitary patent greatly reduces the expenses associated with acquiring patent protection throughout the participating member states and simplifies the European patent system. It eliminates the need to adhere to the unique requirements of different member states and the necessary costs for the same. These costs typically comprise publication fees paid to various national patent offices, translation costs, and any fees charged by local attorneys. In contrast, a unitary patent does not require the hiring of numerous local attorneys, agents, or specialized service providers.

The renewal fee is extremely competitive and business-friendly since it is equal to the sum of the renewal fees in the member states where traditional European patents were most frequently validated at the time of fee-level adoption. Thus, the patent protection will allegedly cost less than EUR 5000 for the first ten years, which is the typical lifespan of a patent. Additionally, patent owners who submit a statement on a licensing of rights to the EPO can get a 15% discount on the renewal costs.

Small and medium-sized enterprises (SMEs) and other small organizations that often have limited resources available can obtain uniform and comprehensive protection for their ideas through unitary patents in a simpler and more affordable manner. Additionally, the compensation plan, which provides SMEs, non-profit organizations, natural persons, universities, and public research institutions with a lump sum payment of EUR 500, reduces translation expenses for these organizations.

Transfers, licenses, and other rights do not need to be registered individually in each country's national patent registry in order to maintain a unitary patent. Rather, one entry made in the register for unitary patent protection centrally managed by the EPO will suffice. The same holds true for claims made regarding licenses of rights. A single legal framework, including in regards to the types of documents and evidence needed, significantly decreases administrative complexity. It also lowers related expenses, such as administrative charges and the cost of employing numerous local agents.

Jurisdictions Covered by the Unitary Patents

Most EU members have agreed to implement the latest patent system with a few exceptions. The United Kingdom has left the EU and announced that it no longer wishes to adopt unitary patents. Moreover, while Spain has refused participation, Poland has not yet signed the necessary laws. Since the time to ratify legislation varies for countries, the jurisdiction of a unitary patent is likely to evolve over time. It is noteworthy that the same patent cannot be granted unitary protection and also be validated in individual participating EU member states.

Furthermore, a unitary patent will not apply to Switzerland or Norway, which are covered by the European Patent Convention (EPC) but do not belong to the EU. However, applicants will be able to get a unitary patent and validate it in non-EU and non-participating nations. As per the developments so far, the first UPs that are expected to roll out in early 2023 will cover Austria, Belgium, Bulgaria, Denmark, Germany, Estonia, Finland, France, Italy, Latvia, Lithuania, Luxembourg, Malta, Netherlands, Portugal, Slovenia, and Sweden.

Unitary Patent Application Process

The European Patent Office (EPO) will be in charge of unitary patent examination and grant under the European Patent Convention (EPC), and the application and examination procedure for European patents will remain the same. Therefore, the application and examination of both European patents and unitary patents will follow the standard examination procedures.

Upon the approval of a European patent by the EPO, the applicant has one month to submit a request for unitary effect. The unitary patents provide patent protection with the same effect in all participating countries under enhanced cooperation. It is pertinent for European patents to have the same set of patent claims in all participating EU member states to register as a UP.

The unitary effect request for an English-language European patent must also be accompanied by a translation of the specification into another official EU language. For instance, an English translation must be submitted if the original application is in French or German. Applicants should therefore consider whether the unitary effect is of interest at the grant/pre-grant stage to allow time for translation and a request to be completed in due time.

Applicants who do not have a residence or principal place of business in any participating state can voluntarily specify "a place of business on the date of filing." Moreover, German law will be applied to the treatment of the unitary patent as an object of property.

Requirements for Unitary Patents

The following criteria is essential for any intellectual asset to gain unitary effect in Europe:

The European patent must have been awarded the same set of claims in each of the 24 participating EU member states. Thus, it is crucial to avoid removing the designation of any of the 24 participating member states' names during the examination.

The request for unitary effect must be made within one month of the European patent's grant. No official fee will be charged for the submission or assessment for unitary effect.

The request for unitary effect during the 6-year extendable transition phase must contain a translation of the specification into another EU official language. Moreover, this translation should not be prepared via automated means.

Unitary Patent Cost

The possibility to receive patent protection across several nations without the need to validate a European patent in each nation separately, with the related expenses and translation requirements for each country, is one of the biggest advantages of UPs. This will result in significant cost savings for applicants who consistently validate their patents in numerous European states. Furthermore, a single annual fee will be necessary for the renewal of the unitary patents, as opposed to the current requirement of renewal fee payment in each country where a European patent is to be renewed.

The renewal fee is set in accordance with the June 2015 agreement. It states that the UP renewal fee would be close to the total of the total fees payable for renewal in four countries where a European patent is most frequently renewed. These nations include Germany, France, the United Kingdom, and the Netherlands. Moreover, despite an initial proposal, small entities or SMEs will not receive any discounts on renewal expenses.

Whether this fee level will be sufficiently low to encourage widespread use of the system by applicants who validate in only a few countries or whether it will primarily benefit a minority of applicants who have already validated in many countries remains unanswered. According to the EPO, the adoption of a unitary patent system for small entities will be monitored, and additional measures to support their use may be put in place, if necessary.

Why Choose Sagacious IP for Unitary Patents

Sagacious IP is one of the most renowned and largest IP service providers in the world. We have successfully delivered more than 25000 projects in over 16 languages for clients from 100+ countries. Our 300+ patent experts have years of experience in offering patent and trademark-related services. To help clients secure their IP under the new patent regime, Sagacious IP will offer the following services in accordance with the unitary patent coverage:

UP/UPC Patent Registry Monitoring for Competitors (Competitive Intelligence) - It involves regularly watching the opt-in/out status of the patent portfolios of interest or those filed by competitors. It will help clients understand the strategy for various jurisdictions and provide insights on technology spread across markets.

Guiding Clients on UPC opt-out/opt-in option for European Patents - In accordance with their portfolio, we will advise our clients on the opt-out/opt-in strategy and help them understand the process of opting-out/opting-in once UP comes into place. Further, Sagacious IP will support clients in docketing, especially concerning changed timelines, translations, and costs.

Divisional Application Filing - We understand that some clients might prefer to maintain their patents under the old regime. With our extensive experience in invention harvesting, patent application drafting, and filing, we will assist our clients with inventions that could be considered for opt-in as divisional applications.

Conclusion

Reasonable renewal cost is an essential element to ensure that the unitary patents appeal to businesses, particularly start-ups. Additionally, it will lessen the gap between the price of patent protection in Europe and that of the US, Japan, and other nations. Making the choice of whether to pursue a unitary effect for their patents or stick with the current system is one of the most important decisions for businesses. Choosing whether or not to submit opt-out requests is another crucial task. Sagacious IP can assist your business in getting ready for the upcoming patent regime. To learn more about our expertise, visit our Unitary Patent and Unified Patent Court services page.

- The Editorial Team

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Are you Ready for EU's New Unitary Patent System?

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The European Union (EU) market is set to enter a new age of innovation management. The long-awaited introduction of the unitary patent & unified patent court, scheduled to come into effect in early 2023, is expected to enhance the development and trade of IP-intensive goods and services and scale up European small and medium-sized enterprises (SMEs).

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5 Key Factors to Consider before Finalizing a Patent Drawing Service Provider

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5 Key Factors to Consider before Finalizing a Patent Drawing Service Provider

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The development of patent drawings is one of the many jobs involved in preparing a patent application. In order to reduce the likelihood of an examiner's office action or rejection, the process is not only time-consuming but also very accurate. Furthermore, only a small percentage of patent applicants, whether they are corporate entities or individual inventors, have the knowledge or background necessary to create proper patent drawings. As a result, it is recommended to use someone with experience in the industry whose services include patent drawing. Choosing the best third-party patent drafting service provider, nevertheless, might be difficult.

To get more information, read the entire article about Patent Drawing Services.

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How Patent Monitoring Service Can Safeguard Against Competition

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How Patent Monitoring Service Can Safeguard Against Competition

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Information is a powerful tool in the modern knowledge economy. Businesses must stay current with technology advancements if they don't want to run the danger of falling behind the competition. The most important pieces of information to keep an eye out for are the most recent advancements in an area, such as recent patent filings, budding innovators, etc. But with the recent surge in patent applications, it can be difficult for businesses to keep up with all that is happening. Patent monitoring is seen as a practical way to deliver a steady supply of data at different degrees of innovation. This can support companies in adjusting to market changes and managing business risks swiftly and effectively.

To get more information, read the entire article on Patent Monitoring.

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In today's knowledge economy, information is power. Businesses must keep abreast with the latest developments in their technological area or invite possible risk of losing out to the competition. Awareness of the latest innovations in a field, such as recent patent filings, emerging innovators, etc. are all crucial aspects of information to watch out. However, with the staggering number of patent filings lately, keeping a track of all developments is often challenging for businesses. Patent monitoring is regarded as an effective solution to provide a consistent stream of information at various levels of innovation. This can help businesses respond quickly and efficiently to market developments and counter business risks.

The following article narrates the role of patent monitoring, and emphasizes its relevance not just for large businesses, but also for individual inventors, start-ups alike. You will also learn why Sagacious IP could be your ideal patent monitoring partner, and discover the patent monitoring services offered by us.

Patent Monitoring

New technologies are emerging in the market at an unprecedented rate, owing to the rapid speed of innovation in the present environment. Patent monitoring enables companies to keep an eye on competitors and their patent filings to spot risks and opportunities ahead. Businesses might also use patent monitoring to find new competitors in the industry. All this information is useful to make informed decisions and stay ahead of the curve. It also allows one to gauge the scale of research and development (R&D) in a specific domain and the type of patents being filed by a particular applicant.

Unlike most other forms of patent searches, patent monitoring can be carried out regularly (i.e., weekly, monthly, quarterly, or yearly) to find any newly granted patents or newly filed patent applications in an existing technology space or relating to a particular assignee. Any business that fails to perform patent monitoring risks capitalizing on great opportunities, and identifying threats that can prove disastrous for the business.

Need for Patent Monitoring

There are several reasons why one might consider conducting patent monitoring. The most significant of these are explained in detail here:

Understand IP trends: Regular patent monitoring provides you a perspective on what is happening in the intellectual property space for a particular technology. You will learn about recently granted patents, rejected applications, and more. This information can reduce the possibility of infringement, which further minimizes the chances of legal action.

Modify innovation: If the innovation infringes on other patents, the inventor can modify the idea to get around the issue. This is only possible if the company/inventor is aware of the most recent patent issues, which only a patent monitoring service can provide.

Differentiate from prior art: An applicant must explain how his or her invention differs from the existing prior art to move smoothly through the patent prosecution cycle. The applicant can explain the "new element" to the examiner during the examination phase by accessing the information gathered via patent monitoring.

Oppose new patent applications: By tracking new patent filings, patent monitoring also allows patent holders to timely oppose applications infringing on their inventions.

Thus, patent monitoring benefits organizations in various ways. In fact, it is amongst the most crucial tasks to be performed post patent grant. Let us now understand when to perform patent monitoring.

When to conduct Patent Monitoring

Patent monitoring is essential after a patent grant to guarantee that no new invention or application infringes on your invention. Moreover, patent monitoring is also vital during the patent prosecution process as it can provide critical data on prior arts. Since it also informs whether or not your innovation infringes on the rights of others, it can also enable an inventor to modify the invention to ensure its novelty and uniqueness. Therefore, patent monitoring is important at various stages of innovation and patenting.

Even after getting familiar with the meaning and need for patent monitoring, one may wonder about the precise advantages that patent monitoring can provide. The below section clears all such doubts.

Benefits of Patent Monitoring

The complexities involved in conducting patent monitoring requires significant investment. While large companies can easily opt to perform it, small and medium sized businesses often question the need for patent monitoring. However, it is beneficial for companies of all sizes. Here are the major reasons why:

Understand Competitors' Market Strategy

A fundamental aspect of patent monitoring is that it enables one to comprehend competitors' market strategies. For instance, it answers various questions, such as what service or function is helping a competitor lead in a specific technological field. This can assist you in analyzing your own organizational and tactical choices, and elevate your business to a similar degree of achievement. You can benefit from knowing your competitors' moves in various other ways as well. For example, you can study your rivals' strengths, compare your work to theirs, and strengthen the areas where you fall short in comparison.

The advent of new entrants in the technology space constantly threatens existing businesses in the domain. In this situation, it is best to remain vigilant and aware of companies seeking to enter the market. This enables businesses to maintain better defenses against threats that may emerge in the future.

Every business seeks to avoid any patent infringement lawsuits. Patent monitoring can help you assess if your innovation infringes on the rights of others. This can protect the funds you will end up losing if embroiled in an infringement lawsuit. Moreover, by knowing that your initial concept might have led to infringement, you can expand your innovation in a new direction and adapt it to keep it from further infringement.

It is always beneficial to be aware of your opponents' strong growth & development areas. This can help you build new technology that has not yet been identified. Choosing a new technological area can be more advantageous for a start-up since it is easier to build an identity and brand in sector that is already showcasing promising growth.

Recognize White Space in Patent Landscape

There is always an opportunity to find gaps or white spaces for new developments, regardless of how crowded the market or technological domain is. These " white spaces " can effectively establish exclusivity and spur innovative ideas to benefit the business. Patent monitoring can aid in locating these gaps by keeping an eye on the rivals' intellectual assets. When white gaps are discovered, these unique areas of interest may be covered by intellectual property rights.

Being aware of your rivals' weaknesses can be a boon to your growth plans. Understanding their mistakes allows you to grow while capitalizing on your strongest traits, and develop in a way that will set you apart. Mistakes made by competitors are also lessons to steer clear of unproductive business strategies. Thus, you can readily form growth goals and action plans for your business and get ahead.

Predict Upcoming Product Launches and Market Trends

Data acquired through patent monitoring can provide key insights into market and competitor behavior. This data can be used effectively to anticipate new product launches and understand other companies' IP strategies. The ability to access such crucial data can influence the R&D objectives and practices of any business.

Patent monitoring also keeps track of patent annuity payments by competitors. When a business does not pay annuities, the intellectual property protection that a patent provides is lost. There are several reasons a company can choose not to renew protection. Nevertheless, it can be helpful for rivals looking to get around patent protection and utilize the innovation to their advantage.

Continuous patent monitoring assists businesses in evaluating their freedom to operate in various countries and determining whether it is commercially safe for them to sell their product in a region without infringing on any active patent claim(s) of a third party. Without such surveillance, a company may unintentionally violate a third party's patent, which could result in legal action. For all these reasons, patent owners - be it individual inventors or large conglomerates - should take advantage of patent monitoring. To further emphasize its need, we will now highlight how global leaders leverage this tool.

How Leading Businesses Utilize Patent Monitoring

Global leaders employ patent monitoring to get a step ahead of the competition. They have massive need for competitive intelligence, market forecasting, client retention, threat detection and/or mitigation, and identification and exploitation of commercial opportunities. Based on these objectives, there are five ways large companies use internal or external patent monitoring services.

1. Risk Mitigation
Risk is part and parcel of any business and can occur in several forms. Staying informed about forecasts through "alerts" on new rival filings can minimize these risks. Large companies leverage patent monitoring to anticipate rivals' moves in new technologies and jurisdictions, determine probable infringement, and then enforce rights or negotiate. This may also entail conducting due diligence before investing in a portfolio. For instance, the purchase of a sizable portfolio may not be viable if 90% of its applications have expired.

Additionally, patent monitoring entails post-grant surveillance of issued patents to enable the launch of own goods without obstruction, or to enjoy additional time for defense planning and preparation by carrying out invalidity analysis or clearance searches.

Some of the key insights obtained from patent monitoring that help mitigate risk include:

New entrants in a technology area in the past five years and their patent coverage.

New filings or publications in the relevant domain by rivals and their priority dates.

Significant patents filed and their similarity to own inventions.

Amount of active patents that are in a portfolio of interest or under competition.

Examiner rejections, as well as appeals.

Patent term.

2. Commercialization/Licensing Strategies
For businesses to get a return on their investments, they need R&D and products to have commercial viability. Thus, they must identify new competitors - such as start-ups with viable innovations - delay the competition, and fine-tune their own products when necessary. A few measures in that direction include quick product approval, patent invalidity searches, and market potential analysis. Additionally, companies can work with other parties to collaborate in a win-win situation and build patent pools.

Patent monitoring findings that facilitate the formulation of commercialization strategies include:

Emerging assignees and inventors with promising innovations.

Patent reassignments to figure out key technology holders.

Institutes or universities leading research for technology transfer.

Expertise maps for cross-licensing purposes.

Market dissemination of products and processes.

Geographies with potential and/or saturated markets.

Details regarding litigation proceedings, success of appeals, and more to support strategizing collaborations.

3. Research & Development

Before deciding on funding or grants, organizations involved in research and development must make wise decisions in order to determine whether their study will be profitable for them. Grant organizations working with universities and research institutes should also be certain that the research they are funding will positively influence society. Monitoring in R&D provides decision-makers access to other viewpoints before making any critical choices. These can include spotting gaps in early-stage research that prevents applications from becoming grants, figuring out the effects of the regulator and/or compliance changes, and finding the saturation point of patenting activity in a field due to outdated technologies.

Patent monitoring insights that boost R&D efforts are:

Recent developments based on technology maps.

Sector-wise application of the technology over a period of time.

Key players in major geographies and their growth/upcoming developments.

Rejected applications belonging to a domain to evaluate challenges.

Patent trends and market tendencies convergence.

Top domains' IPC or CPC classification.

4. IP & Business Strategy Building
To advance a business, it is essential to continue to build on IP and steer through various business strategies. This calls for thorough due diligence and meticulous planning, and entails closely monitoring the industrial ecosystem and adjusting appropriately.

Patent monitoring can help an active R&D facility acquire useful information from observed patents to create one's own portfolio. For a start-up, obtaining funding from technology incubators and investors may be necessary. Pruning one's patent portfolio to get rid of intellectual assets that are not economically viable can be extremely beneficial for long-term goals. The analysis permits developing a plan of defense against potential dangers, such as starting an opposition or conducting searches for patent validity/ invalidity searches.

Findings that enable strategizing include:

Filing trends, research countries, and child members.

Claim priorities, scope, focus, and classification tags.

Promising jurisdictions foregone by competitors.

Technical and citation-based ranking.

SWOT (Strengths, weaknesses, opportunities, and threats) analysis using market information.

5. Patent Maintenance & Paralegal Support

Maintaining portfolios and monitoring their timely enforcement and validity is necessary, particularly when the portfolio is sizable and forms a part of patent pools or cross-licensing agreements. In addition to keeping track of patent pools with third parties, maintenance may include communicating with examiners, publishing applications, paying maintenance fees, etc. Negligence can result in lost profits and potential alliances.

Patent monitoring insights that boost patent maintenance efforts are:

Legal events that lead to the grant.

Post-grant events crucial in the maintenance of patents.

Businesses seeking to fulfill their patent monitoring needs can choose to perform the task in-house or onboard an outside patent monitoring partner. Many businesses opt for the latter; the next section elaborates why.

Why Hire an External Patent Monitoring Partner?

Companies should stay up-to-date with the developments in the relevant intellectual property space and keep track of their competitors. However, this can be time-consuming, diverting one from other crucial activities necessary for business growth. Here, an external patent monitoring partner can assist in the optimum utilization of time, finances, and other resources. These patent monitoring experts can guarantee on-time delivery and good value for your money.

Sagacious IP's Patent Monitoring Service

Here are a few reasons why Sagacious IP might be your best choice for a partner in patent monitoring:

A team of more than 300 techno-legal specialists working in fields, such as life sciences, engineering, and ICT.

Reporting and disclosure capabilities in over 16 languages.

Coverage of more than 100 geographies in ten or more specialized databases in various technical areas.

Analysis of patents owned by partners, subsidiaries, or companies of interest.

Expertise in monitoring setup, including targeted searches based on biosequences and chemical structures.

Diligent monitoring of an applicant's publications on a global or regional basis.

Tracking any new filings made by rivals and grouping publications according to taxonomy and then further by geographic location.

Sagacious IP offers several types of patent monitoring services, and based on your needs, you can choose the one that suits you the best. Let us dive deep into these types.

Types of Patent Monitoring Services Offered by Sagacious IP

There are four different patent monitoring types, and all of these are explained below in detail.

1. Competitor Monitoring: Due to the increased number of patent filings, there is a growing necessity for businesses to monitor their competitors' patents. Competitor monitoring can help stay up-to-date on the acceptance, rejection, publication, or expiration of the patent applications of competitors in a related field. It entails maintaining tabs on how their business is developing and how they are working with other organizations, and additionally, how they are advancing by employing market tactics. Here is what sets us apart from other competitor monitoring service providers:

Regular updates on infringing products and market activities.

Competitor monitoring on a regional as well as global scale.

Monitoring on competitor's market activities, including M&As, product launches, exhibitions, and conferences.

2. Legal Status Monitoring: This patent monitoring service helps obtain information regarding the status of a patent application both before and after the grant. It can provide access to information that can aid patent opposition, risk assessment, and business opportunity evaluation. Here is how Sagacious IP is able to offer unparalleled patent legal status monitoring services:

Pre and post-grant patent monitoring.

Ability to monitor patent assignments.

Well-versed with patent databases of various national PTOs.

Massive coverage - either directly or via a network of associates.

Expertise in monitoring Asian jurisdiction patents as well (covering China, Japan, Korea, Taiwan and India).

Clear highlighting of updates in the current monitoring period for improved visibility.

3. Technical Monitoring: This covers the search for recently published or accepted patents in the related technical field. It examines the technical disclosure of the relevant patents and publications. The study's primary focus is on the patent subject matter, including claims, classifications, and citations. We are a renowned technical monitoring service provider. Here is why:

We cover numerous technology areas via multiple strategies, combining keywords, IPC/CPC, inventor/assignee, spider search strategies, etc.

Our team extracts insights to timely track new business opportunities.

100+ geographies covered in multiple technology areas via 10+ specialized databases.

4. Market Surveillance Monitoring: It is the process of keeping an eye on specific markets or related domains for the launch of new products and partnerships that may encourage the creation of more advanced goods in the future. The process encompasses market actions, including mergers and acquisitions, research partnerships in technological fields and other target sectors. Here is how we deliver unsurpassed market surveillance monitoring services:

We extract insights from the monitoring activity to timely track new licensing opportunities.

Our team focuses on market activity in the technology sector, such as M&As, exhibitions, research collaborations, etc.

We summarize newer publications and products for easy understanding.

Final Thoughts

It is evident that the data gathered through patent monitoring can help businesses develop their IP strategy, identify threats from competitors, and foresee opportunities. Making important decisions without understanding the market situation can negatively affect a company's finances and reputation. As a result, working with a trustworthy patent for ongoing patent monitoring may benefit a business. Furthermore, since patent monitoring is a continuous process, its cost must be estimated using an appropriate budgeting technique. It will help the business comprehend the advantages and disadvantages of using patent monitoring.

Sagacious IP provides customised patent monitoring services to aid clients in keeping an eye on specific technical fields and competitors' IP. Our team of highly experienced patent analysts is dedicated to providing companies with the most dependable and affordable patent monitoring solutions. You can visit our patent monitoring service page to learn more about our expertise.

- Honey Mago (ICT Licensing) and the Editorial Team

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How Patent Monitoring Service Can Safeguard Against Competition

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In today's knowledge economy, information is power. Businesses must keep abreast with the latest developments in their technological area or invite possible risk of losing out to the competition. Awareness of the latest innovations in a field, such as recent patent filings, emerging innovators, etc. are all crucial aspects of information to watch out.

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All About Trademarks in Metaverse: IP in the Virtual World

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All About Trademarks in Metaverse: IP in the Virtual World

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Avatar-based social interaction is made possible in the Metaverse by fusing social media, online gaming, VR/AR, and blockchain technologies. It will likely grow in size, giving residents and visitors more options for where to live, work, and socialise. Brands can use it to promote their products and services and interact with consumers. As an example, businesses can promote their items in the Metaverse, and users can shop there as well. Branded digital goods can be bought and sold in these online communities.

To get more information, read entire article on Trademarks in Metaverse.

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All About Trademarks in Metaverse: IP in the Virtual World - Sagacious IP

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Trademark use in the Metaverse raises new legal issues, such as how to safeguard a company’s trademarks in Metaverse. This article is a

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Everything to Know about Patent Claims: Functions, Parts, and Types

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Everything to Know about Patent Claims: Functions, Parts, and Types

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Unquestionably, the core of any patent application are the claims. The boundaries of a patent's protection are established by the claims made in the patent, which describe the invention's new features. Patent claims thereby specify the boundaries of the patent. Every patent application must therefore have carefully written claims because they are crucial in court. A patented product or procedure might be imitated by anyone without any legal penalties if there were no claims.

To get more information, read entire article on Patent Claims.

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Claims are unarguably the heart of any patent application. A patent claim states the novel aspects of the invention, thereby defining the scope up to which a patent is protected. In other words, patent claims define the confines of the patent. Therefore, every patent application must have carefully drafted claims as these play a critical role during litigation. Without claims, anyone could imitate a patented product or process without facing any legal repercussions.

Carefully drafted patent claims can smoothen the grant process and help avoid any unnecessary delays arising due to ambiguity in claim description. While drafting a patent application may appear to be a straightforward task, it is imperative to seek the assistance of skilled IP experts to avoid any hindrance in patent approval process and maximize the coverage.

This article will discuss the functions of patent claims, their parts, and different types of patent claims as per different categories. Let us first talk about the functions of patent claims to understand their need and importance.

Essential Functions of Patent Claims

Every patent has one or more claims, including a single sentence elaborating what the patentee considers the patented invention. The claim has to expressly point out and claim the subject matter that the applicant regards as the invention. The regulation requires specification as well as a minimum of one patent claim. After the patent is issued, the specification, and one or more patent claims are publicly available. Claims are critical to a patent as they have multiple functions. There are mainly two essential functions of patent claims, as shown in Figure 1 below:

1. Public Notice Dissemination: The patent claim performs the function of notice dissemination as it informs the world about what the inventor wishes to protect. The claims highlight the exact scope of protection granted by the patent. The predefined and public location of patent claims, at the end of the universally available issued patent, effectuates this function. Once the patent is issued, the patent claim is publicly available.

The patent claim became critical because of the requirement for a tool to inform the public regarding the patents' scope of protection. It is comparatively new when compared to the patent systems worldwide, including the US patent system. Before the existence of modern patent claims, the courts ascertained the scope of the patent right by identifying the essence and principle of the invention through the specification's technical descriptions. Any conclusion about the full scope of the invention was derived from the descriptions and drawings in the patent's specifications. It created a significant problem as courts and juries found it challenging to recognize the protected element by looking at only the specifications without any additional literature. The situation necessitated the change to add a patent claim in an application.

The public notice function is now at the center of patent law jurisprudence. Most intellectual property experts, regulatory bodies, and courts acknowledge the positive role of patent claims in informing the public of the subject matter protected by the patent grant.

2. Defining Patent Scope: Another vital function of patent claims is to help establish the scope of exclusivity granted to an issued patent. In other words, the claim defines the invention that the patent will protect. The defining function is also linked to the claim's notice function. The patent claims define the invention's limits and boundaries, and make the public aware of the patent's specific scope of exclusivity. It is the most fundamental quality of the modern patent claim.

A patent claim is similar to a land description in a deed as it specifies the precise area that enjoys protection by the legal instrument. Each patent claim clearly defines an invention. If someone trespasses on exclusive rights of the patent owner as established by the law, they infringe on the patent. An infringement is determined by comparing the infringing activity to the area of exclusivity as per the claims. A victory in an infringement suit is based on finding that the alleged product or process overlaps the patent claims.

Patent claims also find practical application in determining a patent's validity. Generally, the scope of a patent claim is dispositive in majority of patent issues. Once the subject matter has been defined, validity and infringement questions are addressed efficiently. The definition of a patent's exclusionary power thus performs a critical function in patent law.

Now that you are familiar with the essential functions of a patent claim, let us cover the parts of a patent claim in the next section.

Parts of a Patent Claim

A patent claim is typically comprised of three essential parts (as shown in Figure 2 below) - the preamble, the transitional phrase (or word), and the body.

1. Preamble

The preamble is an initial introductory statement that states the category of the invention to be claimed. The preamble should be consistent with the invention title. For example, "a method for," "an apparatus," etc.

2. Transitional Phrase

Transitional phrases (or words) are connecting phrases (or words) that establish a relation between the preamble of the claim with the rest of the body. The type of transitional phrase used in the claim is used to determine whether the claim is restricted to only the elements listed or whether the claim may cover items or processes with additional features. The transitional phrases can be of two types: open-ended or close-ended. An open-ended transitional phrase means that the claim encompasses all the elements listed but may also include additional, unnamed details. In contrast, a close-ended transitional phrase implies that the claim just has the recited features (or steps in case of method), and no more additional elements. The close-ended transitional phrase limits the scope of the claim.

Frequently used transitional phrases are "comprising" and "consisting of." The word "comprising" is a common open-ended phrase representing a broad claim. In effect, "comprising" is simply saying, "including the following elements but not excluding others." For example, a claim to comprise X + Y covers a combination of X + Y + Z. In general, a patent drafter usually drafts claims containing a minimum number of elements. However, it may function in a variety of ways and utilize the open-ended transitional phrase "comprising" to cover the invention broadly.

However, the word "consisting of" is a close-ended phrase that indicates a more specific and narrower claim. Returning to the above example, a combination consisting of X + Y does not cover the combination X + Y + Z. Closed-ended transitional phrases are generally found in inventions related to chemical or metallurgical compositions. In such cases, no other ingredient should be available in more than trace amounts.
3. Body
The part that succeeds transitional phrases is the body of a claim. It lists all the elements, limitations or steps of the named invention. The body of the claim offers a detailed explanation of the novel aspects of the invention. It also enlists different parts of the invention and must attempt to establish the connection between them. In addition, it describes the relationship between all the claim elements.

Further, the body's structure depends on the nature of the invention. Usually, the first feature in the body is the core of the product that other components depend on.

For example, a vehicle consisting of:

a deck;

a first pair of wheels that are connected to the front of the deck; and

a second pair of wheels attached to the back of the deck.

It is advisable to separate the preamble from the transitional phrase using a comma. Also, the transitional phrase and the body are separated using a colon. Further, all the elements are separated from each other with a semi-colon, as shown below:

For example, an apparatus comprising:

Once you have understood the parts of a patent claim, it is also crucial to know about the types of claims. Therefore, in the next section, we will discuss the same.

Types of Claims

Patent claims are characterized by different types based on the drafting, invention type, field of invention, the structure of the claim, etc.

I. Types of Claims based on Drafting

There are three different types of claims based on drafting, as shown in Figure 3 below:

1. Independent claims

Independent claims are also known as principal claims as they provide a clear description of the novel feature(s) of the invention. Intellectual property experts suggest describing the invention concerning the prior art, and stating all novel and innovative features of the invention in an independent claim. Every patent application must have at least one independent claim.

2. Dependent claims

Dependent claims have a relatively narrower scope than independent claims and depend on one or several other claims. Generally, the claims following one or more independent claims are considered dependent claims. Moreover, a dependent claim may include multiple dependent claims. A multiple dependent claim refers to more than one claim. These are more common in the European patent system than in the US patent system. However, multiple dependent claims are acceptable in both.

3. Omnibus claims

An Omnibus claim describes an invention by reference to the whole or part of the specification, such as drawings or examples. Omnibus claims are only used when the invention statement is already mentioned in the specification. However, the United States, South Korea, China, Israel, Australia, and India do not permit omnibus claims.

II. Types of Claims based on Invention Field

There are four different types of claims based on the field of invention. These are shown in Figure 4 below:

1. Jepson claims

A Jepson claim is a product or method claim in which at least one limitation is specifically determined as a novel feature, distinguishable over the contents of the preamble. These types of claims are adopted when the invention is an improvisation of an existing technology.

For example, "A system for storing data having (...), wherein the improvement comprises:"

2. Markush claims

A Markush claim is a type of claim used for chemical and biotech inventions. These claims are used to prevent drafting of additional claims. A Markush claim enables a patent drafter to choose a particular element of the invention that may be selected from a group of features, all sharing some common characteristics.

For example, "...a metal selected from the aluminum, platinum, and copper group."

3. Swiss-type claim

This type of claim is adopted when a new medicinal use of an already known compound or substance is to be patented. In other words, this type of claim is a formerly used claim format intended to include the first, second, or subsequent medical utilization (or indication of efficacy) of a well-known composition or substance.

Consider a chemical compound that is known generally, and the combination also has a medical use (e.g., in treating headaches). If later it is found to have a second medical use (such as combating hair loss), then this property's discoverer may want to protect that new use by obtaining a patent for it.

For example, "use of substance X in the manufacture of a medicament to treat condition Y."

It is important to note that such claims are not permitted in India.

4. Design claim

Design claim is used in design patent applications. A design patent application might only have a single claim that can describe the ornamental feature of the intended patent. Designs that are independent and distinct must be filed in separate applications since a single claim cannot support them. For example, an example of a design patent is described below with the design of an umbrella:

The ornamental design for an umbrella can be claimed as shown below:

III. Types of Claims based on invention

There are three different types of claims based on invention, as shown in Figure 5 below:

1. Process claims

These are the types of claims used to patent a novel method or process that gives the desired or optimal output or result. Examples of some common process patent claims are determining methods, planning, method of displaying, etc.

2. Product claims

These claims are used when a product is an invention that needs to be patented. Chemical compositions, combinations, food, and alloys are some outstanding inventions in which product claims are drafted.

3. Software claims

These are used when the claimed invention is computer software and/or hardware. These claims utilize apparatus or method claims to cover software inventions. These types of claims have been commonly used and usually allowed by the U.S. Patent Office. Under the present guidelines, it is also advisable to relate the software invention to a physical implementation or a "real world" application as the patent office continues to reject patent applications without some connection to a physical element.

Software claims should be drafted in specialized claim formats to provide an additional scope of protection. For example, the specialized claim formats may be "computer-readable media" format (explained below in example 1) and "data structure" format (explained below in example 2).

Example 1: A computer-readable storage medium featuring instruction that, when executed by a computer, allows the computer to carry out a method for using a computer system for [a specified function], the method comprising: [list the inventive method steps].

Example 2: A memory for storing data for rapid access by an application program being performed on a data processing system, consisting of: a data structure with memory storage, the data structure encompassing information located in a database utilized by the application program and consisting of:

a first data object configured to;

a second data object configured to; and

a third data object configured to...

A Landmark Case for a Software Patent

Alice Corp owned four patents on computer programs and electronic methods for reducing "settlement risk" (i.e., the risk that a single party to a financial transaction will bear what it owes by using a third-party intermediary). The company accused CLS Bank of infringing on its patents.

CLS Bank filed suit against Alice Corp in the United States District Court, seeking a declaratory judgment that the claims were invalid at the time of issuance. Alice Corp. filed a counterclaim, alleging infringement.

The U.S. District Court declared each of Alice Corp's patents invalid since the claims included abstract ideas that do not qualify for patent protection under 35 U.S.C. § 101.

Alice Corp filed an appeal against the decision in the United States Court of Appeals for the Federal Circuit (USCAFC). A panel of the appeals court set aside the conclusion of the lower court. But the members of the Federal Circuit set the case for re-argument, and there was a plurality of opinion.

Finally, the case was decided by the Supreme Court, which invalidated Alice Corp's patents. The apex court determined that a software implementation of an escrow arrangement was not patent-eligible because it was merely implementation of an abstract idea on a computer system. In another case that took place after Alice Corp Vs CLS Bank, the court used the "Mayo Framework" (i.e., two-step analysis) to determine if a claim is eligible for patenting.

In the first step of the Mayo Framework, the court determines if the patent claim includes an abstract idea, such as a computation method, algorithm, or other general principles. If not, the claim can be potentially patentable, subject to additional requirements. Once the first step determines that the claim is patentable, the court proceeds to the next step.

In the second step of the analysis, the court determines whether the patent embodies the inventive concept. It means that the idea's implementation should not be generic, traditional, or evident if it has to qualify for a patent.

IV. Types of Claims based on structure

There are two different types of claims based on structure, as shown in Figure 6 below:

1. Composition claims

These claims are commonly used when the invention is about the chemical nature of any element or material used.

For Example:

A copper electroplating solution consisting of:

an alkaline solution of copper sulfate derived from 30-50 grams/liter;

sulphuric acid, from 2-4 times the copper acetate solution; and

an aqueous solution of a PH-modifying substrate in an amount sufficient enough to adjust the PH to a value of 3.5 to 5.

2. Mean-plus-function claims

Such claims do not include a detailed structure of an invention. Instead, they explain the means to achieve the desired function or feature. In a mean-plus-function claim, the element may be expressed in the form of steps to perform a function. Furthermore, these claims are sufficiently broad to cover all the materials or structures explained in the patent application.

For Example:

an apparatus for cooking rice, comprising:

a means for holding rice; and

a heater configured to heat the rice-holding means.

Conclusion

Patent claims are perhaps the most critical part of any patent application. Hence, the patent drafter should always give extra care and attention while drafting a patent claim. The more accurately the patent claim is prepared, the easier it is to protect the invention from potential infringers. The technical aspects of the invention should be explained in the claims in the best possible way. Drafting a patent is a complicated task, and failing to carry it out properly can lead to a delay in grant, or even rejection. To avoid such inconveniences, one can seek the advice/help of patent experts to gain an in-depth idea of preparing claims that offer better protection.

Sagacious IP leverages the best of technology to deliver next-generation IP solutions for its clients. It has helped companies, law firms, and other institutions in register, defend and monetize their intellectual property. The company also has vast experience with patents. Whether you are a business owner or an inventor, Sagacious IP's team of patent drafting experts can help boost your chances of patent approval. They strive for the broadest possible coverage to ensure that no third party can bypass your grant. Sagacious IP also has subject matter experts who work alongside patent drafters to ensure accuracy from a technical viewpoint. Click the link above to know more about the patent drafting service.

- Aastha Arora (ICT Drafting & Prosecution) and the Editorial Team

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Everything to Know about Patent Claims: Functions, Parts, and Types

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Claims are unarguably the heart of any patent application. A patent claim states the novel aspects of the invention, thereby defining the scope up to which a patent is protected. In other words, patent claims define the confines of the patent. Therefore, every patent application must have carefully drafted claims as these play a critical role during litigation.

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Indian Patent Law: Understanding the Patent Rights & Obligations

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Indian Patent Law: Understanding the Patent Rights & Obligations

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When an innovation is patented, the patentee is granted a number of significant legal rights. Unfortunately, many inventors and business owners are still unclear of how to use and effectively enforce their legal rights as patent holders, despite the growing awareness of intellectual property and its significance for enterprises. If you are aware of your patent rights, you can take the appropriate action if someone is caught copying your innovation. To prevent infringement, an invention must be patented in India under the provisions of the Patents Act, 1970. The patentee is granted some rights under the same statute, as well as some requirements that must be met.

To get more information, read entire article on Patent Rights.

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Whenever an invention is patented, the law confers several crucial rights on the patentee. Unfortunately, despite the rising understanding of intellectual property and its importance for businesses, many inventors and entrepreneurs continue to be unaware of the use and effectiveness of their rights as patent holders. Having the correct knowledge about patent rights enables you to take necessary action if someone is found imitating your invention. In India, the owner of an invention needs to get the invention patented under the Patents Act, 1970 to safeguard it against imitation. The same legislation awards a few rights to the patentee, as well as some obligations that must be fulfilled.

This article will discuss the importance of getting an invention patented, the rights and obligations of patentees, the limitation of patent rights, and remedies for patent infringement. But first, let us understand the fundamental concept of a patent.

What is a Patent?

As defined under the Indian Patent Act 1970, the term 'patent' means a patent granted for a new process or product involving an inventive step and capable of industrial application.

Patents are exclusive statutory rights granted to the patentee by the government for a limited period in lieu of full disclosure of an invention. They provide a monopoly to the patentee to exclude others from using, making, offering for sale, selling, or importing the patented products. In addition, for a subject matter to be patentable, the invention must meet the criteria mentioned in Figure 1 below:

Figure 1: Criteria for an Invention to be Patentable

1. Patentable Subject Matter: An essential consideration for an invention to be patentable is determining if it is related to a patentable subject matter. Sections 3 and 4 of the Patents Act, 1970 explain the non-patentable subject matter. If the invention does not fall under the provisions of Sections 3 or 4, it means the invention has patentable subject matter (subject to the fulfilment of the other criteria).

2. Novelty: Novelty is the central theme in identifying the patent potential of an invention. In simple words, the novelty requirement emphasizes that an invention must never have been published in the public domain. In addition, it must be new with no identical or similar prior arts.

3. Industrial Applicability: The criterion of industrial applicability is defined in Section 2(1) (ac) of the Patents Act, 1970 as "the invention is capable of being made or used in an industry." It must have some industrial application, which means there has to be some practical utility to be patentable.

4. Inventive Steps or Non-obviousness: Inventive step is defined under Section 2(ja) of the Patents Act as "a feature of an invention that involves technical advance as compared to the existing knowledge or having economic significance or both and that makes the invention not obvious to a person skilled in the art." It means that the invention must not be apparent to a person skilled in the same field the invention relates to. It must be inventive and unclear to a person qualified in the same area.

5. Specifications: Apart from the criteria mentioned above, another important factor for getting a patent is patent's disclosure. The disclosure of a patent means that the patent draft should reveal the invention sufficiently to help a person skilled in the same field as the invention relates to in executing the invention without extra effort. If the patent specification does not enable a person with reasonable skill and knowledge in the concerned field to apply the invention, then a patent will most definitely not be granted.

Patentability requirements can be understood as filters arranged in continuity to verify the registration scope of new inventions. Only inventions which pass through all the filters are eligible for a patent grant, and those that get filtered out are refused.

After understanding the fundamentals of patents, it is crucial to know the need for getting your invention patented.

Why is it Important to Have an Invention Patented?

The patent enforcement ensures that the inventor's intellectual property rights are duly protected. It confers exclusive rights to the patent holder regarding the sale and manufacture of the patented product. This right empowers the inventor to regulate the users regarding how it can be used, and to what extent it can be applied. To enforce these rights, an inventor must apply for a patent grant for the invention. After the completion of formal processes and considerations, the exclusive rights are granted to the inventor. Four critical points that make it important for an invention to be patented are listed below:

Protection from theft

Ensured exclusivity

Commercialization

Increased brand and money value to the invention

Once a patent is granted, the patentee is immediately assigned rights enforceable in a court of law. In the next section, we will discuss the rights of a patent holder.

What are the Rights of a Patent Holder?

The patent holder enjoys various privileges, including assigning licenses to other persons and authorizing them to sell and manufacture the patented item. However, it is important to note that these are not absolute rights and are subject to various constraints and limitations.

In the global context, Trade-Related Aspects of Intellectual Property Rights (TRIPS) agreement that came into effect on 1 January, 1995 is the most holistic multilateral agreement on intellectual property. The areas of intellectual property covered under it are:

Copyright and related rights (i.e. the rights of producers of sound recordings, performers, and broadcasting organizations)

Trademarks, including service marks

Geographical indications, including appellations of origin

Industrial designs

Patents covering the protection of new types of plants

The layout designs of integrated circuits

Unrevealed information, including trade secrets and test data

Article 28 of the TRIPS Agreement ensures the following for patent holders:

Where the subject matter of a patent is a product, it prohibits third parties from the acts of using, making, offering for sale, selling, or importing that product without the patent holder's consent.

Where the subject matter of a patent is a process, it prohibits third parties from the act of using the process, offering for sale, selling, or importing without the owner's consent.

Patent owners shall also have the right to assign the patent, transfer by succession, and conclude licensing contracts. In addition, under the Indian Patent Act, the patentee also enjoys certain rights as mentioned in Figure 2 below:

Figure 2: Rights of patent holder/patentee under the Patents Act, 1970

1. Right to Exploit the Patent

In India, the patent holder is honored with the right to use, sell, manufacture and distribute the patented product. In case the invention is a production process, the owner of the patent reserves the right to share the procedure with another person. Moreover, the agent of the patent holder can also enforce this right.

If a new invention is a product, the patentee gets the exclusive right to produce, use, and distribute an invention in India for specific applications. On the other hand, if the invention covers the manufacturing process or process of some substance or article, the right to exploit includes the sole right to practice or utilize the manufacturing process or system in the territory of India. The Indian patent law also considers a patentee's exclusive right to seek market advantages from the invention. It encourages artists to invest in their creative actions, realizing that their inventions would be protected by statute and no one else can replicate their innovations within a certain amount of time (mostly 20 years).

2. Right to Grant or Assign Licenses

The patent holder enjoys the right to assign or grant licenses for manufacturing and distributing the patented products to other parties. In instances where there are co-owners of the patented product, all the patent owners must collectively grant the license to a third party. The license is considered to be granted only after the Controller has duly authorized the request. Therefore, to be legal and lawful, the assignment or license must be in writing and should be documented with the Patent Controller.

3. Right to Surrender the Patent

The patent owner possesses the right to surrender the patent after seeking due permission from the Controller. Then, the Controller advertises this surrender as per the rules laid down in the Indian Patent Act. The parties interested in getting the ownership of the patent can directly approach the Controller. Afterward, the Controller examines the party's claims and grants the ownership. The transfer happens only if the owner is willing to surrender the patent.

The patentee has the right to forfeit a patent at any point and their initiative by sending notice in a specified manner. This includes publishing ads in the journal with an offer to surrender the patent.

4. Right before Selling

As per Section 24 of the Indian Patents Act, a patent is sealed from the date of notification for acceptance to the date of acceptance of the notification. The patentee's right comes into play after the notification for acceptance is presented.

5. Right to Apply for the Patent of Addition

Section 54 to 56 of the Patents Act, 1970 provides for this provision. The provision allows for modifications in the existing invention. In such instances, the patent holder is granted the right to the modified invention once the notification of acceptance comes out. After the notification is presented, the owner is granted the same rights as the previous patent.

6. Right to Sue in Case of Infringement

When any patent holder's rights are violated, it is termed as patent infringement. A patentee can approach either a district court or a high court for the redressal of any grievance arising out of the violation of rights. If the defendant is found guilty of infringement, the courts will either grant a permanent injunction or award the plaintiff damages it sees fit.

Patentees are also responsible to fulfill certain obligations once the patent and the related rights are granted. In the next section, we will discuss the myriad obligations that every patentee in India must fulfill.

What are the Obligations of Patentees?

Obligations of patentees can be broadly covered under five points as shown in Figure 3 below:

Figure 3: Obligations of Patentees

1. Duty to Disclose the Patent: Section 8 of the Patent Act, 1970 requires the applicant to disclose the invention to the public. Section 8(1) of the Patent Act, 1970 categorically states that the patentee is obligated to disclose all necessary data concerning the remote application of identical or near-identical invention documented, at the time of filing patent application or within six months of applying. It is also required that the patentee record all the listed specifications in the applications. Besides, the patentee should also endeavor to disclose any points of interest in the subsequent applications that may be documented in the future.

Section 8(2) of the Patent Act, 1970 states that the patentee is obligated to furnish all the data needed by the Controller concerning the invention's within six months of raising the request.

2. Duty to Request for Examination: Unlike other intellectual property rights, the patent registration process does not leave space for any kind of programmed examination for the grant of a patent application. Section 11(B) of the Patents Act, 1970 clearly lays the obligation on the patentee themselves to request the Controller to have a look at the development or growth of the patent.

3. Duty to Respond to Objections: Before permitting the examination request, the Patent Controller shares it with an analyst who assesses the growth and forwards the report, known as First Examination Report (FER), to the Patent Controller. In certain instances, some objections will be brought up in the First Examination Report. Patentees are obliged to reply to such opposition complaints. They are also required to correspond within a year of the issuance of FER. The failure to do so will lead to the automatic surrender of the patentee's application.

4. Duty to Clear all Objections: The patent owner must reply to all opposition and clear all objections raised against their invention. In case the Patent Controller has not fulfilled their duty, a meeting may also be required. If the applicant fails to address the objections, the Patent Controller has the right to assign the patent rights to any objecting party.

5. Duty to Pay Statutory Fees: The patentees are also obliged to bear all the statutory expenses needed in the registration process to receive the patent grant. The failure to make the payment will lead to the non-consideration of the patent for the grant. Sec 142 of the Patent Act, 1970 is related to the payment provisions of necessary charges and the ramifications for non-payment of prescribed fees.

Although patent rights may seem very comprehensive, it has their limitations. In the next section, we will discuss the same.

What are the Limitations of Patent Rights?

Figure 4 below shows the four main limitations of patent rights.

Figure 4: Four Main limitations of Patent Rights

1. Limitations on Private and Non-Commercial Use

Under this limitation, the patentee is curtailed from utilizing the invention for private purposes or imposing a monopoly over commercial activity. If the government thinks that the patent holder is not leveraging the patented invention for commercial purposes, then it has the right to grant a compulsory license to a third party. Section 84 and Section 92 of the Patents Act, 1970 lay out the need for a mandatory license. It can be invoked if the patented item is not available to the general public for use at affordable prices. It is generally observed in cases of pharmaceutical drugs. Another provision in the patents act relates to the limitations on private and commercial use which is covered in Section 85 of the act. It talks about the revocation of patents by the Controller in case of non-use.

2. Exception for Experimental or Scientific use

This limitation is covered under sub-section 3 of Section 47 of the Indian Patent Act. The exception states that any individual can utilize the patented process or product to undertake any scientific experiment or conduct research. This exception to patent rights was introduced to protect those conducting bona fide research works and experiments. It allows the third parties to conduct research using the patented material without being accused of infringing on the patent holder's rights.

3. Regulatory-Use/Prior-Use Exemption

Although providing patent rights to the patentees encourages new inventions, it can also lead to monopolies and strictly private use of the patented products. Because of this fear, Section 107 A was added to the law through the Indian Patents Amendment Act, 2005. The provision provides an exemption to the manufacturers of generic drugs to use the patented product for research and development purposes, and therefore enables them to seek marketing approval beyond the country's boundaries. It is also known as the Bolar provision or Bolar exemption in India. However, the manufacturers can only manufacture, use, and sell the product in the market after the patented products' expiry date, i.e., 14 years from filing the patent application.

4. Exhaustion of Patent Rights

This provision states that the inventor's patent rights get exhausted once the patented product is sold in the market. As per this limitation, the patent holder loses control over the product once the first unrestricted sale of the invention is observed. The logic behind the formulation of this constraint was that once a patent holder sells the invention in the market, the objective behind granting a patent for the particular product is lost. It implies that the patent holder has provided the right to manufacture, use, and sell the patented product to another individual, losing the exclusive rights.

Notwithstanding its few limitations, enforcement of patent rights comes in extremely handy in cases related to patent infringement. The next section elaborates on the remedies available for patentee against patent infringement.

What are the Remedies for Patent Infringement?

Patent infringement is the illegal or unauthorized manufacture or use of an invention or improvement on another's invention or subject matter without taking the owner's consent either by waiver or license. Rights in the Indian Patents Act allow plaintiffs to recover fair compensation from the infringer. The various remedial options in patent infringement litigations include equal relief and costs, monetary relief, and attorney's fees.

Monetary Relief: Compensatory damages are made available to the plaintiffs to deter individuals and companies from infringing on someone's patent rights - thereby limiting the cases of patent infringement. Three types of compensation under monetary relief are listed below:

1. Indemnity Compensation: A patent owner incurs financial loses when the patent product or technology is infringed on. Indemnity compensation helps the patent owner recover these losses.

2. Increased Damage: In cases of willful violations, damages of up to three times the reasonable compensation arrived at after standard calculation may be awarded to the plaintiff.

Equitable Relief: A court of law issues an order to prohibit a person from doing anything or acting. There are two types of injunction listed below:

1. Preliminary Injunction: This order passed in the initial stages of lawsuits prevents parties from performing a disputable act, such as making a patented product.

2. Permanent Injunction: This is the court's final order that permanently stops specific activities or initiates other concrete actions.

Conclusion

The patentee's rights have been clearly enshrined under the Patents Act, 1970. Despite that, there are numerous cases of patent infringement. The violation of patentee's rights can be resolved only when the laws are suitably placed, and the laws changes with the time, adjusting to the changing situations. Patentees have the exclusive right to move to the court in case of infringement of their patent rights. But the rights of the patentee should be exercised within the prescribed limits of the law. It is crucial to be fully aware of your rights and enforce them to reap the maximum benefits. In addition, patentees must also be aware of the limitation of these rights, as well as obligations required to be fulfilled. Since understanding all of this can be a difficult task for anyone, it is always advisable to avail services of a reliable third party in such matters.

Sagacious IP has an efficient process to deliver cutting-edge solutions for its clients. Through its India Patent Filing and Prosecution services, it enables you to secure your invention, by leveraging a solid patent draft prepared by a skilled patent attorney that ensures your invention is protected most swiftly and cost-effectively. Visit the page through the link above to know more about this service.

- Sameeksha Shukla (IP Filing and Prosecution) and the Editorial Team

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Indian Patent Law: Understanding the Patent Rights & Obligations - Sagacious IP

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Whenever an invention is patented, the law confers several crucial rights on the patentee. Unfortunately, despite the rising understanding of intellectual property and its importance for businesses, many inventors and entrepreneurs continue to be unaware of the use and effectiveness of their rights as patent holders.

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Establishing brand identification requires the use of a trademark. In the current era of fierce rivalry, dishonest competitors frequently damage a company's reputation by copying an existing brand name. As a result, it is crucial to keep an eye out for and stop such activity using a specialised service like trademark monitoring. The programme seeks to keep a watch out for prospective infringers and also looks to see if your trademark unintentionally violates the rights of others. For both small and large organisations, trademark monitoring is essential since no company wants to waste valuable resources on needless trademark infringement cases.

To get more information, read entire article on  Trademark Monitoring.

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A trademark is an essential tool in establishing brand identity. In the age of cut-throat competition, unscrupulous players often disrupt a brand's image by imitating an established brand name. Therefore, it is critical to watch out for and eliminate such activity through a dedicated service such as trademark monitoring. The service aims to keep an eye out for potential infringers and also checks whether your trademark is accidentally infringing on other trademarks. Trademark monitoring is critical for small as well as large businesses as no organization wants to squander crucial resources over avoidable trademark infringement lawsuits.

This article is a comprehensive discussion about trademark monitoring services, including when you need to avail the service, the benefits of trademark monitoring, pitfalls of not having a trademark monitoring plan, and much more. Let us begin by understanding what trademark monitoring really means.

Trademark Monitoring

It is the constant process of tracking filed, advertised and accepted trademark applications to confirm that no marks, deceptively identical to yours, are being registered by anyone else.

It acts as a proactive step that preserves the brand equity and saves probably hundreds and thousands of dollars in lost revenue and costly trademark infringement lawsuits. Quite often, businesses make the mistake of addressing the issue of trademark infringement only when someone pulls their attention towards it. However, by then, the counterfeit products infringing on the trademark have already penetrated the market and damaged the brand image cultivated over many years.

Trademark monitoring service searches the web for infringement cases and sends a timely alert to the brand when there is a possible threat to be resolved. The task of monitoring can be carried out through a company or an individual, IP lawyers, or software that searches the web for your trademark. But trademark monitoring is a mammoth task. There are too many places to scour across the web to detect possible cases of trademark misuse. Moreover, personal websites could be challenging to find. Besides, online marketplaces, social media platforms are also common places for trademark infringement, where counterfeit products are bought and sold in abundance. Trademark monitoring software has the capability to search numerous sites globally, and is way more efficient and effective (in terms of both cost and time), when compared to manual scanning.

After understanding trademark monitoring, the first question that comes into mind is - when is the trademark monitoring service needed. The next section elaborates on this.

When is Trademark Monitoring Service Needed?

It is a common misconception that only large businesses and enterprises need to be concerned about trademark infringement. According to a study conducted by Smart Protection (a cyber-security company), four out of every five small and medium-sized companies across the globe are victims of brand abuse and counterfeiting on the internet. Therefore, irrespective of the size of your company, there is a high probability of your trademarks being infringed upon and misused on counterfeit products and goods. With e-shopping gaining popularity around the world, it has become easier to sell duplicate products online, and it is a growing danger that businesses need to be aware of. Trademark monitoring services are needed in the below-listed cases:

1. When New Trademark Applications are Filed: Although governments worldwide offer trademark protection, they do not police potential violations. That is why the onus of protecting the IP rights falls on the owner of the intellectual property. In case you are worried about competitors or other businesses registering a similar trademark as yours, then the trademark monitoring service is an apt solution. It helps keep track of trademark applications filed by others, which are similar to yours. In addition, it enables to take punitive action at the right time.

2. To Detect Possible Trademark Infringement: With the rising level of consumerism, brands are constantly competing for a larger market share. In the absence of a dedicated mechanism to detect infringers, it becomes challenging to eliminate such a hurdle. Trademark monitoring services are helpful for companies looking to protect their trademark rights and customer base by weeding out the imitators.

While performing trademark monitoring, many inexperienced players often commit the mistake of discerning the difference between trademark monitoring and watching. Trademark monitoring is unlike the watch service, which tracks the progress of a specific trademark application. Hence, if you want to follow a particular trademark filing, then trademark watching is the appropriate service to explore and avail. There is also a notable difference between trademark monitoring and trademark searching. Trademark monitoring is conducted once the mark has been registered to check for any same/similar mark placed before the registrar for registration. Trademark searching is performed at the starting point to determine if there is already a similar registered mark, or pending before registration for the same class of goods and services.

Now that you have understood what trademark monitoring means, it is time to delve into its myriad benefits.

Benefits of Trademark Monitoring Service

Trademark monitoring service serves numerous benefits, which are discussed in Figure 1 below:

Figure 1: Benefits of Trademark Monitoring Service

1. Stops Trademark Dilution: Trademark dilution occurs when a trademark is used without authorization by its owner. The uniqueness and novelty of a trademark is seriously compromised by its unrestricted and unauthorized use. Trademark dilution can happen in more than one form, making it difficult to track and control. The trademark monitoring service helps keep a lid on the dilution activity and fends off widespread imitation.

2. Eliminates Trademark Infringement: Trademark monitoring searches the offline and online worlds for infringement cases and promptly alerts the concerned businesses of a likely threat. The use of exclusive trademarks without the consent/authorization of the owner, or license, qualifies as an act of trademark infringement. In an interconnected and hyper-competitive world, trademark infringement cases have been on a constant rise. To counter this threat, trademark monitoring has emerged as the preferred way for organizations. The service imparts greater efficiency to infringement search with the modern tools and technologies discussed later in the article.

Early detection of infringement cases and addressing the issues with the correct resolution can scale down the number of infringement cases in the future. An ordinary observer often confuses trademark dilution and infringement and uses them interchangeably. But in reality, there is major difference between the two. While infringement involves a level of customer confusion, dilution occurs with customers fully aware of the imitation taking place.

3. Saves Cost of Legal Proceedings: In the instance of trademark infringement, the hassle and cost associated with legal proceedings are very high. Early detection of infringement cases helps in saving resources, including money in the legal proceedings.

4. Secures Present and Future Damage Control: A low-value trademark lying at the bottom of the popularity list may command a much greater value in the future with an increase in demand. The trademark monitoring service helps to identify such low-lying trademarks with immense potential. The service results assist in developing a road map for thwarting probable present and future damages.

5. Deters Impersonators, Imitators, and Knock-offs: Acquiring and retaining a customer is a massive challenge for businesses, especially in the consumer age where switching loyalty is prevalent. Careful brand cultivation is one of the many ways to inculcate brand loyalty among your customers. Once the belief is developed, it is imperative to keep the impersonators, imitators, and knock-offs at bay through trademark monitoring service. Sustained monitoring helps spot imitators at early stages and take remedial measures before too much damage has been inflicted on the brand.

6. Offers Competitive Advantage: Trademark monitoring service offers valuable and actionable insight into your competitors in the market. During monitoring, there are instances when you might come across new developments that may prove crucial in acquiring a new customer base for your brand. Moreover, since a trademark is a strategic immaterial asset, it is pertinent to traverse competitor progress in the same domain.

7. Acts as a Solution against the Doctrine of Laches: The Doctrine of Laches is generally presented as a positive defense in a civil dispute. Its explanation prevents a party from raising any claim because of an unreasonable delay in enforcing the claim. The trademark monitoring service assists in detecting suspicious brands and trademarks at the preliminary stage, thereby preparing a rational argument against the Doctrine of Laches.

Now that you understand the benefits of a trademark monitoring service, we must also consider the drawbacks of not having a trademark monitoring plan in place.

Pitfalls of not having a Trademark Monitoring Plan

Ignoring a trademark for similar goods/services can cause irreparable damage to your previously distinctive mark. However, timely intervention with trademark monitoring service could protect your trademark's distinctiveness and prohibit others from using the same. Therefore, an opposition raised on time may save time and money. On the other hand, if trademark misuse is not stopped, consumers could relate the new mark with the registered trademark, which may cause revenue loss and harm business reputation and goodwill. So, it is always advisable to regularly engage in trademark monitoring activity to search for possible misuse of a registered trademark. The three common pitfalls of not having a trademark monitoring plan are shown in Figure 2 below:

Figure 2: Pitfalls of not having a Trademark Monitoring Plan

1. Fault line in Brand's Uniqueness: Merely conceiving and creating a brand is not enough to protect it from infringers and imitators. Once you have registered an eye-catching brand, it is essential to preserve its uniqueness through trademark monitoring. In the absence of a concrete trademark monitoring plan, rampant product imitation is a common phenomenon that leads to a fault line in your brand's uniqueness. The moment a brand loses its uniqueness, its customers start to switch loyalty, leading to a loss in revenue and market value.

2. Loss of Trademark Rights: The failure to constantly monitor your trademark allows for unchecked usage of your trademark. If this becomes rampant, the original trademark may fail to even serve as a brand identifier in some cases. Moreover, the use of your trademark by unauthorized third parties for an extended period may weaken your claim on the original trademark, and in the worst case, you may suffer from the loss of trademark rights. The situation becomes even more alarming if the imitator is a competitor with products and services similar to yours.

3. Brand Value Dilution: Brand building is a cumulative effort and takes years of diligent planning and execution. Trademark is a core part of the branding strategy. However, unauthorized and frivolous use of a trademark drastically affects the brand value. Customers often reduce their interaction with a brand that is no longer deemed worthy and novel. And besides customers, other stakeholders, such as suppliers, creditors, borrowers, etc., also show reluctance to engage in a long-term agreement with the business. In addition, brand dilution due to the absence of trademark monitoring causes an unseen loss of revenue.

Considering the risk associated with the absence of a trademark monitoring plan, it seems like a wise move to avail the service and its advantages. But before you do, it is important to understand the various types of services available.

Types of Trademark Monitoring Services Available

There are five different types of trademark monitoring services available, as shown in Figure 3 below:

Figure 3: Trademark Monitoring Service Types

1. National Monitoring: This monitoring service is concerned with monitoring activity only for a specific country. It will check for infringement in your country of interest only.

2. European Monitoring: If you are looking to monitor your trademark in the entire Europe region, European monitoring is the service to avail.

3. Worldwide Monitoring: If your brand has global ambition and reach, it is wise to use the worldwide monitoring service.

4. Benelux Monitoring: This provides monitoring services in three European countries, namely Belgium, Netherlands, and Luxembourg.

5. Trade Name Monitoring: Instead of performing the trademark monitoring by jurisdictions, one can also perform the monitoring by trade name under contention.

Regardless of the type of monitoring service you opt for, it is also crucial to adopt appropriate tools for the desired results from trademark monitoring service. The next section elaborates on some of the most common tools that can help in trademark monitoring.

Tools used for Trademark Monitoring

1. Google Ads and Keyword Planner: These two tools by Google are the perfect starting points to spot possible infringement of your trademark on the web by searching for specific terminology, phrases, and words. Google Ads, formerly known as Google AdWords, aid in finding out if a particular individual or organization has been misusing your registered trademarks to advertise and promote on the search engine. On the other hand, the Keyword Planner shares the outcome drawn whenever someone performs an online search using your registered trademark. This helps organizations/individuals identify other organizations seeking to reap benefits from their brand's web traffic and online search volume.

2. Google Search and Alerts: Despite being a standard tool that is used by millions of people across the world on a daily basis, Google Search can generate outstanding results when talking about checking the misuse of your trademark online. Besides, users can also use Google Alerts to get email notifications whenever new content with striking similarities with the original trademark appears online.

3. Trademark Electronic Search System (TESS): This system utilizes robotized operations to detect trademark infringement even before it starts. The search engine filters suspicious trademarks depending on various variables. The United States Patent and Trademark Office (USPTO) maintains the TESS search system and assists in searching for registered trademarks and applications.

4. Amazon Search: One should also conduct periodic searches on Amazon to see if your trademark is being infringed upon on online marketplaces. There have been instances of unscrupulous players riding on the success of an established trademark or brand using the slight variations in the name and selling these questionable products through e-commerce websites. It is important to eliminate such cases by conducting trademark monitoring on online marketplaces, and taking suitable actions.

Apart from the above-discussed tools, new trademark monitoring software is also experiencing immense popularity.

Rise of Trademark Monitoring Software

Trademark infringement is such a widespread issue that it is a challenging task to monitor all violations. Some of the top-notch trademark monitoring software helps to find noticeably similar trademarks. The efficacy of all these monitoring software has even won the admiration of World Intellectual Property Organization (WIPO) which has recommended its use in practical applications. Compared to manual monitoring services, the software technology is way ahead in policing violations. Third-party service providers and law firms can leverage the software and send out cease and desist letters after being notified of infringement.

Trademark Infringement and Optimal Monitoring Policy

A trademark's owner must take the responsibility of monitoring themselves to identify infringement and initiate legal action against the infringer. Mentioned below are some key factors in drafting an optimal monitoring policy.

1. Draft Clear Policies: Writing unambiguous agreements helps set parameters for terms of use of trademarks by partners. However, there are other players who are often beyond the control of a trademark owner, such as lead generator, affiliate, third-party, or competitor. Clear policies that spell out what is allowed and what is not allowed, and the action taken for violating the policies brings out procedural consistency. Trademark owners can include the details of the following terms in the agreement:

Allowed and restricted Keywords

Permitted and prohibited ad copy

Customized policies for different geography

Use of trademark name in domain names, sub-domains, usernames, etc.

Insert 'detrimental to brand' language

2. Determine Penalties for Non-Compliance: The penalties for non-compliance should be made abundantly clear in the agreement with the lead generators, affiliates, and partners. Third-party or competitors also feel discouraged from imitating when there are direct and transparent provisions for non-compliance. Any written agreement must plainly express that you monitor your trademark for violation and infringement. Besides, the agreement should state that the trademark enforcement will take place via an automated monitoring tool, so all concerned parties are acutely aware that active monitoring is in place.

3. Automate Trademark Monitoring Search: Manual trademark monitoring is the natural way to determine if you have a trademark misuse problem. Unfortunately, its inherent nature cannot be as holistic as an automated monitoring solution. The use of several evasive techniques such as geo-targeting and day-parting will cause the flow of valuable traffic from your site. Crawling and spotting thousands of identical/near-identical is best assigned to the prowess of technology and not humans. In the absence of an automated monitoring plan, monitoring is similar to 'searching for a needle in a haystack' - causing loss of time and resources.

4. Determine Responsibility: Before performing a trademark monitoring search, you should make critical decisions such as who is responsible for what. Ideally, there must be one dedicated team to check the outcome of the automated results. With time, the monitoring team becomes familiar with the tool. It can identify details from various consumer journey stages, such as ad copy, infringing ad, destination URL, landing page, etc.

5. Review and take Corrective Actions: Once the automated or manual results find out the trademark infringement case, the next step is to take corrective action. The actions may include contacting your affiliates and partners and reiterating the need to adhere to the agreement or imitating a violation case in instances where the infringer is a third party or a competitor.

Conclusion

In the absence of a comprehensive trademark monitoring plan, infringement and counterfeiting can cause long-lasting injury to your brands and related products/services. Early and sustained monitoring is vital to protect and enforce your trademark rights. Finally, considering the depth of the internet and advancement in technology, organizations and individuals must stay abreast of new infringement methods and solutions. The process of trademark monitoring must not remain stagnant to protect the interests of the trademark owners. Although many individuals and organizations perform the trademark monitoring in-house, it is advisable to outsource the job to a third-party service provider.

Sagacious IP strives to leverage the most advanced tools to deliver exceptional intellectual property solutions. Over the past few years, the company has accomplished many feats and expanded across four delivery centers with offices in six countries. In addition, its trademark monitoring service allows brands to keep an eye out for trademark infringement both globally as well as within the regions they operate in. Our dedicated team leverages conventional and non-conventional resources to keep track of possible infringement and enable customers to protect their valuable brand names. Visit the service page linked above to know more.

- Nitesh Chouhan (Trademark) and the Editorial Team

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A Guide to Trademark Monitoring - Sagacious IP

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A trademark is an essential tool in establishing brand identity. In the age of cut-throat competition, unscrupulous players often disrupt a brand's image by imitating an established brand name. Therefore, it is critical to watch out for and eliminate such activity through a dedicated service such as trademark monitoring.

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Amendments to Form 27 (Indian Patent Act) – Evaluating the Commercial Applicability of a Patent

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Amendments to Form 27 (Indian Patent Act) – Evaluating the Commercial Applicability of a Patent

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Patents are issued not just to provide protection but also to guarantee that they are used as much as possible in the economic sector. A patent that has no practical use does not help to address any major social issues. Therefore, the "functioning of the patent" provision demands particular consideration from patent legislators and examiners. A statement by the patentee or licensee detailing how the invention functions on a commercial scale in India is required by Form 27 of "The Patent Act, 1970 (39 of 1970) & the Patents Rules, 2003" in India.

To get more information, read entire article on Working of Patent.

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Patents are granted not only to offer protection, but also to ensure that they are worked commercially to the fullest extent possible. A patent without any real-life application does not contribute to solve any pressing problem in the society. Hence, the clause of 'working of patent' commands extra attention from the patent legislators and examiners. In India, Form 27 of "The Patent Act, 1970 (39 of 1970) & the Patents Rules, 2003", requires a statement from the patentee/licensee regarding the working of the invention on a commercial scale in India.

The following article discusses the importance of Form 27, its development and amendment to the original clause of working of patent (Patent Act 1970), the need for amendment, comparison between the new and old formats, and the efficacy of the recent amendment. But first, let us understand the background of Patent Law and Form 27 in India.

History of Indian Patent Act, 1970 and Form 27

In India, it is compulsory under the (Indian) Patents Act, 1970 for every patentee/licensee to furnish a statement as to the extent of commercial working of a granted patent in the Indian territory. The working idea is embodied in Form 27 of the "2003 Patent Rules." Non-adherence with the requirement of filing the working statement within the timelines may invite a penalty of imprisonment upto six months, a fine, or both, as provided under section 122(1) (b) of the Patents Act. Accordingly, the relevant information needed from the patentee/licensee under Form 27 has been listed below:

1. If the invention has been applied on a commercial scale.

2. The reasons behind not applying the invention and the steps taken to apply it.

3. If the invention has been applied, the quantum and value in INR of the patented product: (a) when manufactured in India; (b) when imported from other countries, providing the details of the countries concerned.

4. Licenses and sub-licenses granted during the year.

5. Whether the public requirement has been fulfilled, at a reasonable price either partly, adequately or to the full extent.

Prior to the amendment, the law also required that the patentee/licensee file the above information every calendar year within three months of the year-end. Therefore, the latest date a patentee or licensee could file such information for a given calendar year was March 31st.

While the act was meant to increase compliance and increase the working of patents, the result was not achieved, as revealed by public interest litigation ( PIL) filed before the Delhi High Court in 2015. Form 27, while speaking of public requirement, did not clarify numerous points, including what was meant by 'adequate extent,' 'fullest extent that is reasonably practicable,' 'commercial scale,' and so on.

The ambiguity in the old Form 27 triggered the need for an amendment that could increase compliance, streamline the process of patent drafting and examination, and address the critical concerns of the stakeholders, such as patentee, licensee, examiners, etc.

Reasons behind Amendments in Form 27

Figure 1 below lists the prime reasons for the amendment in Form 27.

Figure 1: Reasons behind Need for Amendment in Form 27

1. The meaning of 'commercial scale,' 'adequate extent,' 'fullest extent' that is reasonably practicable, etc.

The PIL filed before the Delhi High Court in 2015 stressed on the expression and requirements of Form 27 mentioned in the 2003 Rules. One example of such a condition was to state whether the patentee had fulfilled the public requirement related to the patented invention "partly/adequately/to the fullest extent" without any guidance on how to determine the same. In the absence of any set standard, the patentee interpreted the requirement as per their subjective understanding.

2. Required statement of the calendar year within three months from the end of each year

Form 27, present in the 2003 Rules, required the patentee to furnish a statement of the calendar year within three months from the end of each year. It made gathering and organizing the information challenging as most organizations are used to the financial year cycle. In addition, the deadline for filing was also limited, i.e., three months from the end of each calendar year, which collides with the end of the financial year, increasing the probability of missing the deadline.

3. Confidentiality of Information

Form 27 of the 2003 Rules required the patentee to furnish details regarding the quantum and value of the manufactured product. The requirement raised the concern if such sensitive information could remain confidential. To the disappointment of many patentees, neither the Patent Act, 1970, nor the Patents Rules, 2003, elaborates on how such sensitive information is made available to the public.

The act only says, "the Controller may publish the information as prescribed under the relevant section, i.e., (S. 146(3) read with r. 131(3)." Besides, section 145 states that the patent controller shall periodically publish an official journal covering information that may be required to be published under the act. With this context, it can be presumed that information submitted under Form 27 could be published at the controller's discretion.

4. Multiplicity of filing

The old Form 27 of the 2003 Rules required patentees to file a separate form for each patent even if they were related and approximate revenue/value accrued from a particular patented invention could not be obtained separately from the approximate revenue/value accrued from related patents. The assortment of filing posed a hurdle for patent owners looking for seamless and timely compliance.

Now that we have looked into the problems that made the amendment necessary, let us look at how Patent (Amendment) Rules 2020 ("Amended Rules") addressed them.

Amendments to form 27 carried out through the amended rules

The significant amendments made by way of the amended rules are shown in Figure 2 below:

Figure 2: Major Amendments Caused by Way of the Amended Rules

1. Deadline for Filing Extended: After the new amendment, Form 27 has to be furnished for every financial year instead of the calendar year in the old rules. The deadline for filing is six months from the expiry of every financial year, which is by September of the year after the relevant financial year. The switch from calendar year to financial year has been appreciated by patentees and licensees as the collation of information for a financial year will be much easier. In addition, the new rules also allow extra three months for filing Form 27, allowing the desired cushion in the case of an emergency.

2. Approximate Value Accrued: As per the New Form 27, the patentee/licensee is required to submit only the approximate revenue/value accrued in India through manufacturing in India or import into India of the patented invention. The 2003 rules required the patentee to list out the "quantum and value (in rupees) of the patented product manufactured or imported in India."

The change has been hailed as a great move as patentees routinely faced obstacles in finding out the exact quantum and value of the patented product manufactured/imported in India. For some inventions, the exact figures are not easily discernible, and there are genuine apprehensions over confidentiality. As per the amended rules, patentees/licensees need only provide approximate values making compliance more straightforward and less cumbersome.

3. Requirement for Details of Licensees/sub-licensees Removed: In the old Form 27, the requirement to provide details of licensees and sub-licensees was another cause of concern from the confidentiality perspective. The new Form 27 has done away with this requirement, bringing relief for the patent portfolio owners and managers. When publicly available, details of licensees and sub-licensees can reveal a lot about a company's patent licensing strategies, resulting in competitive disadvantages.

4. No Requirement to Provide Statement on Meeting Public Requirement: As per Form 27 of the 2003 Rules, a patentee was asked to state if the public requirement for the patented invention was met partly/adequately/to the fullest extent at a reasonable price. The underlying problem in the condition was that there was no clear definition or guidance on how to conclude if a patentee had met the public requirement "partly/adequately/to the fullest extent." Much to the solace of patentees, the controversial statement has been removed by way of the Amended Rules.

5. One Form for Multiple Patents: With the introduction of new amended rules, a patentee can now file one form for multiple patents if all such patents are related patents and approximate revenue/value obtained from a particular patented invention cannot be obtained separately from the approximate revenue/value accrued from the related patents. The change has resolved the issue of multiplicity of filings for a set of related patents.

Apart from these significant changes, the amendment also made other changes. Table 1 shows the salient differences between old Form 27, proposed Form 27, and new/amended Form 27.

S. No.

PREVIOUS FORM 27

PROPOSED FORM 27

NEW/AMENDED FORM 27

1
Required a separate form to be filed for each patent

Required a separate form to be filed for each patent. However, it needed details of all related patents to be provided, where the value accrued from a particular patented invention could not be obtained separately from the value accrued from related patents, and all such patents are granted to the same patentee

Gives an option to file one form in respect to multiple patents, provided all of them are related patents, wherein the approximate revenue or value accrued from a particular patent cannot be obtained separately from the approximate revenue or value accrued from related patents, and all such patents are granted to the same patentee

3
Patentees/licensees were only required to share whatever details were available

Patentees/licensees were required to share all the sought-out details in the form

Patentees/licensees have to disclose all the sought-out details in the form

Table 1: Differences between old Form 27, proposed Form 27, and new/amended Form 27

After discussing the changes between the old Form 27 and the new one, let us move our discussion towards the possible loopholes in the new form.

Will the New Amendment Strengthen or Weaken the Purpose of Furnishing Working of Patent Information?

The new Form 27 is undoubtedly an improvement over the old and proposed ones. It has brought in the requirement for stating the reasons if the invention has not been worked out. There is also the requirement to furnish the steps being taken towards working the invention (with an arbitrary word limit of 500 words), whereas the proposed form only required justification for not working the patent inventions.

However, besides the advantage stated above, the new form has a few hiccups that need to be dealt with:

1. Quantum of the Invention: The new Form 27 does not demand exact information on the quantum of the invention. There seems to be no justified explanation to eliminate the information on total units of patented invention imported and manufactured in India. The data is significant in determining the extent of the working of patent and plays a crucial role in facilitating the compulsory license regime. For instance, NATCO Pharma successfully convinced the authorities to grant a compulsory license due to Bayer's disclosure through the old form 27. Without the exact quantum manufactured and imported information, it would have been impossible to determine if the patent had been worked in India.

2. Extent of Meeting the Public Requirement at a Reasonable Price: The new Form 27 has done away with the need to provide detailed information about the extent to which the working of patent has met the public requirement at a reasonable price. The relaxation on furnishing critical information, such as estimated demand of the patented invention or product, the level to which the demand has been met, and the details of any particular schemes or steps undertaken by the patentee to satisfy the demand, eliminates the possibility of assessing the working of patent. Without such information, it would be a challenging task to conclude whether the invention has been made available and is affordable to the public.

3. The Number of Licensees and Sub-licensees Granted: Similar to relaxations on other points, the new Form 27 does not require patentees/licensees even to furnish details about the existence of licenses/sub-licenses. The step to do away with disclosing details means patentees and licensees will only be self-certifying that they have worked the patent without any substantial claim backed up by data on licensing and sub-licensing.

4. Word Limits Offer an Additional Escape Route: Besides reducing the volume of information required to increase compliance, the new form has prescribed an arbitrary word limit of up to 500 words to justify not working of a patent. The reduced word limit will prevent the patentee/licensee from submitting the necessary information on why the patented invention has not been worked. Moreover, it may also encourage crafty patentees to reveal minimum obscure information and then avoid accountability by citing word limit as an excuse.

Conclusion

We can say that the new Form 27 has its flaws as well as its advantages. The new form is a change long sought by patentees and licensees as it eliminates ambiguity and requires less information. However, from the regulators' perspective, the need to provide approximate details of information in limited words poses a significant challenge in determining the working of a patent.

Many patentees and licensees file Form 27 on their own. However, the task becomes mind-boggling when there are multiple unrelated patents, each with its requirements. In such instances, it is better to avail of the services offered by a reliable third party.

Sagacious IP offers a range of intellectual property solutions for inventors, businesses, law firms and more. Its India Patent Filing and Prosecution services enable you to secure your invention by leveraging a solid patent draft prepared by a skilled patent attorney that ensures your invention is protected in the most cost-effective and swift manner. Get in touch now to know more about this and various other services offered by Sagacious IP.

- Shweta Sharma (IP Filing & Prosecution) and the Editorial Team

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Amendments to Form 27 (Indian Patent Act) - Evaluating the Commercial Applicability of a Patent - Sagacious IP

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Patents are granted not only to offer protection, but also to ensure that they are worked commercially to the fullest extent possible. A patent without any real-life application does not contribute to solve any pressing problem in the society. Hence, the clause of 'working of patent' commands extra attention from the patent legislators and examiners.

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How Our Trademark Search Service Helped a Canadian Law Firm Protect its IP: A Case Study

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How Our Trademark Search Service Helped a Canadian Law Firm Protect its IP: A Case Study

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Trademarks are used by businesses to safeguard their brand identities and stop rivals from using them without authorization. However, a company cannot simply choose or develop a brand name or emblem and begin utilising it as its own trademark. Additionally, it is crucial for businesses to conduct a trademark search before filing for a mark in order to find any existing trademarks that might be similar to or identical to the mark they have chosen. While trademark searches can discover potential trademark misuse or infringement by others, they also provide essential information needed before submitting trademark registration applications.

To get more information, read the entire article about Trademark Search.

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Companies use trademarks to protect their brand identity and prevent competitors from using their marks without prior permission. But a business simply cannot create or select a brand name or logo and start using it as its own trademark. And before applying for a mark, it is important to conduct a trademark search that enables businesses to detect any existing trademark that may be similar or identical to their selected mark. While trademark search offers crucial insights needed before filing trademark registration applications, it also helps in identifying potential misuse or infringement by others.

In this article, we will cover a case study where our trademark search service helped a Canadian law firm protect its intellectual property and steer clear of any infringement. The client also made a customized request to share the results in a specific format which was adhered to.

Problem Overview

A Canadian law firm, which has been offering legal advice to its clients since 2017, requested our assistance in performing a trademark search. The client needed a comprehensive trademark search report and also shared the following guidelines with us:

Images should be in a separate column next to trademark names.

The report should be shared in an MS Word document whenever a proposed mark fetches a large number of results.

Trademark search should be performed on the Canadian Trademark Database.

Results should be categorized separately, with and without class, based on status (expired/dead/ended/live).

Trademark name and application number should be picked from the Canadian Intellectual Property Office (CIPO) database.

Thus, Sagacious IP's trademark experts were faced with the responsibility of conducting an in-depth trademark search and sharing the results in a customized format.

Our Approach

We undertook the following steps to serve our client:

Figure 1: Steps Taken to Serve the Client

Our trademark team first addressed the client's concerns by imparting relevant knowledge pertaining to trademark searches. Then we proceeded to perform the task and prepared a report as per the client's guidelines. As per the client's request, our team also:

Shared results in an MS Word document: Although we typically share trademark search results in an excel sheet, our team shared the results in a word document as per the client's request.

Hyperlinked application number: We also hyperlinked the application numbers for the client to conveniently access the relevant documents.

Result

Our client was impressed by the accuracy of the results and timely delivery, which was helpful in protecting their intellectual property from infringement. Since January 2021, we have performed 29 trademark searches for the client.

Sagacious IP's team of trademark experts specializes in offering customized search services to our clients. We cover all the possible combinations, different variations, and phonetically similar marks in our trademark search to prepare a comprehensive report of these searches. Our team is also committed to sharing the most accurate results to help our clients stay ahead of the competition in the IP space. Our clients keep coming back to us every time they need IP-related services. This speaks volumes about the quality of services we provide.

The trademark searches offered by Sagacious IP are meant to assist companies in identifying exact and similar trademarks in the same classes or for the same goods/services. Our trademark search team is dedicated to providing the most accurate trademark search reports in a timely and cost-effective manner. To learn more about this service, click here. You can also look at the numerous other services we offer on our website.

Yogesh Kumar (Trademark) and the Editorial Team

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How Our Trademark Search Service Helped a Canadian Law Firm Protect its IP: A Case Study - Sagacious IP

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Companies use trademarks to protect their brand identity and prevent competitors from using their marks without prior permission. But a business simply cannot create or select a brand name or logo and start using it as its own trademark.

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Metaverse and NFT IP Rights: Protecting your Digital Assets

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Metaverse and NFT IP Rights: Protecting your Digital Assets

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Subjects like the Metaverse and Non-Fungible Tokens (NFTs) have become hot topics in today's society, where new technologies are emerging at an unprecedented rate. They signify a fresh beginning for intellectual property as well. Understanding the significance of intellectual property rights is necessary given the developments in the fields of the metaverse and NFTs (IPR).

To get more information, read the entire article about NFT IP Rights.

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In today's world, where new technologies are emerging like never before, subjects like Metaverse and Non-Fungible Tokens (NFTs) have become the talk of the town. They represent a new horizon in the intellectual property space as well. The developments in the domain of Metaverse and NFTs call for the need to understand the value of Intellectual Property Rights (IPR). Digital assets, such as NFTs can be bought, traded, or licensed - similar to physical properties. As a result, a virtual firm may have a virtual product design with numerous features that require protection under various intellectual property laws, such as trademark, copyright, and industrial design. Knowledge about fundamental IP rights will benefit all who are engaged in selling or minting digital assets, also for those who intend to curb misuse.

This article will discuss the terms "Metaverse" and "NFTs," the role of NFTs in the Metaverse, and the importance of IP in the NFT ecosystem.

General Overview of Metaverse

Metaverse is a relatively new concept. It recently became popular when Mark Zuckerberg announced rebranding Facebook to Meta. The definition of Metaverse varies, but as a concept, it aims at providing an immersive digital 3D virtual space. At present, Metaverse does not exist entirely; however, certain elements similar to the metaverse space exist. The Metaverse will base on virtual reality (VR), augmented reality (AR), and mixed reality (MR) technologies. It could also include multiple 3D spaces interconnected to provide a holistic experience for users.

Typically, in the Metaverse, each user can have a virtual character known as a virtual avatar. The virtual avatar could exist in multiple 3D spaces of the Metaverse. For example, the numerous 3D areas may include virtual conference rooms, gaming fields, shopping complexes, doctor's clinics, etc. The user may experience each virtual 3D space using VR technologies, such as the Oculus VR headset. Also, the user may enter the virtual conference, play in the virtual field, experience shopping, etc., by using the VR technologies, all from the convenience of their home.

Next, let's discuss the NFTs and their role in the Metaverse.

What are NFTs?

NFTs are a type of cryptographic element. Unlike a cryptocurrency, which is a form of fungible token that is not unique, each NFT is unique and cannot be duplicated. The NFTs are related to different types of digital and physical assets, such as digital art, a hand-drawn painting, a 3D gaming character, social media posts, videos, etc. Although the copyright of an NFT always remains with the creator of the asset, a user can purchase an NFT to become its owner. It is similar to owning a traditional painting. For example, if you buy a painting, you can hold it but cannot claim its creation. Similarly, one can transfer the ownership of an NFT the same way. However, the creator will remain the same.

NFTs exist on a blockchain. The most common blockchain used for NFT is the Ethereum blockchain. Other blockchains used for NFTs include Solana, Avalanche, Binance Smart Chain, Terra, Cardano, etc. Each NFT comprises a unique digital signature linked to it. The NFTs are embedded with smart contracts containing details about the digital or the physical asset relating to the NFTs. Some famous NFTs are CryptoPunks, Bored Ape Yacht Club (BAYC), RTFKT, Decentraland, Sandbox, NBA Top Shot, etc.

Figure 1: Example of an NFT (Source)

Role of NFTs in the Metaverse

NFTs (also known as virtual collectibles) are valuable elements of the Metaverse. With NFTs, a person can experience the virtual world of the Metaverse as they do with the actual world. NFTs combined with the AR, VR and MR technologies in the Metaverse could provide the user with an entirely new experience.

The in-game assets can also be NFT-based. For example, the virtual avatar of the user can be an NFT. The virtual shopping complex could include various NFTs, such as in the form of art, sneakers, etc. The NFTs can be viewed in the virtual space and can be purchased by the user entirely within the Metaverse. Let's say the virtual avatar (which is NFT-based) enters the virtual gaming field, and the user can engage in the game using AR technology, the virtual avatar then enters the shopping complex and views products (which are NFT-based), such as the sneakers, paintings, and so on. Music can also be linked to NFTs. Within the Metaverse, the users' virtual avatars would be able to listen to music.

The integration of NFTs and Metaverse is already gaining immense popularity. NFTs are being sold for massive amounts based on the current market trend. People are increasingly becoming more inclined to purchase digital assets, such as NFTs. NFTs can be bought and minted using cryptocurrencies, such as Ether on the Ethereum blockchain. Thus, NFTs hold a great value in today's world. NFTs, in association with Metaverse, have significant economic growth and an entertainment value, both of which are important to a user.

In the next section, we will talk about the importance of IP in NFTs.

Importance of NFT IP Rights

An asset, such as an NFT, with substantial economic and technological importance, needs to be protected with IP. Intellectual property can be of different types, such as:

In the context of NFTs, we shall talk about two types of IP that need to be protected, i.e., trademark and patent.

1. Trademark for NFTs

Recently, many business owners have been showing interest in trademarking their NFTs. Trademarks allow the brand name or the associated logo to be protected. By registering their trademark, a user can prevent third parties from misusing their brand name. For example, if an unauthorized party tries to sell or mint an NFT that includes a registered trademark, such as a logo, then selling or minting such an NFT is an infringement of the owner's trademark. Thus, it is important for business owners, small and large, to trademark their NFTs to prevent infringement by unauthorized parties. One such example is a trademark filed by CONVERSE on November 3, 2021. Another example is a trademark filed by CLINIQUE on November 9, 2021.

2. Patents for NFTs

Each patent needs to be novel, non-obvious, and should have an industrial application. Thus, a new technology that is used to generate an NFT can be patented. For example, a virtual avatar based on an NFT could have specific characteristics. The virtual avatar could have distinct physical attributes and skills, which may be unique. The technologies for developing such unique virtual avatars could be patented if they meet the criteria of being "novel, non-obvious, and possessing industrial application." An example of an NFT-based patent is a patent filed by NIKE titled "video game integration of cryptographically secured digital assets." Another example is a patent filed by Americorp Investments titled "Management Of Virtual Goods In Distributed Multi-Ledger Gambling Architecture." Such patents can then be sold or licensed by the patentee (i.e., the patent holder) to monetize their patent.

The Way Forward

It can be stated that NFTs, in association with Metaverse, are here to stay and will contribute to the advancement of technologies in the future. It is of utmost importance that IPR should be kept in mind, especially for NFTs, where anyone can misuse them. Moreover, enough understanding of an individual's fundamental IP rights will benefit all who are engaged in selling or minting digital assets, such as NFTs. Furthermore, the hard work and ownership of the creators of the NFTs can be protected only when their IP is protected.

Sagacious IP believes that technology has the ability to change people's lives. We have been developing technology to provide high-quality intellectual property (IP) solutions for several years. Our team of 300+ techno-legal specialists provides unrivaled IP solutions to some of the biggest companies in the world. Our technology scouting service assists organizations in discovering exciting new technical trends and profiting from them by filing a patent or investigating licensing opportunities.

- Shikha Pilania (ICT Drafting & Prosecution) and the Editorial Team

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Metaverse and NFT IP Rights: Protecting your Digital Assets - Sagacious IP

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In today's world, where new technologies are emerging like never before, subjects like Metaverse and Non-Fungible Tokens (NFTs) have become the talk of the town. They represent a new horizon in the intellectual property space as well. The developments in the domain of Metaverse and NFTs call for the need to understand the value of Intellectual Property Rights (IPR).

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Legal Issues in Trademarks and How to Avoid Them

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Legal Issues in Trademarks and How to Avoid Them

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Every company needs to build brand recognition and awareness in order to succeed. A trademark identifies a brand or product by using a distinctive, legally registered sign, emblem, word, or combination of words. Due to the high expense and labour required in legal processes, it is important to avoid trademark legal difficulties such identical advertising, similarly spelled product names, and related items and services that could have legal repercussions. Businesses must always be on the lookout for trademark legal difficulties and must make every effort to avoid them.

To get more information, read the entire article about Trademark Legal Issues.

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For every business to prosper, it must establish brand awareness and recognition. With a distinct sign, logo, word, or combination of words that is legally registered, trademark serves as a unique identifier for a brand/product. At times, trademark legal issues, such as identical advertising, similar-sounding product names, and comparable goods and services might arise that could result in legal implications - this must be avoided given the huge cost factor/effort involved in legal proceedings. It is imperative for businesses to remain vigilant against any trademark legal issues and must strive to avoid them at all costs.

This article is an attempt to understand trademark legal issues in detail, the reasons behind such issues, best practices that can help reduce legal issues in trademarks, etc. But first, let us start by understanding the difference between a trademark and a brand since most people often make a common mistake in correctly identifying them.

Trademark vs. Brand

A brand is a name associated with a company's product and/or service that establishes positive image of the brand and evokes emotions of the end consumer. A trademark is a name, logo, color, sound, or phrase that helps identify a company or its products/services. Registering a mark offers legal protection for a brand. For example, the trademark "Nike," in combination with the Nike "Swoosh" (the company's logo), defines Nike shoes and distinguishes them from those created by other footwear brands like Reebok and Adidas. Similarly, the trademark "Coca-Cola" distinguishes the brand's dark-colored soda bottle from a competitor with a similar dark colored soda (e.g., Pepsi).

Thus, while a brand aids in identifying a company and its products or services, a trademark helps prevent competitors from copying the brand image or forging substantially similar identities to cause marketplace confusion. A variety of aspects make up a brand, such as identity, image, personality, character, culture, essence, and reputation.

The next step is to understand the legal issues involved in a trademark.

Legal Issues in Trademarks

In trademarks, legal issues can occur due to similar advertising, similar-sounding product names, and similar goods and services. The concerned authority's approval of a business name does not give trademark rights or permit a company to use the name commercially. Registering a similar domain name also does not provide any significant legal rights. A corporation may have incorporated under a name but can find itself responsible for several offences such as - trademark infringement/dilution, risking an injunction, disgorgement of revenues, payment of damages, and other consequences for using the name. Trademark infringement occurs when a registered trademark is used without the trademark owner's permission or any authorized licenses; whereas trademark dilution occurs when an unauthorized party uses a trademark in a way that tarnishes or weakens the image of a well-known trademark.

Whenever an application for the registration of a company is submitted, the concerned authority reviews the records to confirm that there is no other corporation or limited partnership with an identical or closely similar name. If such a corporation or limited partnership exists, the new name is generally rejected. It can occur even if the two organizations are in totally different fields of business; the sheer resemblance of the names prevents the second name from being used. On rare occasions, the former company's consent or a relatively minor name change, such as "ULTIGRA, INC." to "ULTIGRA SOFTWARE, INC.," may increase the chances of authorities allowing the new name. Thus, trademarks are complex and legal battles are at times unavoidable.

Reasons behind Legal Issues related to Trademarks

The number of legal issues related to trademarks, especially infringement, are increasing at an alarming rate. We will look at some of the most common reasons behind these:

1. Trademarks similar to Designation of Origin: Legal issues in trademarks often arise when a trademark applied for, or being used, is identical or similar to a Designation of Origin mark. As per the law, any trademark that is similar to a Designation of Origin mark cannot be registered or used.

2. Two companies using similar marks for same products/services: A legal issue may also originate from the similarity or closeness of the two companies' products or services. Two marks may be confusingly similar to each other and may fall within the same classification, or their services may be relatively similar. Using an identical mark on the same product would constitute infringement. For instance, if a new company manufactures and sells computers under the trademark "Apple," it will most likely cause confusion since consumers will be led to believe that Apple Inc. is selling those computers. If the marks are similar enough in sound, look, or meaning, using a very similar mark on the same goods can easily lead to an infringement claim.

3. Strength of the plaintiff's mark: The plaintiff's trademark indicates that the products or services come from a specific source, which is an important point to examine when considering whether the defendant's trademark is likely to cause confusion with the plaintiff's mark.Suppose the parties are not direct competitors, but their goods or services are related. In that case, numerous other considerations come into play in calculating the possibility of confusion. These factors include the mark's strength, the closeness of the goods, the resemblance of the marks, proof of real confusion, the categories of goods/services, the defendant's intent in choosing the allegedly infringing mark, and the possibility of product line growth.

Louis Vuitton vs. Louis Vuiton Dak is a great example of this. Louis Vuiton Dak is a South Korean fried chicken restaurant that lost out to the clothing designer - Louis Vuitton. The court found in favor of the designer, finding that the name of the restaurant - Louis Vuiton Dak - is too similar to the international brand name Louis Vuitton. In addition, the restaurant's logo and packaging were strikingly similar to the designer's trademark iconography. Thus, businesses are often advised to maintain a safe distance from well-known brand identities and avoid mirroring them.

Figure 1: Louis Vuitton vs. Louis Vuiton Dak

4. Likelihood of confusion: When trademarks and the goods and/or services for which they are used are similar, people may mistakenly believe they come from the same source. When two or more trademarks sound similar, are visually similar, and convey the same general commercial impression, they may confuse consumers.

Figure 2: Nike & Mike Logos

5. The degree of care: This pertains to the degree of care exercised by the consumer. Generally, a buyer making a very expensive purchase is more likely to be discriminating and is less likely to be easily confused by similar marks. The reason for this higher degree of care is that an average consumer buys an expensive item less frequently. Therefore, the courts assume that purchasers are likely to be more discriminating and source-conscious when purchasing real estate, insurance, or other "high ticket" items. Under these circumstances, the courts require a more substantial showing of similarity to justify a claim of likelihood of confusion. In the case of inexpensive items, the buyer may not exercise a high degree of care. Therefore, less similarity may be necessary to prove the likelihood of confusion.

Ways to Reduce Legal Issues in Trademarks

There are numerous practices that can help companies reduce legal issues related to trademarks. The three main approaches have been discussed below:

Register your Trademark: Trademark rights allow you to prevent others from using your trademarks to sell products or services. These rights also protect consumers because they can determine the origin of the goods or services. Thus, all businesses must register their trademarks well in time to avoid any complications in future.

Conduct a Trademark Search: Before registering or filing a mark, it is essential to do complete research of the trademark on a trademark database to find out any existing similar or confusingly similar marks. These marks can be a hindrance to the registration of the mark. If a particular trademark is confusingly similar to a registered trademark, then that registered mark is a source of the likelihood of confusion for the original mark. Therefore, it is crucial to do thorough research for the applied mark as this will save time and money.

Monitor your Trademark: Once the trademark is registered, the trademark owners need to keep a close check on the confusingly similar marks that are possibly being filed and take timely action against them.

Figure 3: McDonald's & McDowell's Logos

The next section enumerates how Sagacious IP's trademark search service can help you avoid legal issues.

Why Choose Sagacious IP for Trademark Search?

Many large and small businesses approach Sagacious IP for trademark search services to help them prevent any legal issues in the future. Our USP includes:

Proven expertise in trademark-related IP services

A dedicated staff of over 20 trademark experts

Thorough trademark searches on global, cluster-based, and local levels

Fast, accurate, and high-quality results

Cost-effective solutions

Customizable report formats

Flexible delivery schedules based on customer priorities

You can also read about how our trademark search service helped a Canadian law firm protect its IP.

Conclusion

Every organization should be aware of the seriousness of legal issues in trademarks and how they might harm the company's growth. Many legal problems can arise in the market for a particular product or trademark due to their similarity. To avoid such issues, it is necessary to do a pre-filing test, a systematic search to eliminate similar names, logos, icons, etc. Sagacious IP's trademark search service is designed to help businesses find similar trademarks in the same categories for similar goods and services. Our team of skilled trademark experts provides firms with quick and cost-effective trademark search solutions, assisting them in avoiding infringement and rejection of application. Get in touch now to know about all the intellectual property services offered by Sagacious IP.

- Swati Bahad (Trademark) and the Editorial Team

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Legal Issues in Trademarks and How to Avoid Them - Sagacious IP

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For every business to prosper, it must establish brand awareness and recognition. With a distinct sign, logo, word, or combination of words that is legally registered, trademark serves as a unique identifier for a brand/product.

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ST26 Sequence Listing Standard: Easing the Access to Sequence Data

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ST26 Sequence Listing Standard: Easing the Access to Sequence Data

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According to international filing guidelines, sequence listings must be included in every patent application that discloses nucleotide and/or amino acid sequences. With the implementation of the new ST26 sequence listing standard on July 1, 2022, it is anticipated that the data structure for automatic data exchange and verification between patent offices and biological sequence search databases will be improved. Although ST26 is a WIPO (World Intellectual Property Organization) initiative, it is up to individual patent offices to decide how open the new sequence listings on public portals should be. The present standard, ST25, did not permit automated validation and data transmission, hence a new listing standard was required.

To get more information, read the entire article about Sequence Listing.

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All patent applications disclosing nucleotide and/or amino acid sequences must include sequence listings as per international filing standards. A new sequence listing standard - ST26 - is coming into force from July 1, 2022, that is expected to improve the data structure for automatic data exchange and verification between patent offices and biological sequence search databases. Although ST26 is a WIPO (World Intellectual Property Organization) initiative, the decision on how accessible the new sequence listings on public portals should be is in the hands of individual patent offices. The need for a new listing standard arose as the current standard, ST25, did not support automated validation and data exchange.

This article will talk about the difference between ST25 and ST26, the shortcomings of ST25, the changes brought in by WIPO in the new standard, its benefits, and much more. But first, let us have a clear understanding of what exactly sequence listing is.

What is Sequence Listing?

The sequence listing is a part of the description of patent applications which includes nucleotide and/or amino acid sequence(s). It is a prerequisite for patents in the biotech space, such as inventions related to biomarkers, antibodies, oligonucleotides, etc. The sequence listings provided in patent applications must comply with the prescribed filing regulations to avoid any hindrance in the patent approval process. The sequence listing standard currently in practice is ST25.

Now that we have understood what sequence listing is, let us get to know the sequence listing-related rules that one must follow while submitting a patent application in the biotech domain.

Patent Rules regarding Sequence Listings

Here are some critical rules pertaining to sequence listings in patent applications:

Inventors must file sequence listing in computer-readable text format alongside every patent application, disclosing a sequence of nucleotides or amino acids.

If the international application discloses one or more nucleotide or amino acid sequences that are not furnished in computer-readable text format, then the Searching Authority would send a notice to the applicant to submit the same. The applicant also has to pay the late furnishing fee as specified in the Fifth Schedule within one month. In case the applicant fails to comply with the notice, the Searching Authority will proceed and search the international application without the sequence listing to a reasonable extent.

As mentioned earlier, a new sequence listing standard is coming into force from July 1, 2022. So, next, we will focus on the need for ST26.

Need for a New Sequence Listing Standard

The need for a new sequence listing standard stems from the shortcomings of the standard in current practice. These are mentioned below.

ST25 format did not comply with INSDC (International Nucleotide Sequence Database Collaboration) requirements.

The rules were unclear, and IP offices worldwide interpreted and enforced the laws differently.

ST25 rules did not cover sequence types that are common today (e.g., nucleotide analogs, D-amino acids, and branched sequences).

The data was unstructured.

ST25 format was challenging to use for automated validation and data exchange.

Now, let us understand the changes introduced through the new standard.

Sequence Listing Changes Introduced through ST26

Key changes brought by WIPO through ST26 are mentioned in figure 1 below:

Figure 1: Changes in Sequence Listing Introduced by ST26

Given below are some more changes made by WIPO through ST26.

.xml file types will be required to tackle data loss, and support exchange of data readable by humans as well as machines.

Further sequence annotation options will be available.

The names and options of the organisms will be updated.

Instead of single-letter codes, three-letter codes will be preferred.

The format of the feature location has been modified.

Mixed-mode sequences will not be permitted anymore.

The latest priority information (instead of all) can be incorporated.

Some more straightforward alterations regarding the language requisitions have also been made.

To enhance the understanding of the old and new sequence listing standards, let us highlight the key difference between the two.

How does ST26 differ from ST25?

Here's how ST26 has made the patent application simpler.

Type of Sequence
Sequences identified as RNA, DNA, or PRT only

Sequences identified as RNA, DNA, or AA along with a mandatory molecule type qualifier to further describe the molecule For RNA: Genomic RNA, mRNA, RNA, rRNA, transcribed RNA For DNA: Genomic DNA, unassigned DNA For AA: Protein

Table 1: Differences between ST25 and ST26 Listing Standards

Benefits of ST26 Sequence Listing Standard

The many benefits of the ST26 standard are mentioned below.

The new standard will permit applicants to create a single sequence listing in a patent application for international or national purposes, or regional procedures.

ST26 will enhance the accuracy and quality of the presentation of sequences.

It will facilitate the searching of sequence data.

It will allow sequence data to be exchanged electronically and introduced into computerized databases.

ST26 will ensure agreement among IP offices.

It will boost the automation of data validation and streamline processing by IP offices.

Submission quality will improve due to the structure of XML sequence listings.

Preparing ST26-Compliant Sequence Listings

One can use the WIPO Sequence tool to convert old ST25 TXT sequence listings into the new ST26 XML format. This responsibility of sharing sequence listings as per the new standard rests with the applicant, as the Patent Office does not perform the conversion. One can also use WIPO Sequence to check for errors in the ST26 sequence and view the new standard's XML file in a human-readable format in the browser.

About WIPO Sequence

WIPO Sequence is a global software tool that allows patent applicants to prepare amino acid and nucleotide sequence listings compliant with the WIPO ST26 standard as a part of a national or international patent application. Here are some key features of WIPO Sequence:

The tool developed by WIPO supports authoring, validation, and generation of ST26 compliant sequence listings.

It eliminates the need to edit XML files.

One can save sequence information in a project, validate it, and generate a sequence listing in the ST26-compliant format.

It supports importing data from ST26 sequence listings, ST26 projects, ST25 sequence listings, multi-sequence format files, raw format files, and FASTA format files.

The tool allows validation of sequence listings in XML format.

It supports the export and import of XLIFF files used by translators.

Conclusion

Patent applications in the biotech domain require sequence listing in a standard format as prescribed by WIPO. Previously, the applicants used to follow the ST25 standard, whereas from July 1, 2022, a new standard, ST26, will come into force. The purpose of shifting from ST25 to ST26 is to enhance presentations accuracy and quality, facilitate sequence data searching, and allow the sequence data to be exchanged electronically.

Failing to comply with WIPO's sequence listing standards can result in the rejection of a patent application. Sagacious IP's team of patent experts can help you prepare sequence listing compliant with the latest guidelines. Visit our sequence listing service page to know more.

- Pooja Chhikara (Life Sciences) and the Editorial Team

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ST26 Sequence Listing Standard: Easing the Access to Sequence Data - Sagacious IP

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All patent applications disclosing nucleotide and/or amino acid sequences must include sequence listings as per international filing standards. A new sequence listing standard - ST26 - is coming into force from July 1, 2022, that is expected to improve the data structure for automatic data exchange and verification between patent offices and biological sequence search databases.

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How Our Trademark Landscape Search Service Helped A Fortune 500 with Competitor Analysis

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How Our Trademark Landscape Search Service Helped A Fortune 500 with Competitor Analysis

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To keep a competitive edge, businesses must comprehend and track trademark trends. It can help you make the best business decisions, monitor competitor IP, and maximise R&D efforts on new products and markets. To achieve these goals, businesses frequently engage internal or external IP teams to conduct trademark landscape searches. With the right study, businesses may discover comprehensive details on current trademark trends, comprehend the state of their rivals' trademark portfolios, and create successful marketing and trademark filing plans.

To get more information, read the entire article about Trademark Landscape.

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Understanding and monitoring trademark trends is critical for companies to maintain a competitive edge. It can help optimize R&D efforts on new products and markets, keep track of competitor's IP, and take the right business decisions. Which is why companies often carry out Trademark Landscape Searches through in-house or external IP teams to meet such objectives. With proper analysis, they are able to find in-depth information on current trademark trends, understand the status of competitors' trademark portfolios, and formulate effective marketing and trademark filing strategies.

Depending on one's needs and circumstances, Trademark Landscape Search can be performed in a particular country, region, or globally. Our latest case study article sheds light on our Trademark Landscape Search Service which recently helped a Fortune 500 company learn about its competitors' trademark portfolio and their trademark filing strategies in major industries and markets.

Client Overview and Problem Area

Our client - an American multinational consumer goods company, is a global leader in a wide range of personal health/consumer health, hygiene, and personal care products since many years. The product portfolio was divided into several segments, such as grooming, beauty, healthcare, fabric & home care, baby, feminine, and family care.

The company's focus area was to monitor its competitors' trademark filings and the strategies they were using for filing trademarks in different markets. The client wanted to know the market trends, and what products their competitors were launching in the key markets.

The project was comprehensive as each competitor had multiple subsidiaries and brands in many markets. Sagacious IP supported the client in various brainstorming sessions on the Trademark Landscape Search. During these sessions, it was decided that the Trademark Landscape Search Report (TLSR) would include Trademark Name, Key Markets, Product Category, Design, Application Number, Application Date, Registration Number, Registration Date, Type of trademark, Owner Name, Classes of Goods & Services, etc. Some other elements were also added at a later stage after further discussions.

How did Sagacious IP help the client?

We began by fully understanding the client's needs. The idea here was to conduct a comprehensive Trademark Landscape Search and provide all essential information in the TLSR. As per the client's request, our team:

Fetched the required data for the countries/key markets shared, filtered critical data for each market, and prepared a preliminary search report for the client to review.

Searched for all relevant subsidiaries.

Provided a detailed Trademark Landscape Search Report and a PowerPoint presentation with the help of our trademark experts.

Categorized all the results as per the client's requirements.

This was a major Trademark Landscape Search project which covered multiple brands, categories, and product lines. Sagacious IP's trademark team sifted through more than 100,000 results during TLSR preparation. The graphic below shows the categories for Trademark Landscape Search:

Figure 1: Categories for Trademark Landscape Search

Sagacious IP provided impactful, detailed trademark landscape information along with graphical representations to simplify the report findings. This information can help understand trademark trends and competitors' trademark filing strategies in the key markets to make critical R&D decisions.

Result

Our trademark team was given a tight deadline of mere five weeks to deliver the project. However, we were able to successfully gather all the data and create a thorough Trademark Landscape Search Report well on time. The client further requested a few additions to the report, which were promptly addressed.

The report helped the client understand the trademark landscape for different markets and industries, and make critical R&D decisions regarding their business and trademark portfolio. The subsequent customizations made in the TLSR were appreciated with overall satisfaction of the project delivery.

Final Thoughts

Trademark Landscape Search is a great way to understand the trademark market and competitors' IP strategies. The search also helps in knowing what new products a competitor plans to launch in different classes of goods & services. The Trademark Landscape Search and Analysis Service also helps the research and development team make the right decisions regarding marketing and company growth. It is a valuable tool that combines data from various sources to find the latest trends and uncover competitor trademark applications, strategies, and new opportunities across various categories and countries, allowing clients to better align their business and trademark-related R&D efforts.

- Gopal Singh Rawat (Trademark) and the Editorial team

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How Our Trademark Landscape Search Service Helped A Fortune 500 with Competitor Analysis

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Understanding and monitoring trademark trends is critical for companies to maintain a competitive edge. It can help optimize R&D efforts on new products and markets, keep track of competitor's IP, and take the right business decisions. Which is why companies often carry out Trademark Landscape Searches through in-house or external IP teams to meet such objectives.

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Patent Monetization – Making the Most of Your Portfolio

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Patent Monetization – Making the Most of Your Portfolio

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While many businesses have accumulated sizable patent portfolios, few few are able to profit from them. This is true even though it's possible that some of these assets could help the company earn sizable sums of money. Nevertheless, they are largely unused financially as they sit on the shelf. In these situations, businesses frequently need strategic advice on how to best monetize their patents to increase revenue. The best method in this case to attain this goal by licencing or selling is patent monetization.

To get more information, read the entire article about Patent Monetization.

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While several companies have amassed significant patent portfolios, very few actually end up making money from them. This is despite the possibility that some of these assets might have the potential to generate massive revenue for the company. Nevertheless, they sit on the shelf mostly unutilized monetarily. In such cases, organizations often require strategic guidance in understanding how to monetize their patents to maximize their income. Patent monetization is the ideal process here, through which they can achieve this objective through licensing or selling.

This article is a comprehensive discussion on patent monetization and how it has become a valuable resource for companies trying to increase their revenue. It also explores popular patent monetization strategies and how one can properly choose one of these.

What is Patent Monetization?

A patent serves as a declaration of a patent holder's ability to benefit from their invention. However, the mere possession of patent rights does not guarantee a steady flow of income. The process of monetizing a patent generates income from an intangible asset - the patent.

Patent monetization is when an inventor or company sells or licenses patents to generate income. IP monetization looks different for each patent and industry. Only market pre-emption and transactions can make a patent valuable.

For certain businesses, patent monetization has emerged as a lucrative revenue stream with the potential to generate large amounts of money in the short or long term. For companies with an extensive portfolio, patent monetization is a standard activity.

After understanding the meaning of patent monetization, let us now take a look at its importance for any inventor or business.

Why is Patent Monetization Important?

A patent enables its owner to convert the invention into a marketable asset by conferring certain legal rights. Businesses frequently re-evaluate and modify their business strategies to continue making money and avoid losses because it creates new revenue sources for the company. Patent monetization is essential in this situation. Moreover, without expert guidance, organizations frequently struggle to select the best monetization approach. Strategic advice from patent practitioners can help these entities choose the best strategy to achieve their business goals. Additionally, the right patent monetization approach can help a business generate income from an idle patent without losing the patent rights (through licensing, enforcement, etc.).

Patent monetization may sound like a straightforward concept, but its practical application can be tricky. The next section delves into the various steps involved in patent monetization.

Process of Patent Monetization

There are numerous ways to monetize patents, but the following are the most common steps involved in the process:

Figure 1: Process of Patent Monetization

1. Identifying Patents for Monetization: It is not easy for organizations with extensive patent portfolios to choose the patents that can be sold, licensed, etc., without any complications. Patent monetization begins with identifying the valuable patent assets by studying the market and determining the most significant IP assets as per the business strategy. This is one of the key steps in monetizing patents since it helps the business decide which technologies within a patent portfolio are most likely to have commercial value.

2. Patent Valuation: It is the method to determine a patent or patent portfolio's actual market worth. Before monetizing any patent, businesses and inventors must perform patent valuation as it helps them decide whether to proceed with monetization or not.

3. Planning: Once the patent(s) for monetization are selected and their approximate market value is ascertained, a team of experts assimilates the information. Afterward, the team works on one or more strategic plans until it selects the best one.

4. Execution/Finalization: After selecting a strategy, it is time to implement initiatives. This step can also include government representatives carrying out necessary legal tasks to complete the deal.

The following section will go through some of the most popular monetization strategies available for businesses and individual inventors.

Best Patent Monetization Strategies

Implementing the right patent monetization strategies can open a new gateway for generating cashflows directly from the patent. The four most successful strategies for monetizing patents are as follows:

Figure 2: Popular Patent Monetization Strategies

1. Manufacturing

Before beginning the manufacturing phase, the majority of innovators choose to patent their innovation or concept. Businesses can determine whether to pursue manufacturing by using the aspects mentioned below.

Choosing a Manufacturer: Most start-ups and individual innovators lack manufacturing facilities. Hence, they rely on third parties to produce their products. The signing of non-disclosure agreements is one of the additional complications involved with this. Similarly, unlike giant corporations, start-ups and individual inventors usually do not have the resources or capacity to take calculated risks to build a product. If the patent holder chooses to go into manufacturing through a third party, they should employ a business with proven expertise in manufacturing products in the industry.

Quality Assurance: Using an outside or external manufacturer raises issues with maintaining product quality during manufacturing. To keep its competitive advantage, the patent holder must ensure the maintenance of quality standards.

Marketing and Advertising: Many individual patent owners outsource their marketing efforts to other companies since they might not have the necessary resources or infrastructure to invest in marketing and promotion.

Money and Cash Flow: Due to expensive inventory and logistics, an individual inventor or start-up needs to have enough operating capital and cash flow to engage in product manufacturing as a form of monetization.

2. Licensing

Due to the higher risks associated with production, businesses, particularly start-ups, prefer to license their patents. It is less risky and more affordable than other ways of generating revenue through patents since the patent holder does not need to worry about marketing or manufacturing. The licensee is usually in control of these business aspects. The following is a list of the factors to take into consideration while licensing a patent:

Restricted Transfer of Rights: The fact that patent owners can transfer their patent rights in a limited manner is one of the most important benefits of non-exclusive licenses. The licensee then uses these limited rights to produce goods with the proprietary technology, giving the patent owner a risk-free way to make money.

Cross-licensing: This method entails the exchange of certain patented technologies between businesses to create a specific product without infringing on each other's IP. Such cross-licensing partnerships are typical in the semiconductor industry, where businesses trade patented technologies to produce their original goods.

Patent Pools: Licensing can also be advantageous in patent pools, where several organizations share their patented technologies related to a specific standard or a well-liked technological field. Due to the decreased likelihood of infringement, all involved companies can earn income off their patents. Additionally, it lowers the transaction costs associated with obtaining licenses from various parties independently.

Royalties: Whenever patent owners grant an exclusive license to a third party, they are entitled to royalties, representing a portion of the licensee's sales revenue from goods utilizing the patented technology. As a result, licensing eliminates all the difficulties associated with manufacturing, allowing the patent owner to reap the rewards of royalty payments without making extra investments.

3. Selling Patents

This is another option available to patent owners who wish to monetize their innovations. It helps them make a one-time profit from their IP. The original patent owner forfeits all rights to a patent when they sell it to a third party. Therefore, thorough due diligence is vital before taking such a step to determine whether the transaction will be advantageous in the short and long term. Before beginning the patent sale, we advise you to consider the factors listed below:

Changing to a New Technological Domain: A company that holds a patent may adopt newer technology, making a previous patent obsolete in terms of its economic value. In those circumstances, the company needs to sell the older patent at an appropriate price.

Competitive Advantage Over a Rival: Certain older patents can still remain valuable to a competitor, so it is advisable not to sell every old patent. Even if a patent does not bring value to the owner, selling it might cause harm to the business. Therefore, it is essential to know if the patent provides any protective function for the owner against competing enterprises.

Patent Valuation: Before selling any patent, it is necessary to do a patent evaluation to determine the genuine value of the invention. The value of a patent to be sold can be precisely determined using various patent valuation techniques.

4. Enforcement

The patent's claims that specify the scope of the invention, must be carefully examined to ascertain whether there has been a patent infringement in the market. If the infringement exists, then the patent owner can enforce his/her patent rights to generate additional revenue. When infringement is established, the court orders the infringing party to pay royalties based on past use of the patented technology along with other damages to the patent holder. One of the most powerful options for patent monetization, enforcement also comes at a huge cost. If not strong enough, the patent is likely to be overthrown or invalidated, causing the patent owner more harm than good. Therefore, this option should only be considered when you are sure that you have a strong patent that would easily pass the invalidation test.

Before deciding on any patent monetization method, it is advisable to develop the right mindset and understanding since each strategy has its perks and drawbacks. The appropriate strategy can increase the revenue streams needed to grow the company. The section that follows next will go over the practices essential for effective patent monetization.

Best Practices for Patent Monetization

Developing a thorough, doable, and practical patent monetization plan is critical. Following are a few best practices that you can adopt when opting for patent monetization:

Defining Goals: The first and most crucial step in ensuring effective patent monetization is setting goals. Businesses can have a variety of objectives for monetizing patents, including generating income by selling, licensing or enforcing, or organizing and recovering R&D expenditure to sustain a competitive edge. Without clear goals in mind, it can be tremendously challenging for the in-house or outside counsel to achieve the desired result from patent monetization.

Discovering the Right Patents (Core vs Non-Core) to Monetize: The patent monetization process begins with thoroughly analyzing a company's patent portfolio. It is one of the most significant aspects of the entire patent monetization process as it helps discover which technologies in a patent portfolio are likely to be economically useful. This involves distinguishing non-core patents from core patents and using the former to establish additional cashflow.

Using the Right Criteria for Picking Patents to Monetize: Several factors must be taken into consideration before deciding which patents should be monetized. Each patent monetization service provider may have different standards to satisfy its unique objectives. A business may employ the following standards:

1. How much is the patent worth?

2. How solid are the claims made in the relevant patents?

3. Is there any patent infringement happening in the market?

4. Does the relevant patent cover the client's core or non-core technology?

5. What are the market-based pricing mechanisms for IP?

Formulating Strategies for Patent Monetization: Since there are many strategies for monetizing patents, including direct licensing, enforcement, etc., a business should strive to pick the most suitable strategy. The right choice can help the business maximize revenue generation while sustaining a competitive advantage over other players in the market.

The next section highlights some of the best patent monetization techniques that businesses can utilize to generate revenue.

Techniques for Patent Monetization

Reducing Maintenance Costs of Patents: It can be challenging for businesses to maintain a sizable patent portfolio since some patents may be outdated or no longer have the same competitive edge over other technologies today. It is preferable to let such IP lapse to avoid the unnecessary strain of paying yearly maintenance costs. Many intellectual property experts recommend companies or inventors revoke any patent that would not increase revenue today or in the near future.

Third-party Licensing: Another successful technique now being employed by businesses to monetize patents is third-party licensing. Here, companies grant licenses to third parties in exchange for the agreed-upon monetary compensation. The license holder has permission to utilize the inventions that the patent holder owns to produce, sell, import, or otherwise use the relevant technology. Apple, IBM, Microsoft, Qualcomm, Nokia, Kodak, Hewlett-Packard, Intellectual Ventures, Acacia, Texas Instruments, Conversant, NTP, and other companies generate billions of dollars every year just by licensing their patent rights to third parties.

In-licensing & Out-licensing: The terms "in-licensing" and "out-licensing" are commonly used in the marketing of drugs. Even though a company might conduct clinical trials to develop a medicine, it might not find it beneficial or feasible to produce and market the drug globally. Therefore, corporations typically out-license these pharmaceuticals to other businesses in a particular region. Usually, the licensees pay the inventor an in-licensing fee in exchange for the commercialization rights.

Patent Securitization: Even in developed countries, borrowing/lending partially or entirely against IP assets is a relatively new practice. However, it is becoming more common to use IP as collateral for commercial loans and bank funding, particularly in the music industry, Internet-based SMEs, and high-tech industries.

Acquisitions and Mergers: Two businesses with complementary patents and technology can pursue acquisitions and mergers to increase their market penetration. This method has also become one of the most effective ways for businesses to monetize patents. For instance, a beer company might decide to acquire a smaller rival brewery, allowing the smaller business to increase production and increase sales to its brand-loyal customers.

Donating Patents: Another significant method of monetizing patents for businesses with sizable patent portfolios is to donate them to universities, research organizations, and other public entities. Donations can result in significant tax benefits and may also allow businesses to improve their connections in early-stage research in universities.

Let us now examine a few common mistakes that occur while monetizing patents.

Common Mistakes During Patent Monetization

For many people, organizations, and corporations, monetizing patents has proven to be the most effective method for generating vast or regular sources of income. However, several errors frequently occur in one way or another and result in a significant loss. Some of the most common mistakes in patent monetization are mentioned below:

Wrong Strategy Selection: There are numerous patent monetization strategies available for inventors and businesses. The patent's technological background and the inventor's expertise play a key role in selecting the right strategy. The decision to use a particular monetization technique, such as licensing, litigation, acquisition, etc. is entirely up to the inventor or owner. Even choosing a monetization strategy needs some form of financial commitment. Many inventors/businesses pick the wrong monetization strategy and end up losing more than they gain.

Not Understanding the Right Worth of the Patent: Before engaging in a license negotiation or legal action, one common mistake is failing to comprehend the value of your patent. If this happens, you could end up licensing a key piece of intellectual property for much less than its market value.

Incomplete or Ineffective Analysis of the Market and Industry: A patent analysis considers comparable patents based on similar market transactions to assess the patent's utility and technological specificity. However, such analysis is not always reliable as all technologies are different, and it is immensely difficult to gauge the impact of technology with certainty. An expert IP professional can provide correct advice at this juncture.

Not Consulting an Expert: It is preferable to seek advice from a competent, experienced, and efficient IP consultant who can assist with complicated procedures like IP valuation, patent litigation, revenue strategies, buyer identification, patent codes, technological knowledge, and patent laws, as well as studying international databases to increase the inventor's work's value and quality simultaneously. Without in-depth market knowledge and technical expertise, monetization cannot proceed profitably.

Impatience: This is quite common while monetizing patents. The monetization process is highly sluggish and must be done carefully. Otherwise, this error could cost the patent holder a lot of money. Therefore, by avoiding these typical errors, patent owners can increase their income significantly and enable their property to realize its full financial potential.

Systematic IP Valuation: Patent owners frequently skip performing an IP valuation, which can be greatly helpful in determining the worth of your patent. When calculating a patent's current value, the nature of the innovation and competition analysis must be considered. IP valuation can be used to determine the best price for your patent. You can get paid less if you do not know how much your patent is now worth. It includes extensive market knowledge, which is essential for the patent's fundamental operation in relation to the market.

Partnering with the Right Company: It is not easy to traverse the path of patent monetization on your own because it encompasses many technical and non-technical components and calls for idea brainstorming. To monetize your patents, the proper firm must have a comprehensive understanding and practical experience. Choosing the correct organization to partner with can assist you in achieving the highest ROI.

Sagacious IP has proven expertise in helping businesses monetize their patents. In the following section, we will go over several reasons why Sagacious IP is a great partner for you.

Why Choose Sagacious IP for Patent Monetization Service?

Below are some reasons for selecting Sagacious IP as your patent monetization partner:

Flexible method for valuing patents in any technology field.

Proven track record of identifying the correct patent value using relevant technologies and tools.

Quick, precise, and cost-efficient results to optimize your R&D efforts, improve your intellectual property rights, and increase your income, stock market performance, and reputation.

Years of experience in supporting industry leaders in patent monetization.

Ability to comprehend the claims from an infringement standpoint and to recommend changes based on our expertise.

Adept in advising claim adjustments, including the addition, removal, or rephrasing of elements to better reflect market products.

All these reasons and many more make Sagacious IP the first choice for many large and small businesses seeking to monetize their patents.

Final Thoughts

Creating a successful patent monetization plan is essential for businesses with a sizable portfolio of patents. In addition, organizations with a handful of patents can also benefit from it. Companies who wish to increase their revenue can utilize patent monetization, even though it is challenging and time-consuming. Individual inventors, start-ups, and major corporations should consider one of the aforementioned strategies for generating income from their patents. The decision should made carefully, and preferably with the help of experts.

Sagacious IP provides end-to-end assistance with the licensing and selling of patents and patent portfolios and advice on patent monetization strategies. Our patent attorneys are dedicated to providing the most affordable ways to monetize patents. Click on the Link for additional details on Patent Monetization.

- Honey Mago (ICT Licensing) and the Editorial team

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Patent Monetization - Making the Most of Your Portfolio

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While several companies have amassed significant patent portfolios, very few actually end up making money from them. This is despite the possibility that some of these assets might have the potential to generate massive revenue for the company. Nevertheless, they sit on the shelf mostly unutilized monetarily.

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Provisional vs. Non-Provisional Patent Application: Which One to Pick?

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Provisional vs. Non-Provisional Patent Application: Which One to Pick?

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With the USPTO, a patent applicant has the choice to submit either a provisional or non-provisional patent application (USPTO). Making the proper choice at the appropriate time is critical for applicants since it can either assist the application process get started or result in rejection.

To get more information, read the entire article about provisional vs non provisional patent.

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Provisional vs. Non-Provisional Patent Application: Which One to Pick?

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A deep understanding of provisional vs non provisional patent applications can help you make the right choice at the time of patent

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Aligning Comparative Advertising Strategy to Avoid Trademark Infringement

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Aligning Comparative Advertising Strategy to Avoid Trademark Infringement

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Comparative advertising frequently has an impact on consumer behaviour. It functions by contrasting the advantages of the advertised good or service with those of a rival. Comparative advertising is defined by UK law as any advertisement that "explicitly or by implication, identifies a competitor or goods or services offered by a competitor," however Indian law is quiet on the topic. This makes it possible to fairly compare a product's attributes to those of a rival. But it also leaves room for possible trademark violation.

To get more information, read the entire article about Trademark Infringement.

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Consumer behavior is often influenced by the use of comparative advertising. It works by comparing the features of the advertiser's product or service with those of a competitor. While the Indian legislation is silent on its definition, the UK law describes comparative advertising as any ad that "explicitly or by implication, identifies a competitor or goods or services offered by a competitor." This allows an honest comparison of product features with those of a competitor. However, it also opens doors to potential trademark infringement.

Comparative advertising is a marketing strategy that is followed by businesses the world over. Its usage, though, needs careful deliberation so as not to lead to any trademark-related infringement or product disparagement. In this article, we will explore the concept of comparative advertising, trademark infringement in comparative advertising, case study example, Indian laws on comparative advertising, etc.

What is Comparative Advertisement?

Advertisements that compare a brand's products or services with those offered by a competitor are known as comparative advertising, aggressive advertising, or knocking copy. It helps the consumer see different products' price, quality, value, or other merits, enhancing consumer awareness. These should not be confused with parody advertisements, where a fictional product is advertised to make fun of an ad, nor should it be confused with using a coined brand name to compare the product without naming the competitor.

Moreover, a critical provision is attached to such advertisements to ensure that these ads curb misinformation. However, there is always a risk if consumer awareness is entrusted to brands with vested interests. Also, an advertising war can occur when competing brands exchange comparative or combative advertisements mentioning each other.

Comparative advertisements often include competitor names or logos to help viewers identify brands being compared. However, such names or logos might be protected through trademark, and their improper use can result in trademark infringement. Before continuing our discussion on a comparative advertisement, let us explain the two concepts briefly.

What are Trademarks and their Infringement?

It is a mark that can distinguish the goods or services of one brand from those of others, and includes shapes of goods, their packaging, and a combination of colors. A trademark can be any word, name, device, symbol, or combination adopted for this purpose.

The Trademarks Act, 1999 of the Indian legislation protects trademarks. It deals with protection, registration, and penalties against trademark infringement. Trademarks are critical in building and maintaining the identity and value of a brand. Thus, organizations, both international and national, endeavor to protect intellectual properties such as trademarks.

Trademark infringement is an unauthorized usage of a registered or deceptively similar trademark. The term 'deceptively similar' means when an average consumer looks at the mark, it can confuse them about the origin of the product or service.

Comparative Advertising, Trademark Infringement and Product Disparagement

Comparative advertising is quite effective in delivering a memorable message to the audience. It can change how a consumer views a product and generate sales. If the market for a product is well-defined, then comparative advertising can differentiate the product from the competition. However, it is equally risky.

If an advertiser uses a trademark of a competitor to make a comparison between its products/services and those of its competitors', and in the process disparages them, then such an act would not only invoke issues related to product disparagement but would also invoke issues related to trademark infringement.

Indian Laws on Comparative Advertisement

Section 29 (8) of the Trademark Act, 1999 discusses situations when the use of a trademark in advertising can constitute infringement. It says that any advertising not following honest practices, damaging the unique character of a trademark, or harming the reputation of a trademark, constitutes trademark infringement.

In addition, Section 30 (1) of the act makes comparative advertising an exception to trademark infringement. It says that any advertising following honest practices and not harming the distinct character and reputation of the trademark does not amount to infringement of the mark. Thus, comparative advertising utilizing another's trademark is permissible; however, that does not give the advertiser the right to disparage the goods or services of another brand.

Any such act disparaging the goods or services of another shall not only be an act of trademark infringement but shall also be an act of product disparagement. Dishonest practice entails the use of derogatory statements or claims that mislead consumers. The understanding of a sensible reader or consumer helps determine if the ad falls under the pretense of being honest.

Comparative advertising advocates often argue that trade rivalries and economic battles should remain in marketplaces, but the courts are resistant to this proposition. Moreover, the courts have also condemned the acts of 'generic disparagement,' where an advertiser does not disparage the products of a particular brand but the class of the products or service altogether. Understandably, market forces and fierce competition make way for comparative advertising. However, this cannot allow product disparagement.

Apart from trademark laws, the Advertising Standard Council of India (ASCI), also allows for competitive advertising that does not violate confidentiality, is based on facts, and does not confuse potential buyers.

Judiciary on Comparative Advertisements

Judicial statements have also explained that it is harmless to compare products with competitors. But the comparison should be fair and not defame the competitor's products or trademark, i.e., comparative advertising is permissible. Still, comparative advertising is leading to product disparagement. This case is similar in almost all the countries that permit using another's trademark in comparative advertising.

Case Study

In Duracell International Ltd. Vs. Ever Ready Ltd., an advertisement mentioned the corporate name of the competitor, Duracell Batteries Ltd., while depicting the distinct appearance of a Duracell battery and did not mention the brand name. Hence, the defendant was cleared of infringing on the brand name. Moreover, Duracell had registered the distinct appearance of its battery as a trademark (copper and black colors). However, the plaintiff used white and black colors in the advertisement. Hence, the defendant had also not infringed that trademark.

Scope of Comparative Advertising

At first, comparative advertising was considered as free-riding on other traders' goodwill and thus was treated as an infringement upon the owner's rights. Yet, the current law allows for comparative advertising with certain limitations. The law can be summarized as follows:

Even if the declaration is not foolproof, a brand has the right to reasonably declare its products or services to be the best.

The brand can also say that its products and services are better than its competitors, even if it is not a foolproof declaration.

The brand can compare its products/services with another brand's products/services to prove the above statement.

However, while stating the products are better than the competitors, the brand cannot say that the competitors' products are bad or harmful as it may amount to defamation.

In case of defamation, the aggrieved party has the right to initiate legal action against the advertiser and seek recovery of damages. The Court may also pass an injunction order against the advertiser.

Key Elements to Establish Product Disparagement

The following key elements are essential to succeed in case of product disparagement:

Figure 1: Key elements to establish product disparagement by the plaintiff

A false or misleading factual statement is made about the product.

The statement either deceives or can deceive a substantial segment of the potential consumer.

Deceptive material that is likely to influence consumers' purchasing decisions.

Conclusion

Comparative advertising is undoubtedly beneficial as it boosts consumer awareness and enables an advertiser to establish a brand in the market by stating its superiority over existing brands. However, there are regulations to check exploitations. Even if courts accept the proposition that trademark rivalries should be settled in the market, their inability to decide which product is better will cause massive prejudice to the public interest. Since the question is about public awareness and not about the product.

To save trademarks from being infringed and misused, experts suggest availing trademark monitoring service. Sagacious IP, one of the leading providers of IP consulting and research services, offers trademark monitoring services to help brands protect their value. Its team of IP experts serves clients from all over the world. Visit the service page to know more.

- Sameeksha Shukla (IP Filing and Prosecution) and the Editorial Team

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Aligning Comparative Advertising Strategy to Avoid Trademark Infringement

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Consumer behavior is often influenced by the use of comparative advertising. It works by comparing the features of the advertiser's product or service with those of a competitor. While the Indian legislation is silent on its definition, the UK law describes comparative advertising as any ad that "explicitly or by implication, identifies a competitor or goods or services offered by a competitor."

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How to use Technology Landscape Analysis For Tech Credentialing?

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How to use Technology Landscape Analysis For Tech Credentialing?

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The likelihood of success is increased by performing a thorough analysis prior to entering a market, such as a
Technology Landscape Analysis. The key findings of such an investigation aid people in making informed choices. The crucial information is made clear, including the current status of the market, the level of competition, the organization's place in the market, and many other things.

Our most recent case study discusses one such instance when our Landscape Search service helped a customer get the necessary information about the business and make a definite decision regarding the improvement of their product.

Read the entire article-Technology Landscape Analysis.
https://sagaciousresearch.com/blog/using-technology-landscape-analysis-for-tech-credentialing/
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Using Technology Landscape Analysis For Tech Credentialing - Sagacious IP

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Conducting a comprehensive analysis, such as a Technology Landscape Analysis, before entering a market ensures success to the greatest extent

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LG’s Smartphone Patent Portfolio – A Treasure Hunt

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LG’s Smartphone Patent Portfolio – A Treasure Hunt

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With nearly six years of consistent losses, LG Electronics' decision to close its mobile phone division was unavoidable. While many would not have predicted a complete shutdown of the bleeding business unit, the pandemic and current economic conditions only added to the inevitability. The news broke on April 5, 2021, and LG finally announced the closure of its mobile phone business unit. Since then, there have been numerous rumours about decisions concerning their otherwise robust patent portfolio.
Read more about this article-patent portfolio.
https://sagaciousresearch.com/blog/lg-smartphone-patent-portfolio-treasure-hunt/

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With almost six years of consistent losses, a business decision to close the mobile phone division of LG Electronics was inevitable. While many would not have expected a total closure of the bleeding business unit - the pandemic and the current economic state only added to the inevitability. On 5 th April, 2021, the news hit the headlines and LG finally announced the closure of its mobile phone business unit. Since then, there have been continuous speculations around decisions pertaining to their otherwise strong patent portfolio.

In this article we will understand the portfolio strength of LG and how its competitors can gain from it.

Portfolio strength of LGE

Besides the ever scouting Non-Practicing Entities (NPEs), LGE's competitors have already initiated their acquisition attempts. As reported by Korea Times, "A lot of NPEs have approached LG Electronics for the possible acquisition of its 5G mobile patents." No doubt, such advances to acquire a desired technology patent set from its ocean-strong portfolio are worth the labor. The strength of LGE's patent portfolio is implicit from its top rank in global 4G standard patents for four consecutive years (2012 to 2016). Looking at the numbers, the Asian technology giant has 22,501 alive/granted patent families in its US portfolio. This is numerically greater than Apple Inc., which has a total of 17,467 alive/granted patent families in its US portfolio. However, this numeric comparison should not be substantiated to draw any correlations about their respective portfolio valuation or technology landscape.

A deeper dive into LGE's mobile phone portfolio

The LGE mobile phone business and its underlying patent portfolio may be categorized into two segments:

1. Patents disclosing communication technologies and all the relevant SEPs.

2. Patents disclosing smartphone features and functionalities.

A lot of discussion around the technology and IP circles centers around the first set of patents, including its revenue generating SEPs. But LG has clearly hinted about retaining the communication technology patents and the corresponding SEPs in its official announcement and stated:

" LG will continue to leverage its mobile expertise and develop mobility-related technologies such as 6G to help further strengthen competitiveness in other business areas. Core technologies developed during two decades of LG's mobile business operations will also be retained and applied to existing and future products."

Basis the above official note, the second set becomes important and obtains focus. There are more than 10K active US utility patents for mobile phone features and functionalities.

For example, figure below illustrates LGE's US patent filings/grants from the second set of patents (2015 to 2019).

Figure 1: LGE's smartphone patent filings/grants in US

The above data showcases the freshness of LGE's mobile phone patent portfolio and anyone and everyone in the IP industry can unquestionably recognize its applicability in future smartphone technologies.

Mining the gems

Driven by our research pursuits, an analysis was conducted to uncover some of the finest gems from LGE's smartphone portfolio. While ranking the mined patent portfolio, using an in-house proprietary tool, the top-ranked patents were found to be applicable against leading smartphones. A snapshot of the ranking set is illustrated below depicting the top ranked patents.

Figure 2: LGE's smartphone patent ranking

For example, one of the patents in the above ranked set is related to a smartphone with a dual-display wherein the two displays are utilized to enhance user experience while capturing images using the camera. In this way, the user can utilize the other display for comparison while editing, or simultaneously capturing both the video and still image. This patent may find a read in dual display smartphones recently launched in the market. Besides this example case, there are a good number of patents which disclose smartphone features and functionalities which are currently trending in available devices.

Further, there are many key patents in the mined portfolio that may present strategic importance to many smartphone market leaders. One can't ignore the market lead of Chinese and South Korean smartphone makers and the subject portfolio's strategic importance for their continued market dominance. However, at this moment when the next inevitable is yet to strike, the industry's IP stake holders have their part to play.

Mudasir Ibn Bashir, Dhananjay Kumar Das (ICT Business Development) and the Editorial Team

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By- mudasir ibn bashir, dhananjay kumar das

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LG's Smartphone Patent Portfolio - A Treasure Hunt - Sagacious IP

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With almost six years of consistent losses, a business decision to close the mobile phone division of LG Electronics was inevitable. While many would not have expected a total closure of the bleeding business unit - the pandemic and the current economic state only added to the inevitability.

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Drawing software is a computer program that allows artists to create diagrams, schematics, flowcharts, and other illustrations. Applicants in the intellectual property (IP) domain can use such software to create drawings to support patent applications or logo designs to support trademark applications.
Read more about this article- drawing software.

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Patent drawings and trademarks (logo designs) are visual representations that help in better explaining inventions and distinguishing brands, respectively. While in the past, such drawings and designs were created by hand, in current times, they are generated using drawing software. As computer-generated illustrations are regarded as flawless and easily editable, the popularity of such software is on the rise.

The following article sheds light on advanced drawing software and how such software is used to prepare quick and error-free illustrations to support patent and trademark applications.

Defining Drawing Software

Before we discuss the popular drawing software in detail, let us first define the term drawing software.

A drawing software is a computer program that enables illustrators to create diagrams, schematics, flowcharts, or other illustrations. In the intellectual property (IP) domain, applicants can use such software to create drawings to support their patent applications or logo designs for their trademark applications. Generally, a drawing or logo design created using a drawing software illustrates the following:

The invention's components and how they fit together

The invention's internal workings

Figures depicting every piece of the invention

Accurate and minute details of the proposed logo design

When Should Applicants Opt for Drawing Software?

Patent and trademark applicants, who have sound knowledge of computer programs but cannot create the necessary drawings or logo designs, can use drawing software. This is because such software not only allows them to create accurate and detailed illustrations, but also helps them fix their mistakes quickly. Besides this, these software packages also allow them to modify their views and perspectives to demonstrate their inventions further. Below, we have discussed some state-of-the-art drawing software that is being used in the IP domain:

1. AutoCAD

AutoCAD is a computer-aided design (CAD) software that is used by a variety of professionals to create precise 2D and 3D patent drawings related to electrical designs, mechanical engineering, etc. With AutoCAD, illustrators can easily create and modify designs, prepare a re-useable block library to replicate design parts, and create more accurate designs in all dimensions. Some of the tools, commands, and features of AutoCAD are listed below:

Drawing Tools

AutoCAD has a drawing toolbar that offers a variety of tools. Out of these, line, arc, circle, rectangle, ellipse, polyline, and polygon are the most widely used for creating everything from basic geometric shapes to complex 3D models.

Trim and Extend

Group and Block

To use a part multiple times in a project, we can use a special feature - Group. Whereas to use the same part in a different project, we can use Block, which helps to save time and maintain consistency.

Command Alias

To use a command repetitively, we can assign a specific shortcut to it rather than writing its full command every time. For instance, if we are using the "Copy" command repeatedly, it is advisable to assign a shortcut "C" to save time.

Flatshot Command

Sometimes for faster delivery, we are given a 3D file; using flatshot, we can extract view from it and after that, we can analyze the requirement and forward the prepared drawings to the client, with error-free drawings.

The below image illustrates the above on Flatshot Command:

2. SOLIDWORKS

SOLIDWORKS is a solid modeling computer-aided design and computer-aided engineering program published by Dassault Systems. This software is widely used in planning, modeling, visual ideation, prototyping, feasibility assessment, and project management. It is also used for designing and building mechanical, electrical, and software elements. But most importantly, it is used to effortlessly convert a 3D part into various views in a 2D drawing.

Fig1: Drawings created using SOLIDWORKS
3. CorelDRAW

CorelDRAW is a vector graphics editor developed by Corel Corporation that offers various tools to either create original images or edit them. Some of the programs in the CorelDraw Graphics Suite include Corel PHOTO-PAINT, Corel CAPTURE, Corel Font Manager, AfterShot 3 HDR, and CorelDRAW. This software is commonly used for designing magazines, flyers, brochures, newspapers, books, logos, signage, and calendars. Below are some of the popular CorelDRAW tools used in patent drawings or logo designs:

Blends and Contour Tools

The Blend tool is one of the most valuable features of CorelDRAW. The term blending objects means transforming one object into another, following a progression of colors and shapes.
For example:

The contour tool and contour docker are simple yet powerful features that allow users to create interesting 3D effects and cuttable outlines for devices, including engraving machines, plotters, and vinyl cutters. Both blend and contour tools are extremely useful for creating logo designs. Some exciting effects can be created by applying a contour tool and transparencies on an object.
For example:

These Blend and Contour tools will play the main role in creating any 3D or Logo design, and it'll provide effective and eye-catchy work on your project.

In the IP sector, this would be more helpful to create a logo or I can say Trademark design.

Polygon Tool

This tool can be used to create a polygon shape. To make a polygon, all you need to do is click on the tool and drag the mouse on the drawing window till you get a polygon of the size you desire.

The best thing is that the original polygon continues to be dynamic throughout this process, which means that you can change the number of sides as many times as you want.

Every time you change the number of sides, you will create a new shape.

Artistic Media Tool

Using this tool, you can draw lines of varying shapes and thickness, calligraphic lines, or even paint with a sprayer or brush. It has five modes of drawing: Preset, Calligraphic, Brush, Pressure, and Sprayer. This tool is an easy hand to design a Layout for Brochures, Magazine; Business cards, all kinds of printing sectors and so on.

Create a library using a basic shape for regular need

Basic shapes are much easier to draw in the CorelDraw using default shapes, although we can create a library using our regular objects either it can be a default shape or any object. We can use this option by using the drag and drop option. Here we can import any vector images for our regular needs.
For example:

Converting image to object/Vector line drawing

Benefit from advanced image-optimization options that help to improve the quality of a bitmap as you trace it.

Here we have two conversion methods: Manual tracing or Automatic tracing:-

So, choosing manual tracing if you're working with old drawings and if you have enough time to dedicate to the project-it can be quite time-consuming after all! Alternatively, choose automatic tracing if you need a quick process-make sure you're using the right software to get accurate results.
For example:

CorelDraw helps to share your designs with a variety of compatible market-leading files formats, such as:

And finally here one most important point to share, using this application create editable MS VISIO format. Providing this format would be helpful for a client to edit/modify the drawings according to their requirement.

4. MS Visio

Microsoft (MS) Visio is a program for diagrams and vector graphics that comes under the Microsoft Office suite of products. The diagrams that can be created using this software include but are not limited to flowcharts, data flow diagrams, and 3D maps. It is a program similar to CorelDraw and AutoCAD. Based on the client requirements, it provides the drawing in vsd format that is completely editable. This format helps the clients to edit/modify the drawings according to the requirement. Most of the clients requests for .vsd format just like other formats, .dwg, .cdr, .png/.jpeg, etc.

5. Adobe Illustrator

Adobe Illustrator is used by graphic designers and other artists to create scalable vector artwork for web and print. This software can be used for producing clean visuals that can be scaled without compromising on their quality. Some of the visuals that can be created in patent drawing using illustrator include icons, complex shapes, and logo designs.

6. OmniGraffle

OmniGraffle is a comprehensive yet simple drawing application. In patent drawing its "Drag and Drop" feature allows users to make wireframes, flowcharts, user interface (UI) mockups, family trees, etc.

Working on advanced smart tools

There are hundreds of drawing tools available online but choosing the right diagrammatic tool to draw the figures in our argument is quite complicated. Besides, a single tool cannot be more effective for all kinds of diagrams. Artificial intelligence is impacting the future of virtually every industry and every human being.

We focus on how the techniques related to neural networks or machine-learning technologies-which are both AI-are at the basis of automation.

Automation is the future of design, with AI helping automate many of today's design tasks, such as shape creation. Customization and design automation in relation to engineering develop support tools and technology that drives design automation.

Our design experts help you to generate 2d drawings & 3d drawings more accurately. Our designers can save massive amounts of time by using a software solution, customizing it, and employing automation to produce error free patented drawings.

Conclusion

The advancement in technology has enabled patent and trademark applicants to produce patent drawings as well as logo designs using drawing software. Whether you are a novice or a seasoned professional, these software packages can quickly help you create precise drawings.

Using the right solution which meets the needs of both engineering and design teams, that can scale, and speeds up the production process, reducing costs and delivering assembly instructions with ease is imperative to growth.

If you are an inventor or a patent applicant looking for drawing services, Sagacious IP has got you covered. We offer Patent Drawing Services wherein our experts create drawings bearing in mind the patent drawing rules of the concerned office. To know more about advanced drawing software used in the IP sector, view the webinar here.

John Britto, Kalyani V S, Rahul Ahlawat (Illustration) and the Editorial Team

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Advanced Drawing Software To Create Error-Free Illustrations - Sagacious IP

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Patent drawings and trademarks (logo designs) are visual representations that help in better explaining inventions and distinguishing brands, respectively. While in the past, such drawings and designs were created by hand, in current times, they are generated using drawing software. As computer-generated illustrations are regarded as flawless and easily editable, the popularity of such software is on the rise.

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IDS Management Outsourcing: How IP Service Providers Can Help Save Costs

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IDS Management Outsourcing: How IP Service Providers Can Help Save Costs

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The increased number of patent filings has increased the workload of IP attorneys, law firms, and even solo practitioners. This is due to the fact that patent applicants seek assistance from these entities to manage their IP work, which includes Deadline Tracking, Information Disclosure Statement (IDS), and other administrative tasks. Among these, IDS management is an important and time-consuming task that necessitates reviewing incoming office actions of corresponding patents in different jurisdictions and updating IDS statements accordingly for a smooth prosecution. Outsourcing some of the work to credible and experienced IP service vendors is one way to reduce the burden of IDS management.

Read the entire article about-    IDS Management
https://sagaciousresearch.com/blog/ids-management-outsourcing-how-ip-service-providers-can-help-save-costs/

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IDS Management Outsourcing: How IP Service Providers Can Help Save Costs - Sagacious IP

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IDS and other administrative tasks. Amongst these, IDS management is an important and tedious task which needs review of incoming office

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Choosing between Design and Trademark Protection for Shape of Goods

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Choosing between Design and Trademark Protection for Shape of Goods

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Businesses are forced to release items with unique variations in order to stand out due to the fierce competition in the market. Adopting distinctive trademarks to aid consumers in telling apart the provenance of various goods is one approach to do this. However, trademarks are not the only way to differentiate items from one another. To draw in more customers, some business owners also use original designs, layouts, etc. Another technique to assist clients recognise the products from your brand among the competition is by the distinctive shape of the goods. The distinctive shape of products or packaging can be registered and protected by businesses under Indian IP legislation. But when it comes to protecting such inventions, brands frequently disagree about whether to pursue trademark or design patent protection.

To get more information, read the entire article about Trademark Protection.

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The stiff competition in the market compels businesses to roll out products with distinctive variations to stand out. One way to do this is the adoption of unique trademarks to help consumers distinguish between the origins of different goods. However, the quest to create differentiating factors in products is not limited to trademarks alone. Some proprietors also adopt unique designs, configurations, etc., to attract more eyeballs in the market. The distinct shape of goods is another way to help customers differentiate your brand's products from the rest. The Indian IP law allows companies to register and protect the unique shape of goods or packaging. But brands are often confused about whether to go for trademark protection or a design patent to safeguard such innovations.

This article discusses the scope of protection for the shape of goods under trademark and design laws, the overlapping nature of design and trademark protection, and the better option between the two.

Scope of Protection under the Trade Marks Act, 1999 and the Designs Act, 2000

The statutory laws for designs confer exclusive rights over only the features of shape, configuration, pattern, ornament, or composition of lines or colors when applied to articles in two-dimensional or three-dimensional forms. On the other hand, the trademark law protects any "mark" consisting of a device, brand, label, heading, ticket, name, word, signature, letter, numeral, shape of goods, packaging, or combination of colors.

This safely suggests that under the Designs Act, the protection granted concerns the overall aesthetic appeal of an article, which is solely judged by the eye. On the contrary, the Trade Marks Act protects marks that can be visually represented and differentiate the owner's goods and services from those of competitors.

Deciphering the Overlap Between Design and Trademark Protection

The overlap between the protection granted by both laws greatly stems from their definitions. The differences between the two are found in the application or the purpose that a particular design or trademark serves. While businesses use trademarks to act as source indicators, designs help improve the visual attractiveness of an article and make it more artistically pleasing.

It is pertinent to mention that trademarks are generally affixed and/or placed on the articles or relate to the trade dress of an article. In the cases of unconventional trademarks, such as the shape of goods, they are not two-dimensional affixations of source indicators but are three-dimensional figures. For example, the four KitKat chocolate bars or the distinct shape of Coca-Cola bottles, etc.

Figure 1: The Iconic Shape of Coca-Cola Bottles

Designs, however, are widely used as two-dimensional affixations of unique patterns, which solely enhance the aesthetic appeal, and three-dimensional shapes of articles. Comparatively, the two-dimensional designs or trademarks do not create a critical overlap owing to two reasons:

1. It is relatively easier to differentiate between the application and purpose of 2D designs from 2D trademarks. For example, affixed geometrical shapes printed in stylized color combinations, emitting hologram effects on a packet of chips. This pattern is two-dimensional and acts as a unique design printed on the package of chips solely to add aesthetic value to the look and feel of the packet. Further, the placement of the logo or tagline of the chips brand on the package is 2D and only depicts the origin of the chips.

In layman's terms, the design on the packet of chips and the trade dress of the packet are interchangeably understood as designs. However, the trade dress differs from the design affixed to the articles. The primary criteria for creating a unique trade dress is not aesthetic appeal but rather the unique placement of the logos or the tag lines and the specific arrangement of the different aspects of the trademark, which may or may not add any aesthetic value to the look and feel of the article.

In the above example, suppose the unique geometrical shapes creating a hologram effect on the packet of chips are removed. However, the logo, tagline, and specific placement of other source indicators on the packet still exist. In that case, the trade dress persists and can be protected by the law. Hence, it becomes relatively easy to differentiate between the application of a pattern used as a design or trade dress when applied to articles in a 2D format.

2. The Designs Act, 2000 prohibits the registration of any design capable of registration under both the Designs as well as the Trade Marks Act and has been registered as a trademark. The prohibition does not decrease the liability of overlapping legislation but reduces the chances of conflict between the two.

The main problem arises with the advent of 3D design and trademark registration. The following section discusses the same.

The Better Option: Design vs. Trademark Protection

As elucidated earlier, it is comparatively easy to differentiate between 2D designs applied to articles and designs capable of registration as a trademark. The next complexity that arises is the application of design on 3D products. Since bare eyes cannot distinguish between 3D design applied for design registration and 3D design applied for trademark registration, one has to rely on theoretical affirmations to decide between the two.

If a 3D shape design has to be registered, it is essential to note that it can gain protection under both regimes. The following test points make choosing between the two easier:

1. Faster Registration

In terms of chances of faster registration, an application under the Designs Act should be preferred.

For designs to successfully qualify for registration under the Designs Act, they should:

be new or novel

not have any prior publication

not already be registered as trademarks

If any design meets the above requirements, the chances of successful registration under the Designs Act increase. However, if the same design has to be registered as a trademark, then it has to first defy objections under Section 11 of the Trade Marks Act. It states that the mark to be registered cannot be identical to any prior existing marks on the Trade Mark Registry. Moreover, the design should also fulfill conditions laid down under Section 09 of the Act. It requires the proprietors to demonstrate that the shape applied for registration is distinctive and sets its product apart from others. Overcoming the objections raised under Section 09 is not impossible but somewhat more challenging as the 3D shape design must be new and novel in the market.

2. Duration of Protection

One may consider trademark registration for a longer period of protection. Trademark protection lasts ten years, and can be renewed for the next ten years till perpetuity. However, designs only enjoy protection for a total tenure of 15 years. Moreover, designs can be initially registered for ten years and renewed for another five years by submitting a renewal application. Post expiration of this period, the proprietor can no longer assert exclusive rights on the design.

3. Pressing Common Law Rights

If the 3D shape design has been registered as a trademark, then in the event of an infringement of the design, the owner can file a suit for infringement and passing off, for infringement of all aspects of the design ranging from the three-dimensional shape to the color combination and trade dress. However, this does not apply to piracy of design registrations. The primary rationale behind the same is that only those design elements that are not used as a trademark are registrable under the Designs Act. While contesting the suit for piracy of design, the contrary contestation will lead to invalidation of the design.

However, in 2018, the Delhi High Court relieved this criterion in the case of Carlsberg Breweries vs. Som Distilleries and held that a single suit could invoke claims for piracy of design and passing off. A critical point to note here is that the plaintiff must avoid using the design components as a trademark or as a larger trade dress, get-up, or product presentation.

4. Subsequent Registration in the Other Act

A persisting complexity remains in the cases where both the registrations seem equally important. It is vital to note that in contrast to the theoretical assertions made above, a particular design can be registered under both regimes in certain extraordinary circumstances. The exception, however, is only possible when a 3D shape has been registered first as a design and has subsequently become eligible for trademark registration. A proprietor can claim trademark and trade dress rights on the shape, aesthetics, and other elements of the 3D design.

The subsequent registration as a trademark is only conceivable after the 3D design has achieved substantial goodwill and recognition, and the public associates the product solely and directly with its proprietor. For example - the 3D shape of the Coca-Cola bottle has gained secondary significance and popularity amongst its customers. People associate the shape of the bottle solely and directly with Coca-Cola. Even the need for distinguishing trademark stickers is negated, and only the shape of the bottle acts as an indicator of the source.

Why You Should Choose Sagacious IP to Protect your Intellectual Assets

A team of 350+ technology/industry experts with in-depth knowledge of Indian and international IP laws.

Strong network that allows for quick and accurate communication within the Indian Patent Office.

Vast experience in filling and prosecuting trademark applications in India & globally. Our trademark team can assist you with the procedure and other related incidental matters.

Unparalleled knowledge of national and IP best practices. Over 1000 clients from 45+ countries have availed our services for a variety of technological fields, from simple inventions to complex topics in life sciences, engineering, and ICT.

Conclusion

As mentioned earlier, the conflict between design and trademark protection for a design is not that prevalent in situations involving two-dimensional aspects and features of a particular product. However, if one considers the protection of a product's shape and the three-dimensional layout of a specific product, the difference between trademark and design law appears to be a little blurry. What must be borne in mind is that for holistic protection, one should venture to create tremendous goodwill and reputation of their design in order to achieve both the design registration first followed by trademark registration.

Over the years, Sagacious IP has provided flawless IP solutions to over 5000 clients through 25,000+ projects. Additionally, it assists clients in maintaining exclusivity and safeguards their brand from potential infringement through its India Trademark Filing and Prosecution Service and India Design Filing and Prosecution Service. To know more, visit our dedicated service pages.

- Maitrayee Sinha, Akash Dudhwa (IP Filing and Prosecution) and the Editorial Team

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Choosing between Design and Trademark Protection for Shape of Goods

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The stiff competition in the market compels businesses to roll out products with distinctive variations to stand out. One way to do this is the adoption of unique trademarks to help consumers distinguish between the origins of different goods. However, the quest to create differentiating factors in products is not limited to trademarks alone.

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HBM IP Filing Trends: Need, Major Players, and Patent Filings

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HBM IP Filing Trends: Need, Major Players, and Patent Filings

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With its quick information transfer speed, High Bandwidth Memory (HBM), a new type of CPU/GPU memory, is enabling previously unthinkable computer performance levels. Due to its broad range of applications across numerous sectors and industries, the HBM industry is growing quickly. Its anticipated CAGR rise of 32.9% over the following years makes this pretty clear (from USD 1.8 billion in 2021 to USD 4.9 billion by 2031). Technology behemoths like Samsung, Intel, and others are significantly investing in the HBM sector, which has sparked an invention boom.

To get more information, read the entire article about HBM IP.

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High Bandwidth Memory (HBM) is a new type of CPU/GPU memory that is opening doors for previously unimaginable performance levels in computers with its fast information transfer capability. The HBM industry is expanding rapidly due to its applicability scope in myriad sectors and industries. This is quite evident from its expected CAGR growth of 32.9% in the coming years, (from USD 1.8 billion in 2021 to USD 4.9 billion by 2031). Tech giants such as Samsung, Intel, etc. are heavily manufacturing in the HBM industry, which has propelled the innovation boom.

This article discusses HBM in detail, the demand for this new technology, market prediction, major HBM IP players, and the future prospects of HBM.

Introduction to 3D High Bandwidth Memory (HBM)

HBM is a 3D-stacked DRAM optimized for high bandwidth operation and lower power consumption compared to the GDDR memory. HBM includes vertically stacked DRAM chips connected through vertical interconnect technology called TSV (through silicon via) on a high-speed logic layer to reduce the connectivity impedance and thereby total power consumption. HBM memory generally enables the stacking of four, eight, or twelve DRAMs connected to one another by TSVs. Furthermore, HBM typically uses an interposer to link the compute elements to the memory.

Figure 1: Cut through image of a graphics card with HBM (Source)

What is the need for HBM?

With an ever-increasing demand for high operating frequency of graphics (GPU) or general-purpose processors (CPU), the limited memory bandwidth constricts the maximum performance of a system. Previous memory technologies such as DDR5 (GDDR5) memory are unable to overcome issues like rising power consumption, which limits the growth of graphics performance, and larger form factor to address the bandwidth needs of GPU/CPU (multiple chips needed to achieve the required high bandwidth with necessary power circuitry). Moreover, difficulty in on-chip integration is another issue those technologies fail to address.

High Bandwidth Memories are requisite for high-performance computing (HPC) systems, high-performance memory, and large-scale processing in data centers and AI applications. Current GPU and FPGA accelerators in the market are memory-constrained, indicating a requirement for more memory capacity at a very high bandwidth. This brings High Bandwidth Memory into the picture. HBM brings the DRAM as close as possible to the logic die to reduce the overall required footprint and allows the use of extremely wide data buses to hit the required levels of performance.

Figure 2: HBM stacks bandwidth progression up against GDDR and DDR (Source)

Evolution of HBM

JEDEC adopted High Bandwidth Memory as an industry standard in October 2013. The 1st generation of HBM had four dies and two 128-bit channels per die, or 1,024-bits. Four stacks enable access to 16 GB of total memory and 4,096 bits of memory width, eight times that of a 512-bit GDDR5 memory interface for GDDR5. HBM with a four-die stack running at 500 MHz can produce more than 100 GB/sec of bandwidth per stack - much greater than 32-bit GDDR5 memory.

The 2nd generation, HBM2, was accepted by JEDEC in January 2016. It increases the signaling rate to 2 Gb/sec, and with the same 1,024-bit width on a stack. A package could drive 256 GB/sec per stack, with a maximum potential capacity of 64 GB at 8 GB per stack. HBM2E, the enhanced version of HBM2, increased the signaling rate to 2.5 Gb/sec per pin and up to 307 GB/sec of bandwidth/stack.

On January 27, 2022, JEDEC formally announced the 3rd generation HBM3 standard. According to a manufacturer, SK Hynix, HBM3 can stack DRAM chips up to 16 dies high, and the memory capacity can double again to 4 GB per chip, which will be 64 GB per stack and 256 GB of capacity with at least 2.66 TB/sec aggregate bandwidth. The third generation HBM3 is expected in systems in 2022, with a signaling rate of over 5.2 Gb/sec and offering more than 665 GB/sec per stack.

In the following section, we present the prediction of the HBM market in memory stacking technology.

HBM Market Predictions

The High Bandwidth Memory industry is expanding quickly. It has a promising future due to several factors, including the wide access to cloud-based and quantum technologies, advancements in the usage of cloud-based quantum computing, and GPUs and FPGAs. The HBM market is expected to expand significantly in the coming years. The market for High Bandwidth Memory is expected to reach USD 4088.5 million by 2026.

Figure 3: High Bandwidth Memory Market Growth (Source)

Major Players in the Global HBM Market

Some of the major manufacturers in the HBM industry are mentioned below:

1. Samsung Electronics: The South Korean corporation developed the industry's first High Bandwidth Memory (HBM) integrated with artificial intelligence (AI) processing power - the HBM-PIM. The new processing-in-memory (PIM) architecture has powerful AI computing capabilities inside high-performance memory to accelerate large-scale processing in data centers, high-performance computing (HPC) systems, and AI-enabled mobile applications. Furthermore, Samsung's packaging technologies, such as I-Cube and H-Cube, have been specifically developed to integrate HBM with the processing chips.

2. SK Hynix: This South Korean supplier of dynamic RAM and flash memory chips recently released HBM3, the Gen 4 HBM product for data centers. HBM3 facilitates sharing of up to 163 full-HD movies in a single second using a maximum data processing speed of 819 gigabytes per second, which signifies a 78% improvement over HBM2E.

3. Intel Corporation: The chip manufacturer announced the Sapphire Rapids Xeon SP processor featuring HBM for bandwidth-sensitive applications, AI, and data-intensive applications. The processors are expected to use AMX's 64-bit programming model to speed up tile operations.

4. Micron: The company said that NVIDIA's GeForce RTX 3090 would be based on GDDR6X technology and capable of 1 TB/sec memory bandwidth. Micron GDDR6X is the world's fastest graphics memory.

5. Advanced Micro Devices: AMD launched the new AMD Radeon Pro 5000 series Graphics Processing Units (GPU) built on 7nm process technology for the iMAC platform. These new GPUs comprise 16GB of high-speed GDDR6 memory, which can run a wide range of graphically intensive applications and workloads.

6. Xilinx: Versal adaptive compute acceleration platform (ACAP) portfolio, a new series from Xilinx, integrates HBM to offer quick compute acceleration for massive, connected data sets with fewer and lower-cost servers. The latest Versal HBM series incorporates advanced HBM2e DRAM.

The next section highlights HBM IP trends over the last five years to help you understand the growing market and applicability scope of the technology.

HBM IP (Patent) Filing Trends by Assignees and Jurisdiction (last 5 years)

The US accounts for more than 50% of all the HBM IP (patent) filings since 2017 with respect to other top patent filing jurisdictions in the space. A quick analysis of HBM IP filing trends of the top patent assignees in the past five years shows the dominance of Samsung over other market players. Further, Intel and Micron are other top filers from 2017 onwards in the HBM space.

Figure 4: Top 10 Patent Assignees based on Percentage Filings from 2017 for HBM (Derwent Innovation)

Figure 5: Top patent filing jurisdictions from 2017 for HBM (Derwent Innovation)

AMD and Xilinx are both major players in the HBM domain with strong IP portfolios. The recent acquisition of Xilinx by AMD would only strengthen AMD's HBM IP portfolio related to the technology's use in high-performance computing applications.

Samsung's existing HBM IP portfolio and the integration of AI with HBM through HBM-PIM show that Samsung plans to have a stronghold in this domain for a considerable future. The HBM-PIM has been tested in the Xilinx Virtex Ultrascale+ (Alveo) AI accelerator. Xilinx and Samsung have been collaborating to enable high-performance solutions for data center, networking, and real-time signal processing applications with the Virtex UltraScale+ HBM family and Versal HBM series products.

Nvidia chose to use Samsung's HBM2 Flarebolt in its Tesla P100 accelerators to power data centers in need of supercharged performance. AMD chose to use HBM2 Flarebolt in its Radeon Instinct accelerators for the data center and its high-end graphics cards. Intel has embraced the technology, leveraging HBM2 Flarebolt to introduce high-performance, power-efficient graphics solutions for mobile PCs. Rambus and Northwest Logic teamed up to introduce HBM2 Flarebolt-compatible memory controller and physical layer (PHY) technology for use in high-performance networking chips. Other companies developing products combining HBM2 Flarebolt storage with various networking capabilities include Mobiveil, eSilicon, Open-Silicon, and Wave Computing.

SK Hynix aims to solidify its leadership in the HBM domain with the first mover's advantage of supplying HBM3 to major companies such as Nvidia for integration with NVIDIA H100 Tensor Core GPU.

HBM market is rapidly expanding. So, let us check out some recent developments in the industry and the predictions for the future of this market.

Recent Developments and Future Prospects of HBM

High Bandwidth Memory solutions are currently optimized for data center applications with computing acceleration, machine learning (ML), data preprocessing and buffering, and database acceleration. Major HBM IP owners and manufacturers are upping their game by integrating HBM with processors for AI computing capabilities, for high-performance computing (HPC) systems, to accelerate large-scale processing in data centers and AI-enabled mobile applications.

The technology is picking up steam in the market, going from virtually no revenue a few years ago to what will likely be billions of dollars and more over the next few years. HBM technology is expeditiously evolving to meet the rising demand for broad access to cloud-based and quantum technologies, GPUs (graphics processing units) and FPGAs, high-performance computing (HPC) systems to accelerate large-scale processing in data centers, and AI applications. The advantages over prior memory solutions related to lower power, higher memory storage size using stacking, higher bandwidth, and proximity to the logic chip would enable an increase in adoption within various future applications.

Conclusion

Businesses that stay at the forefront of technology will benefit greatly from the impending transformation of memory stacking technology with HBM. We have seen HBM IP trends, and top competitors in the 3D memory stacking technology domain are fast expanding to capitalize on the immense economic possibilities given by HBM. HBM market is undergoing rapid development and change. Thus, protecting a company's rights is a critical strategy for industry players. As a result, it is crucial for companies already operating in this sector and those wishing to enter it to evaluate the existing HBP IP landscape.

Sagacious IP's patent landscape service provides insightful information into any technical domain. This customizable service can provide solutions for business difficulties, such as determining a company's R&D direction and analyzing competitor strategy. The patent landscape search service from Sagacious IP helps clients understand the evolution of an industry or technology by giving an overview and analysis of the industry. This enables them to make critical business decisions. Moreover, Sagacious IP's technology scouting service helps clients forecast technology and find the best solutions to technical problems.

- Kushagra Magoon, Gunjan Sharma (ICT Licensing) and the Editorial Team

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HBM IP Filing Trends: Need, Major Players, and Patent Filings

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High Bandwidth Memory (HBM) is a new type of CPU/GPU memory that is opening doors for previously unimaginable performance levels in computers with its fast information transfer capability. The HBM industry is expanding rapidly due to its applicability scope in myriad sectors and industries.

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Augmented and Virtual Reality Innovations and Patent Trends

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Augmented and Virtual Reality Innovations and Patent Trends

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Virtual reality (VR) and augmented reality (AR) are gaining popularity swiftly and will transform how we work, play, learn, and live. In addition to their expanding use in many other areas, many people believe that these are the social media and networking platforms of the future. For instance, AR and VR are enabling architects to build better homes through the use of virtual reality, athletes to improve their training with real-time updates, and students to engage in active e-learning.

To get more information, read the entire article about Virtual Reality Innovations.

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Augmented reality (AR) and virtual reality (VR) are quickly gaining popularity and will change how we work, play, study, and live. Many consider these to be the future of social media and networking, besides growing applicability in numerous other industries. For instance, AR and VR are helping architects use virtual reality to design better homes, athletes to train better with real-time updates, and students to have an active e-learning experience.

The global revenue from VR video gaming stood at almost USD 23 billion in 2020 alone. Witnessing the growing popularity of AR and VR innovations, companies from around the world are investing heavily in R&D. They are also patenting their augmented and virtual reality innovations. The spike in AR/VR-related patent filings in 2021 reiterates this fact, as covered in the below article. Read more to know everything about AR and VR, including augmented/virtual reality innovations, market sizes, key players, top patent companies in AR/VR domain, and future prospects.

Introduction of AR and VR

The terms "augmented reality" and "virtual reality" refers to reality technologies that either enhance or replace a physical world with a virtual/simulated one. Augmented reality enhances your surroundings by adding digital components to a live view, typically using a camera on a smartphone. Virtual reality is an entirely immersive experience in which a virtual environment replaces the actual world.

Augmented and virtual reality have made impactful impressions on the world since their inception. These technologies not only touched the hearts of smartphone users but also caught the attention of emerging and established brands, making entrepreneurs and marketers look forward to investing in AR and VR app development. Mixed reality is a different type of technology that combines the real and virtual worlds to create novel habitats and visualizations in which actual items and virtual ones can coexist and communicate in real-time.

In this new digital environment, AR and VR are two concepts that offer significant advantages. Innovations in this field create new user experiences while enabling higher productivity in industries such as manufacturing, gaming, media, automotive, and healthcare. A wide range of other industries also use augmented, mixed, and virtual reality technologies, such as - manufacturing, remote assistance, education, and training.

Applications of Augmented Reality

With the help of the mobile app Ikea Place, you can visualize Ikea furniture in your own house by projecting a 3D model of the item over a live video feed of your room.

Through a live selfie, YouCam Makeup enables users to try on real-life cosmetics virtually.

In order to repair or maintain a damaged piece of equipment, repair technicians can put on a headset that walks them through the process, pointing out exactly where each item goes and the steps that should be taken.

Augmented reality has made its way to various sports to provide athletes with real-time statistics and to improve physical training.

Applications of Virtual Reality

Architects are using virtual reality to design homes that clients may tour before starting construction.

VR is helping in designing cars and other vehicles.

Workers in dangerous environments like firefighters, soldiers, and others are adopting virtual reality to train without putting themselves in danger.

Augmented/Virtual Reality Innovations in Headsets

Meta's Quest 2 is a real hit, selling millions of units and providing some hope to the industry that money can be made in the VR space. Consumer headsets for virtual reality and augmented reality are dominating the conversations and will continue to do so in the coming years. With Sony preparing to release the PlayStation VR 2 and Apple said to be working on mixed reality (MR) headset this year, customer interest in extended reality (XR), which integrates AR, VR, and other immersive technologies, will only grow. It's only a matter of time until VR and AR become household names, though that's unlikely to happen this year.

However, AR and VR are still rather specialized technologies that are yet to be widely accepted. Part of this is due to various obstacles. However, 5G and edge computing are helping overcome these challenges. With the commercialization of 5G, augmented reality and virtual reality encompass plenty of new use cases, which, when combined with edge computing, will provide significant value to industry and organizations. 5G's ultra-low latency and tremendous bandwidth are critical in supporting the use cases. For many industrial and enterprise customers, 5G solutions ensure that the applications receive the capabilities required to carry out mission-critical processes.

AR and VR Market Size

The global augmented reality and virtual reality market are expected to grow at a rate of 25.3% from USD 37.0 billion in 2022 to USD 114.5 billion by 2027. Partnerships between augmented reality device manufacturers and other service industries, as well as robust government financing, are supporting the market growth for AR and VR. The demand for virtual reality in gaming, e-learning, and medical training is on the rise, and these trends are also fueling the market's expansion. Moreover, applications for augmented reality are expanding in the fields of e-commerce, retail, and healthcare as well.

Top Market Players in AR-VR

The AR and VR market is dominated by a few well-known companies with a global presence, including Google, Microsoft, Sony Corporation, Samsung Electronics, HTC, and Apple Inc. These companies have strengthened their market positions via both organic and inorganic growth strategies, including product launches and developments, collaborations, contracts, expansions, and acquisitions.

Patent Filings in AR and VR

Over the past decade, there has been a dramatic increase in augmented and virtual reality innovations across the world. The rising number of AR/VR-related patent applications filed in various jurisdictions reiterate this fact. Figure 1 (below) represents the patent filing trend specifically for the Indian jurisdiction over the last two decades. As is clear from the graph, there has been an exponential rise in the number of patent filings over the past few years in the AR/VR domain in India. A similar trend has been witnessed across all the other key jurisdictions, including the US, Europe, China, etc.

Looking at current statistics, the third quarter of 2021 continued the pattern of increased augmented reality/virtual reality innovations and patent filings rose from the first to the third quarter of 2021. Around 2735 patents related to AR/VR technologies were issued globally in the third quarter of 2021. China and the United States continue to top both filing and grant volumes; with the Chinese patent office (SIPO) issuing approximately 1213 patents and the USPTO issuing approximately 780 patents, roughly matching their second-quarter numbers. Most IP offices around the world issued more AR/VR patents, which could be attributed to growing interest in the Metaverse.

Figure 1: Number of patent filings in the AR/VR domain in India from the year 2000 onwards

Sagacious IP reviewed the main/primary CPC's of the patents from some of the prominent players in the AR/VR field, including Sony, Microsoft, Facebook, Google, Apple etc., and identified that almost all the major players have been filing patents for tracking related aspects, such as eye tracking, hand tracking and head tracking. Moreover, companies such as Google, Apple, and LG Electronics have also been filing patents related to voice-based interaction in the AR/VR space. Some of the other areas of augmented and virtual reality innovations include HMD controllers, Haptic feedback, 3D animation, etc.

Intellectual Property Landscape in AR and VR

Sagacious IP used AR and VR-related top CPCs (Cooperative Patent Classifications) and keyword-based searches to extract top companies (assignees) operating in the subject domain. Figure 2 (below) depicts the top companies with the maximum number of worldwide patents in the AR/VR space.

Figure 2: Top companies with their overall patent families in the AR/VR domain

Figure 3 (below) depicts the top patent assignees in the US, EP, and India jurisdictions in the AR/VR domain. Clearly, Samsung, Microsoft, and Sony are leading the pack in all three jurisdictions.

Figure 3: Top assignees by percentage in the US, EP, and India in the AR/VR domain

Future Aspects of AR and VR

With the AR and VR industry continuing to climb in market value, the technology's potential cannot be denied. Importantly, it is evident that AR and VR's influence extends far beyond just gaming. AR now extends to many different industries as the following chart demonstrates:

Figure 4: Expected Revenue by 2025 (Source)

Sagacious IP reviewed the features of the existing augmented/virtual reality innovations and products to grasp an overview of the futuristic technologies that the domain will cover.

Many experts and companies within the AR/VR industry talk about the benefits of foveated rendering - the ability to only render (in high-quality) a portion of the scene a user is looking at. A few companies have implemented the technology to enhance performance on standalone VR headsets, such as HTC Vive Pro Eye, Oculus Quest, and Pico Neo 2 Eye.

There is no point in rendering the VR/AR display at full resolution if the users' eyes can only focus on a small area at full resolution at a time. The Sony PSVR 2 will bring several advances to home VR as it is supposed to have eye-tracking, which could improve the quality of VR graphics using foveated rendering and maybe even facilitate eye-based controls in games.
Some key features expected in the upcoming AR/VR headsets include:

Foveated Rendering

Infinite Field of View

Metaverse

Holoportation

Six Degrees of Freedom

Face Tracking/Eye Tracking

Conclusion

Future AR/VR technologies will offer personalized, easily accessible, and visually stunning experiences. There will soon be a platform shift when these variables take effect. In the coming years, we will see new, more advanced augmented and virtual reality innovations, such as AR glasses with LTE capabilities that will become an alternative to the smartphone. It is anticipated that the Metaverse will predominantly manifest itself through virtual reality in the coming years. This parallel digital environment may be used for several private and professional objectives. Recent high-profile announcements by Microsoft, Sony, and Meta (previously Facebook) all imply that consumers could choose headsets like Meta Quest or Sony PSVR to navigate interactive and social virtual 3D spaces.

The ecosystem of research, innovation, finance, and policy will be necessary for the Metaverse to grow in a variety of ways. As such, one can hardly say with certainty that a company will come out on top as AR/VR becomes a part of our daily lives. If the Metaverse expands as predicted, it will likely grow into situations we cannot predict. But, this makes it crucial to have foresight for future innovations and prepare/adapt to the changes. That's where Sagacious IP's technology scouting service can serve to be fruitful. Our team of expert IP professionals can help you find the best solutions to your technical problems and strengthen your patent portfolio.

- Amit Kumar, Pallavi Sinha (ICT Licensing) and the Editorial Team

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Augmented and Virtual Reality Innovations and Patent Trends

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Augmented reality (AR) and virtual reality (VR) are quickly gaining popularity and will change how we work, play, study, and live. Many consider these to be the future of social media and networking, besides growing applicability in numerous other industries.

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Patent Licensing and Selling – Top 3 Mistakes People Make

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Patent Licensing and Selling – Top 3 Mistakes People Make

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When it comes to monetizing patents, organisations with substantial patent portfolios frequently struggle to select the best approach. There is some room for error given the high stakes involved in selling or licencing these patents because mistakes made at this stage could be extremely costly. The top three errors that businesses should avoid are listed in the following article in order to maximise the value of their patents when licencing or selling them. Let's start by comprehending the necessity of selling and licencing patents.

To get more information, read the entire article about Patent Licensing.

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Patent Licensing and Selling – Top 3 Mistakes People Make - Sagacious IP

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Businesses with robust patent portfolio face difficulties in choosing the right strategy for patent licensing and selling.

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Blockchain is a distributed public ledger that records business network transactions. The ledger, decentralised as a blockchain database, is replicated among network participants. Following that, all network participants have access to the distributed ledger and its immutable record of transactions. Each transaction can be recorded as a block of data. In other words, each block contains a set of transactions. When a new transaction occurs in the blockchain, a record of that transaction is added to the ledger of every participant. Each transaction in the distributed ledger is validated by the consensus of a group of system participants.
Read more about-patent filing.
https://sagaciousresearch.com/blog/patent-filing-trends-associated-with-power-dissipation-in-blockchain/

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Patent Drafting as per 35 U.S.C. § 112: Specifications and Best Practices

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Patent Drafting as per 35 U.S.C. § 112: Specifications and Best Practices

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In order for a patent to be granted, the innovation must be fully and precisely described in the patent application. The format for submitting the patent description is specified in Section 112 of Title 35 of the United States Code. A patent examiner needs the description to explain the innovation to the general public. This aids the examiner in drawing a precise line around the subject matter of the patent, encouraging innovation and boosting trust in the patent system.

To get more information, read the entire article about Patent Drafting.

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Patent Drafting as per 35 U.S.C. § 112: Specifications and Best Practices - Sagacious IP

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A patent application must contain a full and clear description of the invention for which a patent is sought in order to receive a grant.

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The rationale behind the Controller’s Decision

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The rationale behind the Controller’s Decision

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The major ground for the Controller's decision is that a design must "consistently" appeal to the eye and be capable of being evaluated solely on the basis of appearance. When the electronic device is shut off, the GUI design is completely lost. As a result, a GUI does not satisfy the Act's requirements for a design. The Indian Design Registry continues to object to the registration of "Screen Displays and Icons" under class 14-04 because this case has been used as an example by the Registry. Giving design protection has grown into a major barrier for businesses and entrepreneurs trying to safeguard and make money.
To know more, read the entire article about National Design Policy

https://sagaciousresearch.com/blog/protecting-graphical-user-interface-gui-under-indian-national-design-policy/

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Freedom to Operate (FTO) Search Cost: A Value Addition or a Drag on Company Resources?

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Freedom to Operate (FTO) Search Cost: A Value Addition or a Drag on Company Resources?

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In the past twenty years, there has been a significant revolution in the dynamics of the corporate environment. Consider the technological product lifecycle as an illustration. It is considerably shorter than it formerly was, and businesses are always innovating to provide their customers with a better experience in order to stay ahead of the curve.

However, there is one significant obstacle that companies typically overcome when developing for a new product. It is the potential for similarity to an already-available product or underlying technology. The likeness may be deliberate or accidental. A Freedom to Operate (FTO) search is used by agile businesses with proactive management to identify and eliminate the issue. On average, an FTO search is substantially more expensive than a patentability search.

To get more information, read the entire article about Freedom to operate search Cost.

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The dynamics of a business environment has undergone a massive transformation in the last two decades. Take the product lifecycle for technology as an example. It is much shorter than it was before and in order to stay ahead of the curve, companies are constantly innovating to offer a better experience to its customers.

However, there is one crucial challenge that businesses tend to counter while innovating for a novel product. It is the possibility of resemblance to an existing product or an underlying technology. The similarity can be willful or unintentional. Agile companies with proactive management weed out the problem by performing a Freedom to Operate (FTO) search. Compared to a patentability search, an FTO search is much costlier on an average. So, the big question always remains "Is FTO search cost worth it?"

The following article discusses why FTO search cost is vital towards a long-term business plan and why it is not really a cost per se.

How Freedom to Operate (FTO) Search can Avoid Damages - A case study

Freedom to operate (FTO) search is also known as Infringement Analysis or Clearance Search. A comprehensive FTO analysis covers all forms of valid patent rights and related agreements and contracts. This is to ensure that the launch or development of any new product does not infringe upon any existing patent. Patent infringement can be a costly affair for any company irrespective of its size. A timely intervention by FTO search can help in avoiding damages. The below case study highlights the same.
Ranbaxy vs. Apotex
While planning to launch an antibiotic drug - cefuroxime axetil in the USA, Ranbaxy, an Indian Pharmaceutical giant came across a patent number (5,847,118) owned by a Canadian pharmaceutical corporation - Apotex. The process of manufacturing was the same as claimed by Apotex in the patent. However, in a thorough FTO analysis, Ranbaxy was successful in identifying one variation in the process of manufacturing. While it used acetic acid as a polar organic solvent, the term itself in the actual patent was defined as sulfoxides, amides and formic acids. Based on the findings of the detail, Ranbaxy was granted a declaratory judgement by the United States Court of Appeal, Federal Circuit (CAFC) and granted the freedom-to-operate. Source

Avert Brand Dilution through an FTO Search

Building a brand takes years of sustained hard work and diligence. Any news of patent infringement (willful or unintentional) generates a negative sentiment around the brand that may take years to restore. Besides, the negativity around the brand, it will also affect the revenue and existing market share. Consumers today are smarter than ever before and can instinctively prefer association with a brand that inspires confidence, strength and integrity. Hence, it is imperative that companies invest in an FTO search to prevent brand dilution and possible reduction in customer base.

Perform FTO Search, Avoid Monetary Implications

In case a company decides not to conduct a professional FTO search, consequences can be far-reaching. The settlement amount or the money paid as damages will far exceed the original cost of performing an FTO search (Figure 1). The incurred damages could also be in the form of royalty payment for the period of unauthorized use. Both willful and unintentional patent infringement could be avoided by performing an FTO search with the right counsel. Polaroid Corp versus Eastman Kodak Company is one of the most famous cases here whereinKodak was successful in avoiding the finding of willful infringement due to patent clearance studies conducted by a patent law firm. The court concluded that although Kodak was infringing, it was not willfully done.

Figure 1: Initial damages awarded in U.S. patent litigation cases between 1997 and 2017. Source: Statista 2021

Business Implications of an FTO Search

Brand loyalty is a very complicated term in modern businesses. Customers are always looking for better products and solutions. If a brand is perceived as a laggard (due to patent infringement), its customer base will reduce in no time. The customer base is directly proportional to the revenue of the company. Hence it makes sense to invest in an FTO search and consider the cost as a part of the long-term business strategy. One of the best examples is that of Motorola who got bogged down due to a pile of patent infringement cases by industry bigwigs.

Conclusion

From the above discussion, we can positively conclude that lack of FTO search due to cost involved can pose an existential threat to the company. Besides, the financial and business implications, it might shake the very foundation of your business by diluting your brand beyond repair. Hence, it is imperative that companies with far-sightedness look upon the FTO search cost as a long-term investment.

Sagacious IP's Freedom to Operate Search service has been designed and developed to deliver cost-effective and precise analysis in the nick of time. Our service ensures that your business staves off any financial or business implications resulting from a possible patent infringement.

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Freedom to Operate (FTO) Search Cost: A Value Addition or a Drag on Company Resources? - Sagacious IP

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The dynamics of a business environment has undergone a massive transformation in the last two decades. Take the product lifecycle for technology as an example. It is much shorter than it was before and in order to stay ahead of the curve, companies are constantly innovating to offer a better experience to its customers.

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How to Frame An Office Action Response to Avoid New Sheet

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How to Frame An Office Action Response to Avoid New Sheet

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The country that has authority over a patent or trademark registration application will send you an official letter called an office action (OA). The legal issues with your trademark or patent application make up an OA. Before your trademark or patent can be registered, it needs to be settled. A new page in OA and a new design must be provided to further clarify specific extra portions of the invention. Similarly to this, Apache OpenOffice accidentally creates a new sheet when splitting the drawings for clarity. The material on the newly added page could lengthen the evaluation process for patent applications, resulting in more office actions.
Read the complete article about Office Action Response to learn more.
https://sagaciousresearch.com/blog/frame-an-office-action-response-to-avoid-new-sheet/

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An office action (OA) is an official letter sent by the country's jurisdiction in which you have applied for a patent or trademark registration. An OA consists of the legal problems with your trademark or patent application. It needs to be resolved to register your trademark or patent. While introducing a new drawing to explain some additional things about the patent, there is a need to add a new sheet in OA. Similarly, when we are splitting the drawings for the sake of clarity, it accidentally leads to a new sheet in OA. The new sheet thus added and the information introduced in it may lead to further delay in patent examination and lead to more office action.

The following article discusses the points which can be helpful to avoid new sheet requirements.

Effective Office Action Responses to Prevent New Sheet

Office Action is at times inevitable and often leads to the beginning of building a robust patent portfolio system. Therefore, it is prudent to respond to office action precisely and succinctly. The action will simplify the answer and reduce the probability of requiring a new sheet to address the issue raised by the patent examiner. There are 5- practical steps (shown in Image 1) for an effective response to an office action to avoid new sheets.

Step 1: Provide detailed description of all the parts: All the parts of the drawing or illustrations must be clearly described in response to the office action without addition of a new terminology and matter. The detailed description can be either the text or components in the drawing. Detailed description eliminates the probability of future complications and possibility of another office action.

Step 2: Complete all amendments to office action on time: Any amendment in response to theoffice action should be done within the stipulated time period. Timely response ensures no future office actions will require additional new sheets to explain the issue at the front.

Step 3: Clearly mention description of all the parts in amendment: The amendment sheet must explain all the parts of the drawing or text crisply and clearly. Rather than focusing on length, care should be taken to explain the parts in short and precise ways.

Step 4: Refrain from introducing new matters that may lead to new sheets: While responding to an office action, it is always tempting to add some new matters for better explanation. However, you should avoid it as far as possible. New matters not only require new sheets but can also increase the chances of receiving another office action for new term explanation.

Step 5: The Figure description should be generic enough: The description of the figure should always be generic, highlighting only the matters related to the drawing. The description on its own should not lead to information beyond the drawing and illustrations, as it may lead to new sheets for explaining additional matters. Generally speaking, new sheet is required to explain the new matter. Therefore, the ideal approach would be to avoid the new matter altogether by filing the patent application diligently.

Introduction of New Matter

New matter is a type of matter which was not described while filing the patent. Hence, anything other than original information, whether it's a new figure or a new part is considered as new matter in OA. It is all about the patent specification before filing. You must pay attention to the specification and disclose all the possible claim variations so that you anticipate its usage during prosecution. The key here is to stick to the original patent specification as filed. So we cannot add new matter to the already filed application but rather a second application can be filed that is linked to the first one, to introduce new matter.

Here is an example of OA which can lead to the introduction of a new matter.

Figure 1: Example of OA that can lead to introduction of new matter

In the above figure, the objection is for the insufficient line quality of the design. If we add one extra line or we disturb the shape of the product, it will lead to another OA. Similarly, adding one more image to clearly explain this will lead to new sheet in OA. So stick to the original file specification and the objections in OA to avoid introducing new matter or sheet to the OA.

The solution to this figure is attached below. In the figure, we have prepared the drawing so that all lines can be clearly visible without introducing any extra new line or any new matter.

Figure 2: How Lines should be represented without an extra line or new figure

Conclusion

By following the five effective steps discussed above, one can prevent the need for a new matter that can lead to new sheets. A timely and effective response to office action can prevent unnecessary delay in patent examination and finalization. It is a wise business strategy to outsource the work of office action responses to subject-matter-experts.

Sagacious IP's team of professional Patent Illustrators are adept at all types of patent drawings, such as, design patent drawings, utility patent drawings, trademark patent drawings etc. The range of domains include Mechanical, Medical, Electrical, etc. as per the rules and regulations that meet the standard and specifications for USPTO, PCT, EPO and various other patent offices. We follow all the guidelines and regulations of different jurisdictions to avoid office action on drawings. We also help in resolving all types of issues mentioned in the office action.

Our expertise lies in preparing all types of drawings - from rough sketches, images or even through verbal instructions, to deliver the drawings in different formats such as .PDF, .JPG, .PNG. We can also deliver source files if requested by the client and ensure end-to-end confidentiality and security of all data entrusted to us. Click here to know more about our service.

Rishabh Arora (Illustration) and the Editorial Team

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How to Frame An Office Action Response to Avoid New Sheet - Sagacious IP

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An office action (OA) is an official letter sent by the country's jurisdiction in which you have applied for a patent or trademark registration. An OA consists of the legal problems with your trademark or patent application. It needs to be resolved to register your trademark or patent.

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Defining Common Terms in Patent Specification for a Foolproof Application

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Defining Common Terms in Patent Specification for a Foolproof Application

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Using terminology with vague or common meanings in a patent specification might lead to problems like misunderstandings or broad/multiple interpretations during application review. This can quickly result in a delay in the approval of the patent application or even its rejection. Therefore, to reduce the likelihood of such hazards, the applicant should include well-defined terminology in the background, description, claims, drawings, and other parts of the patent specification.

To read the entire case study, visit our article about Patent Specification.

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How to use Existing Patent Application Drawings for Filings in Other Jurisdictions – A Case Study

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How to use Existing Patent Application Drawings for Filings in Other Jurisdictions – A Case Study

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Many times, especially when numerous jurisdictions are involved in the application process, patent applicants worry about the high expenses of patenting an innovation. In such a situation, using pre-existing patent application drawings for filings in many countries is one of the simplest ways to save money. For submissions in a number of different locations, for instance, an applicant may use drawings created for USPTO applications with or without modest alterations.

To get more information about our approach, read the entire article about Patent Application Drawings.

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Sagacious IP - Editorial Team, Chandra Prakash Pandey

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How to use Existing Patent Application Drawings for Filings in Other Jurisdictions – A Case Study

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A case study on how Sagacious IP’s patent illustration service offers patent application drawings for filings in various jurisdictions.

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How We Helped An International Trademark Protection Company With Our Trademark Knockout Search

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How We Helped An International Trademark Protection Company With Our Trademark Knockout Search

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A trademark that is supported by in-depth research, is exclusive to the market, and functions as a catalyst for raising your brand's value. In this piece, we'll go over a real-world example of how our trademark knockout search service aided a business in providing its client with better foreign trademark protection services in a short amount of time. A thorough search called a "trademark knockout" should be done before submitting an application for trademark registration. It aids in removing contradictions and similarities between your brand and those of others. The similarity may be connotative, oral, or visual. The end result is a distinctive trademark that best reflects you and is prepared for registration.
Read more about-trademark knockout search

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How Sagacious IP Helped a US-Based Inventor File an Error-Free Utility Patent Application

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How Sagacious IP Helped a US-Based Inventor File an Error-Free Utility Patent Application

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Since a utility patent is the kind of patent that is most commonly used, that is what is usually meant when the word "patent" is used. These patents are granted in return for a beneficial upgrade to a certain good, service, or machine. Inventors frequently require expert help with the utility patent application process, particularly with illustrations where technical patent drawings are necessary. All of these components can be used to create utility patent applications.
Read the entire article about a utility patent.

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Hydrogel Patent Trends: Leading Innovators, Top Jurisdictions and More

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Hydrogel Patent Trends: Leading Innovators, Top Jurisdictions and More

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Due to their high water content, softness, flexibility, and biocompatibility, hydrogels have become extremely popular in the medical industry, particularly in implants and drug delivery systems. As a result, the market for hydrogel-based medicine delivery systems saw value growth between 2017 and 2021 at a CAGR of 7.7%. Many organisations from around the world are developing new hydrogel products, including Boston Scientific, AbbVie, the University of California, and MIT (Massachusetts Institute of Technology). Recent years have seen an increase in IP filings in this field, with a greater emphasis on the materials and coatings used in prosthetics, which suggests increased study into implant materials.

To know more, read the entire article about Hydrogel Patent.

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Hydrogels have gained immense popularity in the medical domain, especially in implants and drug delivery systems, due to their high water content, softness, flexibility, and biocompatibility. As a result, the hydrogel-based medication delivery systems market value grew at a CAGR of 7.7% from 2017 to 2021. Numerous organizations from around the world, including Boston Scientific, AbbVie, University of California, and MIT (Massachusetts Institute of Technology), are innovating in the hydrogel space. An accelerated IP filing in this space has been observed in recent years, with more focus on materials/coating used in the prosthetics - indicating research around the implant materials.

This article discusses every aspect of hydrogel implants, their market growth, IP analysis, and current trends in drug hydrogel implants.

Drug Implants and Hydrogel

Drug implants are implantable devices that help deliver drugs at a targeted site using polymer materials. They belong to the category of remote-controlled drug depots, which are valuable tools for administering drugs and releasing them in a time-bound manner. It may also help optimize the efficiency and tolerability of the drugs, along with their simplified administration. The use of these implants comes into the picture because of certain problems, such as immune tolerance, sequestration, and other concerns which may arise due to increased drug metabolism, different concentrations of the drug supplied in blood, etc. These problems can be controlled by synchronously releasing vaccine components from implants over a defined time period. Controlled drug delivery systems are essential to overcome these concerns. Common examples of these controlled drug depots include nano-particles, hydrogels, and liposomes.

Hydrogels have gained popularity as drug delivery systems in recent years. They are colloidal substances formed by the combination of water and solids, and possess a high absorption capacity, containing over 90 percent water. Moreover, using hydrogels in drug delivery systems has various advantages. For instance, they are biocompatible and remain intact inside the body until catalyzed to disintegrate. Patients can take a pill or a medication that acts as a trigger that would cause this gel implant beneath their skin to deliver one vaccination/drug dosage.

Types of Hydrogel

Hydrogels are made using polymers, and based on the type of polymers, they are mainly classified into three types:

1. Natural hydrogels: They are made from proteins like gelatin, lysosomes, collagen, and polysaccharides, such as chitosan, hyaluronic acid, and alginate. These natural hydrogels show good cell adhesion properties but have stability and mechanical issues, leading to the short use of these gels in drug delivery systems. In 2020, the natural category led the market for hydrogel-based drug delivery systems, accounting for 32.3% of total revenue.

2. Synthetic hydrogels: They are made from materials like Poly (vinyl pyrrolidone), Poly (acrylic acid), and Poly (vinyl pyrrolidone) starch. They have gained more popularity in the industry than natural hydrogels owing to their improved mechanical properties, higher drug absorbance capacity, controlled degradation features, and enhanced lifetime.

3. Hybrid hydrogels: They are innovative, stimuli-responsive, smart hydrogels developed using a combination of natural and synthetic hydrogels. With a 6.6% CAGR in 2021, the hybrid category led the hydrogel-based drug delivery systems market. The research is still in progress for their widespread use in medicine.

Hydrogels can also be differentiated based on porous (macro-pores of 10-500 μm) and non-porous structures. The hydrogels' size and porous structure also contribute to deciding how they can be delivered in the human body, such as through injections, implantations, etc.

Hydrogel Implant Applications

Vaccinations are one of the promising methods to fight against diseases, such as cancer. However, the absence of optimal delivery mechanisms to produce potent and long-lasting antitumor immune responses severely restricts the clinical effectiveness of the available cancer vaccines. Additionally, most cancer vaccines need numerous injections to stimulate immune responses, which results in low patient compliance. By providing medications in a regulated way, controlled-release drug delivery systems, such as hydrogels, can solve these problems. It enables the co-delivery of numerous treatments, reduces dose frequency, and avoids substantial systemic toxicities.

Every year, on an average, two million women worldwide are diagnosed with breast cancer, and the treatment often involves removing at least one breast. However, the majority of women opt not to have their breasts rebuilt. With the emergence of new technology based on 3D-printed implants, hydrogels can help generate new breast tissue before decomposing completely. Silicon is commonly used for this technique; however, it creates some side effects in rare lymphomas, which could be lethal. Healshape - a regenerative medicine biotech startup - has developed a hydrogel-based implant that gradually colonizes the patient's fat cells and helps women recover breasts within six to nine months.

Recently, the FDA approved a drug named Dextenza, a human-use ocular therapeutic formulation using hydrogel implant for treating ocular pain immediately after eye surgery. The drug, developed by Ocular Therapeutix, significantly impacted the market since traditional ophthalmic eye drops have trouble delivering medication over time, and eye discharge causes a considerable amount of drugs to be wasted immediately.

Similarly, an injectable hydrogel was created by a team of researchers at NYU to inhibit the onset of Post-Traumatic Osteoarthritis (PTOA). Polypeptides, proteins, and the anti-inflammatory growth factor - Atsttrin - make up the polymer gel. Together, they create a network for healing and regeneration.

Since these gels have good adhesion and stability properties with the mucosal cavity, they are incorporated with drugs for treating diseases associated with the mouth cavity, such as gum diseases and fungal infections. Despite such enormous benefits, the high cost of hydrogels and the challenge of creating a hydrogel with a constant surface area can hinder its acceptability.

Major Market Growth Factors of Hydrogel

Various factors are leading to the increased use of hydrogel implants/vaccines. Following are some of these growth factors -

Target specified safe transport & therapeutic effect: Hydrogels have become more popular because of their safe transport property to the target area and to achieve the desired therapeutic effect and reduce the unwanted side effects.

R&D on various clinical diseases: Due to advancements in technology, R&D development on various clinical diseases across the globe, and the growing prevalence of chronic diseases, there is a huge demand for better medication, vaccines, and therapies. Also, the Covid-19 outbreak has enhanced the number of clinical trials and vaccine production in the last three years. A hydrogel-based slow release of a receptor-binding domain subunit vaccination was developed having neutralizing antibody responses against SARS-CoV-2.

Significant Factors Limiting the Market Growth of Hydrogel Implants

Despite the various advantages of the hydrogel implants/vaccines, the complicated development process for these hydrogel-based drug delivery systems with constant surface area is hindering their market growth. Furthermore, due to their complex design, companies find it difficult to manufacture these systems for future use. Apart from these factors, there are various other challenges posing significant obstacles in the clinical translation of hydrogel systems. These include practical adaptability, high fabrication and development costs, good regulatory guidelines, and more.

The regulatory classification and approvals, such as Food and Drug Administration (FDA) approval, are difficult due to the various types of drug hydrogel implant scaffolds available. These factors add to the already time-consuming regulatory FDA approvals for their market launch and observation.

Good and well-defined manufacturing practices are essential for integrating hydrogel systems in large-scale systems. These practices can also make various factors predictable, such as safety profiles, proficiency, reproducibility, etc. However, most of these systems currently exist at a smaller pilot scale.

Consumer Trend in Hydrogel Drug Market

Hydrogel-based medication delivery systems market value has seen a 7.7% CAGR between 2017 and 2021. By 2026, the worldwide macromolecule hydrogel market is expected to grow to USD 578 million from USD 475.7 million in 2020. The covid-19 pandemic played a significant role in the growth of this industry.

Hydrogel was used in 223 clinical studies for therapeutic or diagnostic reasons, excluding contact lens trials, according to a 2019 NCBI (National Center for Biotechnology Information) analysis. Eight of the 223 clinical studies used hydrogel coils, 166 used bulk hydrogels, and 99 used patch hydrogels.

IP Analysis and Trends in Hydrogel Patent

The innovation in the field for the treatment of various diseases has led to tremendous hydrogel patent growth in recent years. Sagacious IP analyzed the hydrogel patent trends in the last ten years. The findings are highlighted below.

Figure 1: No. of hydrogel patent filings indicate a rising graph, apart from a recent dip

Priority Year refers to when the earliest hydrogel patent application was filed for an invention.

The data about the years 2020, 2021 and 2022 might not be complete since it takes 18 months in general for a patent application to be published in the public domain.

Leading Hydrogel Patent Assignees in the Domain

Some of the major companies in the domain are Medtronic (155), Boston Scientific (112), and AbbVie (88). Some universities and institutes have also played a significant role in the domain, such as the University of California (99), MIT (76), and Johns Hopkins University (64). Major patent assignees for the drug hydrogel implants are shown in Figure 2 below.

Figure 2: Leading assignees for hydrogel patents

Leading Countries of Innovation and Research

The United States leads the list of countries innovating in the domain and filing hydrogel patents. University of California, MIT, Abbott, University of Pittsburgh, Massachusetts General Hospital, Rutgers University, and Johns Hopkins University are the leading assignees of hydrogel patents from the US.

Figure 3: Leading countries in drug hydrogel implant patent

Top Technology Focus

The leading hydrogel patents focus on technologies for materials or coating for prostheses, medicinal preparations, filters implantable into blood vessels, cultivation or maintenance of tissues or cell lines, etc. Figure 4 below shows the number of hydrogel patent families in different CPC classes.

Figure 4: Top technology focus patent in drug hydrogel implant

Figure 5: Definition of top hydrogel patent CPC classes

Conclusion

Biocompatibility, biodegradability, and controlled release profile have added to the popularity of hydrogels. Despite the various challenges in the field, hydrogels have a promising future. Some of the important factors likely to contribute to the growth of the market for hydrogel-based drug delivery systems are the high drug loading capacity, controlled release and targeted distribution. Formulating the desired drugs in the form of hydrogels helps in dose sparing, decreased medication administration frequency, improved patient compliance, and fewer adverse effects.

Owing to these specialties, vaccine implants gained great coverage during the Covid-19 outbreak. A significant number of studies were conducted to evaluate the development of the Covid-19 vaccine using hydrogels, contributing to its market growth. Further, accelerated IP filing in this space has been observed in recent years, with more focus on materials/coating used in the prosthetics indicating research around the implant materials. Some more possible areas of hydrogel patent progress in the near future can include using hydrogels for the treatment of local infections in the presence of antigens or for the treatment of genetic diseases.

Sagacious IP assists clients with their inventions by distinguishing disruptive technologies from innovations, identifying major players driving a specific technology domain, and identifying solutions for emerging difficulties in technological spaces. Through our technology scouting service, we have worked with multiple organizations researching in various sectors, such as biomaterials, polymer science, and others, to find solutions for major technical problems. Click the link above for more details about our tech scouting service.

- Devika Saini (Life Sciences & Chemistry) and the Editorial Team

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Hydrogel Patent Trends: Leading Innovators, Top Jurisdictions and More

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Hydrogels have gained immense popularity in the medical domain, especially in implants and drug delivery systems, due to their high water content, softness, flexibility, and biocompatibility. As a result, the hydrogel-based medication delivery systems market value grew at a CAGR of 7.7% from 2017 to 2021.

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Unitary Patent and Unified Patent Court: A Complete Guide

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Unitary Patent and Unified Patent Court: A Complete Guide

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Although the IP landscape is constantly changing, one of the largest upheavals in recent memory is currently being seen in the European patent landscape in particular. Companies operating in Europe are being compelled to review their IP strategies in light of the early 2023 implementation of the Unitary Patent (UP) and Unified Patent Court (UPC). Particularly for businesses that use patents frequently, UP and UPC will create new channels for managing time and expense. The new method appears extremely promising on all counts, but it is expected to provide its own set of difficulties.

To get more information, read the entire article about Unified Patent Court.

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Although the IP landscape is forever evolving, the European patent landscape, in particular, is currently witnessing one of the biggest shifts in a long time. The advent of Unitary Patent (UP) and Unified Patent Court (UPC) in early 2023 is compelling companies operating in Europe to revisit their IP strategies. UP and UPC will open new avenues to manage cost and time, especially for patent-heavy businesses. While the new system seems quite promising on all fronts, it is anticipated to bring along its own set of challenges.

Bart van Wezenbeek - Sagacious IP's Global Advisory Council Member and a former patent attorney - shares his thoughts on the new patent regime in Europe.

So what is a Unitary Patent?

Quite simply, it is a legal title which will offer uniform protection to innovations with equal effect in all participating nations of the Agreement on Unified Patent Court (UPCA). The unitary effect will be available for all patents granted by the European Patent Office ( EPO) as per the European Patent Convention (EPC). All Unitary Patents will enjoy a novel protection route - one parallel to national patents and traditional European patents (EPs). Besides saving huge costs, Unitary Patents will also reduce the administrative burdens for patent owners.

Unified Patent Court

The establishment of the Unitary Patent warrants the need for a single international jurisdiction to settle all disputes of validity and infringement. This is where Unified Patent Court comes into play. The UPC's decision will be enforceable in all contracting member states, i.e., European Union members that have ratified the Agreement on Unified Patent Court. The special court will have the authority to decide on the matters of infringement actions, provisional measures and injunctions, revocation actions and counterclaims, private prior-use actions, actions for declaration of non-infringement, and actions for damages or compensation regarding UPs. However, the court will also have jurisdiction on (already existing and yet to be granted) traditional EPs, but of course, only for the member states that have ratified the Agreement. Thus, it will become a one-stop solution for patent applicants and owners seeking the resolution of their disputes and grievances.

Figure 1: Salient Features of UP & UPC

Jurisdiction of Unified Patent Court

The UPC will enjoy a pan-European Union jurisdiction, extending to 24 member states of the European Union, with the exception of Croatia, Poland and Spain. Of these 24 countries, 17 have already ratified the UPC Agreement. The jurisdiction of the UPC is expected to expand in the coming years to encompass most of the European Union. Clearly, the cost-effectiveness of a Unitary Patent will expand as more countries of the European Union join the UPCA. However, it is worth noting that the unitary effect of any particular Unitary Patent will cover only those countries that had ratified the UPCA at the time of its issuance.

UP and UPC Enforcement Date

The entry-into-force date of the UPC will be known once Germany deposits its instrument of ratification. This will trigger the three-to-four-month "Sunrise Period," after which the Unitary Patent and Unified Patent Court will come into effect. Although there is still no specific date, the court is expected to commence its operations in early 2023. Thus, patent applicants and owners should start exploring their options as per the new regime.

Will all European Patents be under UPC's Jurisdiction?

As per the Unified Patent Court agreement rules, patent owners have the option to opt-out their current-style European patents from the jurisdiction of the UPC and remain under the jurisdiction of the national courts. With the current UPC Case Management System, patent owners must opt-out for every single European patent in their portfolio. The same rule applies to all applications pending before the European Patent Office.

The opt-out option is being looked at as an effective defensive strategy since revocation by a single authority (UPC) can render European patents with unitary effect revoked across a big chunk of the continent. However, patent owners going for the opt-out option will also miss reaping the benefits of Unitary Patents.

The Unified Patent Court will share jurisdiction with national courts till the end of a transitional period - seven years from the date of UPCA coming into effect. This transitional period may be extended once for a period of up to seven years. Post the expiry of this transitional period, only UPC will govern jurisdiction over European patents (either Unitary Patents or current-style European patents).

Figure 2: UP and UPC Timeline

Is Sunrise Period Critical?

The sunrise period will provide a window for patent owners to file opt-out applications and remove their European patents and patent applications from the exclusive competence of the Unified Patent Court. The opt-out option will be available from the commencement of the sunrise period till the conclusion of the transitional period. The option is no longer available to a patent owner once an action has been brought against their patent or application before the UPC.

Benefits of UP and UPC

The benefits of the Unitary Patent system are explained below:

Cost Saving: The annual cost of renewing a Unitary Patent is equivalent to the cost of renewing patents in four European countries. Thus, businesses seeking wide protection for their innovations can advantageously apply for unitary effect for their patents. Additionally, the new system will also help applicants save translation and validation costs.

Pan-European Union Enforcement: The single court system eliminates scenarios with conflicting decisions from different judiciaries within the participating countries. Also, it makes it possible to seek relief at one spot despite infringement taking place in a range of separate territories.

Quick Resolution: Patent infringement cases can stretch several years depending on the jurisdiction, discouraging companies from engaging in litigation. However, the Unified Patent Court aims to resolve cases within a year. Combined with the broad jurisdiction of the court, the quick resolution of cases will assure businesses regarding the protection of their IPs.

Excellent for Small Businesses: Thevarious aspects of the new patent regime make it greatly beneficial for small and micro-businesses with limited resources at their disposal. Moreover, small and micro-businesses are also entitled to reduced court fees, adding to their delight.

English as Primary Language: All Unitary Patents will have an English version. This is a great benefit for companies from English-speaking countries as this will save them translation costs. Further, in most, if not all, of the participating UPC local and central divisions, English may be used as the language of the proceedings.

Simple Process: The emergence of the Unitary Patent and Unified Patent Court has certainly made things simple for applicants, plaintiffs as well as defendants.

Threats, Challenges and Opportunities Emerging with the New System

The new system is expected to pose threats, challenges, as well as opportunities. Let's take a look at this for different stakeholders.

For Litigators: The establishment of the UP and UPC will draw the attention of companies toward international litigators with specialization or expertise in international patent law. It will also persuade law firms to go international by limiting/eliminating the jurisdiction of national courts over European patents. Further, not only attorneys-at-law but also European Patent Attorneys may represent before the court.

For Applicants: The Unitary Patent and Unified Patent Court have created several dilemmas for applicants as they must now answer several questions for each old and new EP in their portfolio. For instance, they must decide the extent of protection they need for their innovation, the markets they wish to explore, maintenance costs, strengths and weaknesses of their patents, their commercial value, and more.

For Patent (Law) Firms: Patent firms must also adapt to the new regime. They must start with training their attorneys and paralegals regarding the latest patent system. Patent/law firms should also connect to and prepare a docketing system for the procedures before the UPC.

Final Thoughts

Years of efforts will soon come to fruition with the establishment of the Unitary Patent and Unified Patent Court. This tectonic shift in the European IP regime has its challenges as well as opportunities for businesses. Patent holders and innovators ought to start reanalyzing their patent strategies right away. Amongst the most critical tasks for companies is to decide whether they should go for unitary effect for their patent or stay with the current system. A further important task is to consider whether or not to submit opt-out requests. Thus, a thorough analysis of every EP in the portfolio is essential, based on business strategy as well as the impact of each individual patent. Sagacious IP can help your business prepare for the upcoming patent regime. Visit our Unitary Patent and Unified Patent Court Services page to learn about our expertise.

- The Editorial Team

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Unitary Patent and Unified Patent Court: A Complete Guide

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Although the IP landscape is forever evolving, the European patent landscape, in particular, is currently witnessing one of the biggest shifts in a long time. The advent of Unitary Patent (UP) and Unified Patent Court (UPC) in early 2023 is compelling companies operating in Europe to revisit their IP strategies.

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Trademark Search: A Prudent Step Towards Mitigating Future Risks

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Trademark Search: A Prudent Step Towards Mitigating Future Risks

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Businesses have come to understand the enormous benefit of trademark registration in maintaining brand value and identity. The increasing quantity of trademark applications is proof of this. However, not all trademark applications are accepted by the IP office, wasting valuable time, money, and other assets for businesses. Before submitting a registration form, firms should undertake a trademark search to increase their chances of acceptance. It is a procedure to rule out the potential of currently existing marks that are similar and identical.

To get more information, read the entire article about Trademark Search.

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Businesses have realized the immense significance of registering trademarks in preserving brand value and identity. This is evident from the rising number of trademark filings. However, not all trademark applications get approval from the IP office, resulting in the squandering of time, money, and other crucial resources for companies. One of the things that businesses can do to improve their chances of approval is to conduct a trademark search before filing a registration form. It is a process to rule out the possibility of similar and identical marks already in existence.

This article will broadly discuss the need for trademark search, its objectives, critical elements in conducting a trademark search, its scope, benefits, various tools used in trademark search, etc. But first, let us understand what trademark search is.

Trademark Search and its Relevance

A trademark search helps businesses find identical or similar marks in existence before filing for trademark registration. A comprehensive search encompasses not merely registered trademarks but also trade names, businesses' names, trade literature, company indexes, businesses and newspaper indexes, etc., that could hinder the trademark registration process. It covers both online and offline use of marks that are similar to the mark one wishes to register and use. Moreover, trademark search is not limited to just brand names (words or phrases). The Vienna code classification helps businesses generate information on identical or similar brand logos already in existence.

It is vital to perform a trademark search to register a brand name or logo for its products and services. If a similar trademark exists in the trademark registry, the name must be altered, or a new name must be selected. Alternatively, if the brand name is unique, one can proceed and file for trademark registration at the concerned intellectual property (IP) office. Therefore, it is always a good idea to conduct a trademark search before applying to register the trademark.

Businesses can avail several benefits by using the trademark search and its subsequent search reports. In the next section, we will discuss the same.

Benefits of Trademark Search

The five crucial benefits of trademark search are shown in Figure 1 below:

Figure 1: Five Benefits of Performing a Trademark Search

1. Saves Money and Resources: The foremost benefit of performing a trademark search is that it helps save money and other resources against a mark that may not be available for use. Proceeding with the trademark registration in the absence of any search mechanism can prove counterproductive with the loss of valuable financial and other resources in the form of rejected trademark applications, office actions, and more.

2. Saves Time & Provides Flexibility: A comprehensive trademark search recognizes the identical or similar mark already in existence, thereby minimizing the chances of office actions or objections by third parties that could easily result in delayed approval, or even rejection.

3. Avoid Business Hiccups: A company may choose to move forward with mark usage and application filing without any trademark searching mechanism. In addition, it may also commence its marketing and branding activities with the mark just after submitting a trademark registration form. However, this can have dire consequences. All the efforts may be washed away when the mark is found to be infringing on a registered trademark. Consequently, a business is compelled to rebrand, creating a significant bottleneck in the process. A business can avoid all such predicaments by conducting an effective trademark search before applying for registration or commencing any operations involving the trademark.

4. Avoid Dispute & Litigation Cost: Using an existing third-party trademark is most likely to cause a legal dispute and increase the litigation cost if the trademark owner is willing to enforce its right. Conducting an effective trademark search to check for the availability of the mark saves one from complicated and mind-boggling disputes and litigation costs.

5. Get Valuable Insights: In the course of performing a trademark search, one can also develop insights about the trademarks that competitors are using in the same industry or domain. Such insights also help change your selection as per the market trends, tastes, and preferences.

Now that we have covered the benefits of trademark search, let us discuss its different objectives in the next section.

Different Objectives for Trademark Search

Trademark search is a quick and reliable way to check the availability of your finalized brand name or logo in the business domain. Most of the IP industry stalwarts advise conducting trademark search before using a new brand name, logo, slogan, etc. If a company fails to perform the search to check for its availability, it risks rejection of the trademark application. Moreover, in case the brand's products are already in the market, and a similar or identical mark exists, the original trademark's owner can take legal action and force you to stop the mark's commercial use. Therefore, it is significant to know your objectives before performing a trademark search. There are primarily two objectives, as shown in Figure 2 below:

Figure 2: Two Primary Objectives of Trademark Search

1. Infringement Search: Applicants search official trademark registers for both approved and pending registrations to avoid the possibility of infringing upon anyone else's rights. In addition, they also perform market-based common law searches for competitors using related, although unregistered trademarks.

2. Registrability Search: To determine whether a trademark is available for registration, one must search for confusingly similar or significantly identical trademarks. Therefore, one must make similar inquiries required for an infringement search. In addition, one also needs to identify if your trademark contains:

Surname

Geographical name

Inappropriate/illegal meaning or connotations

Deceptive or confusing elements

Known meaning related to kind, quality, quantity, value, or intended purpose of the goods or services

Once the objective is clear, the next obvious step is to get familiar with what a correct trademark search entails.

Essential Elements of a Robust Trademark Search

There are seven critical elements in performing an effective trademark search. These are listed below:

1. Describing the products and services being sold with the mark: The first step towards effective trademark search is elaborating on the product or services to be sold with the mark. It helps in filtering out the results quickly and precisely.

2. Identifying specific terms for your product and service using the online 'Acceptable Identification of Goods & Services' Manual: The next step is to figure out the acceptable terms for the goods and services. If you are conducting trademark search in the US jurisdiction, you can find the goods & services identification manual on the United States Patent and Trademark Office (USPTO) website. You can locate the terms that best describe your goods or services. For example, "flying discs" can be acceptable for a flying saucer-type toy.

3. Finding international class: The entry for the applicant's service or product in the Acceptable Identification of Goods and Service manual will also provide detail about the suitable international class for that product or service. Although providing the type of goods or services is not mandatory in an application, knowing it in advance helps narrow down the search.

4. Determining related goods or services, and their respective classes: Recognize terms for related services and goods advertised, used, or sold in association with your product. For example, peanut butter is used with jellies and jams in the acceptable identification of goods & services manual. Users should also scan the international classification of goods and services for classes related to their products and services.

5. Formulating a basic search strategy: Conduct a comprehensive brainstorming session to ponder other alternatives to your trademark in case the first choice happens to be taken and unavailable. If your marks include a phrase, think about what the most important keywords are. Besides, make sure that you use truncation devices (*) or wildcards (?) to search for marks with word stem similar to yours.

6. Expanding your search strategy: Broaden your search by using different spellings and homonyms to your mark. Try using words that bear similar meaning to your marks. Moreover, try words with similar sounds or appearances or even phonetic equivalents. When required, the search strategy can also be narrowed by restricting your search results to the goods/services found in step two or the international class found in step three.

7. Performing the search: Conduct the search on relevant trademark databases. Trademark search must take place on all relevant databases, platforms, tools, etc., to ensure no similar or identical mark exists.

Brand names are the most common types of trademarks. Thus, knowing how to search for a free trademark name is immensely important. In the following section, we will elaborate on the same.

Searching for a Name Trademark

Apart from identical marks, any similar name that might cause confusion in the minds of consumers is prohibited from registration or use. Thus, a comprehensive trademark search in different categories can help businesses in ensuring minimum chances of trademark infringement or any other legal issues in trademarks. Trademark search generally consists of the categories shown in Figure 3 below:

Figure 3: Six Different Categories of Trademark Search

1. Identical Trademark Search: The result of an identical trademark search detects the marks which are visually or phonetically an exact match.

2. Similar Trademark Search: The outcome of this type of trademark search identifies confusingly or identically similar trademarks.

3. Trademark Search with Opinion: Usually, this type of search comes with an experienced attorney's advice or recommendations for similar or identical trademark search outcomes depending on the consideration of the identified prior mark.

4. Index Search: This search recognizes businesses with similar or identical names to the search terms.

5. In-use Verification Search: It verifies if the third party with prior rights is utilizing its trademark rights appropriately, which may create an opportunity for contesting the registration.

6. Trade Name Search: This search identifies trade names that conflict with the selected trademark. It does so by filtering out companies with names identical or similar to the search terms. Apart from this, an expert IP attorney can also help in checking the mark for unintended associations as well as meanings. This search proves immensely fruitful if a company wishes to launch its product or services in new markets where linguistic differences could cause hindrances.

Now that we have a fair understanding of the various categories of trademark name search, let us discuss the scope of trademark search.

Trademark Search Scope

Its scope should be broad enough to cover national trademark registrations, state trademark registrations, and also common law trademark rights. Besides, the national and state searches should encompass pending applications, abandoned applications, and expired registrations. This is because many countries grant trademark rights only upon use, and registration is not mandatory for trademark rights to exist. Hence, although pending applications and abandoned registrations imply the non-existence of IP rights, the marks in the application may still be in use and very much relevant.

It is also imperative to find common law trademarks even where no application to register the marks has ever been filed. Many databases also include lists of product names, though they are not complete. Supplementary data sources, such as periodicals covering the area of trademark use, press releases, phone book databases, internet domain name registrations, and corporate information databases, should be examined. Trademark searches lacking comprehensive common law trademark searches are irrelevant when utilizing a new trademark.

The next section talks about how to comprehend and interpret the search report and its results.

Trademark Search Report

IP experts compile the results of trademark search in a comprehensive report, referred to as a trademark search report. It provides all the details about the existence of trademarks that are identical or similar to the selected mark. Therefore, this report is immensely beneficial for companies looking forward to registering their trademark and launching products or services. These reports are usually compiled by specialized law firms. One can also reach out to trademark attorneys to prepare a detailed trademark search report for a particular mark or class.

The trademark search report makes it easier for businesses (decision-makers) to analyze the probability of trademark registration from the perspective of absolute grounds for refusal and the relative grounds for refusal. It also stresses the chances of objection from third parties in subsequent proceedings.

Technology has changed the contours of trademark search. The next section will elaborate on how.

Impact of Technology on Trademark Searching Tools & Strategies

The advent of technology, especially the internet as a searching tool, has catapulted the quality of trademark searching. It has also led to the formulation of advanced trademark search strategies. The web as a strategic tool can have a significant impact on trademark searching in the following ways:

It can act as a large access point to the global use of word marks

Be a fast and dependable front end to online trademark search vendors

Possible search tool for non-word trademarks

A common marketplace for companies seeking trademark search experts

Additionally, ever since the advent of the internet, trademark search tools and platforms have also evolved greatly. Early search platforms allowed for searching of only simple word strings. Various challenges, such as intentional misspellings, slangs, puns, corrupted spellings, variations in common words, prefixes and suffixes, colloquialisms, foreign language equivalent, abbreviations, and punctuations, synonyms, coined words, render these initial tools useless.

Fortunately, modern search services help in collating similar marks. Over the years, producers and vendors have taken the diligent task of cross-referencing related string marks. Besides, technology, such as the rotated trademark index, helps to locate letter strings present as prefixes, suffixes, mid-word, or the whole word. Therefore, there is no denying that the advanced tools have had a massive impact on trademark search.

Let us now discuss some tools available for online trademark search.

Online Trademark Search Tools

One of the popular tools for trademark search is the USPTO's TESS or Trademark Electronic Search System, which offers a simple search template. Unfortunately, the TESS search software does not provide a phonetic search option. Usually, phonetic searches generate many unwanted records. The pattern matching capabilities of TESS facilitates the flexibility of creating one's phonetic searches. In addition, Lexis® FEDTM includes search capabilities that are crucial to successful trademark searching. Using the tool, one can find all words, including noise words such as "at," "is," and "it" or Boolean connectors such as "and" or "or."

One can also perform a comprehensive search for unregistered trademarks by utilizing internet search engines. For example, on entering a proposed name in the Google search box, you can see a report of every instance when the word has appeared on a web page indexed by Google. The search engine offers multiple tools that trademark searchers may use. For instance, its language tool addresses the issues of language barriers. One can use the language tools to perform the following tasks:

Search for pages located in particular countries and written in specific languages

Utilize the Google interface in different languages

Translate any web page or text from a fixed set of languages, including French, English, Italian, German, Portuguese, and Spanish, into another language in that set

The Google image search tool is considered the most comprehensive tool, with billions of images indexed and available for viewing. One can use the image search by entering a query in the image search box and clicking on the search button. Then, on the result page, one can click on the thumbnail to see a bigger version of the image and the page where it is located. Although very useful, the technology has not reached a point where it can decipher the content of an image by looking at it directly. In addition to Google image search, there have been other handy platforms developed by Virage, Excalibur, and International Business Machine (IBM).

Sagacious IP has been a prominent trademark search service provider for a long time. Read on to learn about our prompt Trademark Knockout Search that helped one of our clients find similar marks.

How Sagacious IP's Trademark Knockout Search Helped an Overseas Trademark Protection Company

The client was a consultancy with a vast experience in overseas trademark protection. They were interested in performing a comprehensive search for trademarks with an identical name or design in their respective class of service and goods.

The client had experimented with many search methods and third-party service providers without getting the desired outcome. Therefore, they consulted us for a quick yet holistic result within strict time constraints.

The team at Sagacious IP accumulated all the relevant information and suggested a trademark knockout search as a solution because of the time constraint. The client accepted the suggestion and asked the team to proceed with the project. The team immediately moved into action and compiled a report with all the related results regarding the goods and services in that specific class of products.

The report included all the probable combinations, different variations, and phonetically identical marks with 5-7 exact results. In addition, the report also featured the expert's input and a worksheet listing the near-identical and similar-sounding words to make an error-free decision. The results were outstanding, and the client was highly impressed with the quality of the work delivered so quickly.

The result of trademark search can be tailored as per your expectations, if you deploy the right search strategies and tools. In the next section, we will discuss it in detail.

Final Thoughts

Trademark search is a critical task before embarking on trademark registration or enforcing your infringement rights. To get the desired results from trademark search, it is also vital to familiarize yourself with the appropriate tools and strategies. If performed optimally, the advantages of trademark search go far beyond monetary savings and interests. Although many organizations conduct trademark searches in-house, it is wise to outsource the task to reliable third parties with in-depth knowledge to save valuable time and resources.

Sagacious IP strives to leverage the latest tools and technology to deliver high-quality intellectual property solutions. In the past twelve years, the company has carved a name for itself by serving its clients with distinction and delivering more than 25,000 projects globally. Our team of trademark experts perform meticulous trademark searches and prepares detailed search reports to help clients make informed decisions about their marks. You can visit our trademark search service page to know more about our expertise.

- Gopal Singh Rawat (Trademark) and the Editorial Team

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Trademark Search: A Prudent Step Towards Mitigating Future Risks

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Businesses have realized the immense significance of registering trademarks in preserving brand value and identity. This is evident from the rising number of trademark filings. However, not all trademark applications get approval from the IP office, resulting in the squandering of time, money, and other crucial resources for companies.

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FPGA-based Cloud Computing Innovations: Market and Patent Trends

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FPGA-based Cloud Computing Innovations: Market and Patent Trends

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Field-Programmable Gate Arrays, also known as FPGAs, are gaining popularity in cloud computing. Both in terms of technology and application, the market has expanded dramatically, and by 2027, it is expected to generate revenues of USD 18.8 billion. Some of the biggest businesses in the world, like Microsoft, IBM, and Intel, have contributed to the development of this technology. As a result, there have been more cloud computing developments in FPGA, which is supported by the patterns in patent applications that we provide in this article.

To get more information, read the entire article about Cloud Computing Innovations.

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FPGAs, short for Field-Programmable Gate Arrays, are becoming increasingly popular in cloud computing. Its market size has grown significantly, both in terms of technology and application, and the revenue forecast is estimated to reach USD 18.8 billion by 2027. Some of the world's largest corporations, including Microsoft, IBM, and Intel, have invested in developing this technology. As a result, the number of cloud computing innovations in FPGA has seen a significant increase - which can be affirmed based on the patent filing trends that we present in this article.

Read on to know more about the advancement of FPGA in cloud computing, including its advantages, applications, market growth, top patent assignees as well as its future prospects.

Understanding FPGAs

These are semiconductor devices consisting of a matrix of CLBs or configurable logic blocks connected by programmable interconnects. Post manufacturing, FPGAs can be reprogrammed to meet specific application or functionality needs. A standard chip, such as the Intel Curie module in a CPU, is fully baked. The Intel Curie module is a tiny hardware product offering design flexibility. However, its chip is unprogrammable. With these chips, a user can write software that loads onto a chip and executes functions. That software can later be replaced or deleted, but the hardware chip remains unchanged.

There is no chip in an FPGA, and the user can program the hardware circuit or circuits. This programming can be as simple as a single logic gate (an 'AND' or 'OR' function) or can include one or more complex functions, including ways that combine to serve as a comprehensive multi-core processor.

In the following section, we will discuss the growing role of FPGA in cloud computing and highlight how these are taking over the space.

Role of FPGA in Cloud Computing

FPGAs are becoming increasingly common in cloud computing, and new usage paradigms, such as FPGA-as-a-service, have emerged. Due to their versatility and capacity to support numerous cloud computing models, FPGAs are a great introduction to high-performance computing in the cloud. Moreover, FPGAs have also been integrated into cloud infrastructure to improve computing performance by enabling on-demand acceleration. Integrating FPGAs with commercial cloud computing platforms, such as Amazon Web Services (AWS), Huawei Cloud, and Alibaba Cloud, is also a rapidly emerging trend. Cloud FPGAs enable cloud users to create hardware accelerators to boost cloud computation. Hardware acceleration is a process in which applications offload specific tasks to hardware in the system, significantly accelerating those tasks. The cloud FPGA system is built on three main pillars:

The use of standalone network-attached FPGAs

A hyper-scale infrastructure for deploying the FPGAs mentioned above at a large scale

An accelerator service that integrates as well as manages the standalone network-attached FPGAs in the cloud at a low cost.

Now let us dive into the myriad benefits of FPGA-related cloud computing innovations.

Advantages of FPGA

FPGAs have several benefits that make them appealing in a variety of applications. Some of the major advantages are as follows:

Long-term availability: The functionality of an FPGA is not found in the module itself but rather in its configuration. This allows the user to be independent of component manufacturers. Thus, users can program FPGAs without adjusting the gate arrays.

Updates and adaption: FPGAs are entirely programmable in contrast to traditional computer chips. This permits customized updates and modifications as per the customer's request, even after delivery.

Short time to market: Since designing the IP cores is part of the hardware development process, usage of FPGAs considerably speeds up the creation of prototypes. It allows for the simultaneous execution of time-consuming tasks, such as commissioning and troubleshooting.

Fast and efficient systems: Since standard components are built for the largest possible user group, there is generally a compromise in performance and compatibility. However, FPGAs enable the development of systems tailored to perform specific tasks, resulting in enhanced efficiency.

Acceleration of software: Software applications with quick processors can commonly perform complex tasks. FPGAs provide a more cost-effective alternative that significantly increases speed through parallelization and application-specific adaptation.

Real-time applications: FPGAs are ideal for use in time-sensitive systems. Unlike software-based solutions with real-time operating systems, FPGAs can deliver truly consistent performance. Owing to this flexibility, FPGAs can perform complex computations in a very short amount of time.

Getting familiar with real-world applications can aid in strengthening the understanding of FPGA benefits. The following section discusses FPGA application areas of FPGA-related cloud computing innovations.

Application Areas of FPGA

FPGAs are used in a variety of applications, such as:

Video and Imaging equipment to circuitry for computers

Genomics and molecular dynamics

Machine learning and data analytics

In-network data processing

Aerospace, defense, and military areas

Industrial motor control

Medical electronics

Scientific instruments

Cyber-security systems and wireless communications

Multiple sensor dome cameras, HD (High Definition) cameras, and night-vision cameras

In the following section, we will highlight the significance of FPGA in cloud computing, and how some of the biggest tech companies in the world are implementing it in their services.

FPGA Offerings in Cloud Computing

FPGA is considered an essential technology pathway for accelerating cloud computing because of its many benefits. It is also where the journey to "FPGA in the cloud" begins. Some of the major companies that are utilizing FPGAs in cloud computing innovations are mentioned below:

1. Two existing cloud service providers' FPGA offerings take different approaches to how these can be made available to users. One is Amazon Web Services (AWS), which includes FPGAs in their F1 instances. It follows a platform-as-a-service (PaaS) model. Users can request F1 instances and run their code directly on these FPGAs using Amazon's infrastructure. F1 is a compute instance with FPGAs that can be programmed to create custom hardware accelerations for the application.

2. Second is Microsoft, which provides FPGAs in the cloud following a software-as-a-service (SaaS) model as part of Project Catapult. Microsoft Azure applications and Bing searches may be accelerated using FPGAs without the user knowing what processing units are used. Microsoft engineers make the implementations and provide these implementations as a service. A Microsoft Research (MSR) enterprise-level initiative known as Project Catapult aims to revolutionize cloud computing by enhancing CPUs with a connected, programmable compute layer composed of silicon.

In a 2014 paper, Microsoft shared that its Project Catapult team deployed FPGAs in 1,632 servers in a data center to facilitate hardware acceleration to ranking calculations for the Bing search engine. They achieved up to a 95% increase in throughput.

3. Tencent was one of the earliest internet companies in China to try FPGA-accelerated computing. In their JPEG to WebP network picture transcoding attempts, FPGA processing latency was 20 times faster, and processing performance was six times superior than with CPU. Furthermore, FPGA unit costs are only a third of those of general-purpose CPUs. Subsequently, Tencent has become one of the most active supporters of FPGA-accelerated cloud computing. Case studies like these have significantly increased market confidence in deploying FPGAs in other cloud computing platforms.

4. Oracle has introduced a Fast Loader project which aims to develop an FPGA offload engine to accelerate existing software in various high-value applications, such as relational databases, main memory algorithms, and big-data applications. The aim is to improve cluster performance and application scaling, and to reduce system power needs. This is achieved using reconfigurable computing built using FPGAs and many-core processors.

5. Xilinx and IBM offer FPGA-based acceleration within SuperVessel, the OpenPOWER Development Cloud. As a first-of-its-kind open-access cloud service, SuperVessel serves as a virtual R&D engine for application developers, including those working on the Internet of Things, deep analytics, and machine learning applications.

6. The Xilinx SDAccel Development Environment is an extensive software-defined IDE (Integrated Development Environment) that enables developers to compile, debug, profile, and deploy FPGA-based acceleration. SDAccel in the SuperVessel cloud is a powerful component for developers to quickly create and accelerate applications employing FPGAs. The combination of the SuperVessel, SDAccel Development Environment, IBM POWER architecture, and Xilinx FPGA accelerator boards provide application developers with high throughput and high availability cloud-based platforms to develop and execute compute-intensive applications.

The FPGA market has showcased steep growth in the past few years. The next section delves into FPGA market trends.

FPGA Market - Growth, Trends, and Forecasts

With the growing applications of FPGA, its market size is also expanding rapidly. The growing adoption of field programmable gate arrays in areas of security, deep packet inspection, and network processing is anticipated to drive their demand over the forecast period. Increasing adoption of FPGAs in the military and aerospace application areas, such as waveform generation, image processing, and secured communication, is also expected to boost the FPGA market growth over the next few years.

Figure 1: Field Programmable Gate Array Market Info (Source)

FPGA Patent Filing Trends by Assignees and Jurisdiction

To understand a little bit about the intellectual property aspect of this technology, Sagacious IP performed a broad study of the companies that have invested in patent filings of this technology. Below are the findings of this research.

Patent Publishing Trends

Figure 2: FPGA Patent Trends 2008 -2022 (Source: Derwent Innovation)

As evident from Figure 2 above, FPGA patent publishing has been growing rapidly since 2017, reaching its peak at 161 in 2021.

Top Countries/Regions

Figure 3: Top FPGA Patent Countries (Source: Derwent Innovation)

Figure 3 above testifies to China's dominance in FPGA-related cloud computing innovations.

Top Assignees

Figure 4: Top FPGA Patent Assignees (Source: Derwent Innovation)

Chinese and American companies, such as Intel, IBM, Microsoft and Alibaba, lead the list of top FPGA patent assignees around the globe.

Future Prospects of FPGA

Cloud is the future of high-performance and scientific computing. Various cloud computing innovations have emerged to help the world move towards more sophisticated computing. This includes FPGA, which is reconfigurable hardware that can be adapted to user applications. Disaggregated data centers with network-connected memory and accelerators are already replacing server-centric architectures by providing greater resource use. Disaggregation also opens up new research directions, including assigning and scheduling jobs to processors, be it CPUs, GPUs, or FPGAs, as well as writing applications that target each type of accelerator.

Security is also a challenge when there are many devices directly connected to the network and one another. Cloud users of the future will be able to take advantage of a computer platform with fewer memory barriers and the processing power to deliver graph processing, machine learning, security, and privacy applications on large data, as well as accelerate scientific applications and new applications.

FPGAs are gaining prominence in fields, such as deep neural networks (DNNs), which are used for artificial intelligence (AI), in which running DNN inference models takes significant processing power. Graphics processing units (GPUs) help accelerate inference processing, but in some cases, high-performance FPGAs might outperform GPUs in examining large amounts of data for machine learning.

Conclusion

FPGA has demonstrated its strength in real-world applications and has become the go-to architecture for emerging cloud services today. The presence of FPGAs in cloud computing innovations is growing rapidly, and appears to be just the beginning. Some of the world's largest tech companies are already developing FPGA-based cloud computing innovations. Any organization that leads the patent filing race now is likely to enjoy an upper hand over its competitors in the future.

This is the data age where how a company produces, stores, and applies knowledge in real-world situations determines its success. For optimal benefits, it is crucial for businesses to monitor their technology and continue developing. Employing Sagacious IP's technology scouting service is the quickest way to develop a strong patent portfolio, whether it is in cloud computing innovations or other technologies. We have partnered with several multinational companies to secure their IP as technologies in their respective domains evolve. Reach out to us to know more.

- Akanksha Verma, Rachita Goel (ICT Licensing) and the Editorial team

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FPGA-based Cloud Computing Innovations: Market and Patent Trends

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FPGAs, short for Field-Programmable Gate Arrays, are becoming increasingly popular in cloud computing. Its market size has grown significantly, both in terms of technology and application, and the revenue forecast is estimated to reach USD 18.8 billion by 2027. Some of the world's largest corporations, including Microsoft, IBM, and Intel, have invested in developing this technology.

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IPR and National Biodiversity Authority: Guidelines for Biodiversity-Related IPR in India

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IPR and National Biodiversity Authority: Guidelines for Biodiversity-Related IPR in India

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The Biological Diversity Act, 2002 has lately been the subject of many revision proposals from the Indian Union Ministry of Environment, Forest and Climate Change. These adjustments seek to ensure sustainable use of components, control the conservation of biological variety, and foster fair benefit-sharing resulting from the use of Indian biological resources and community knowledge associated with them. The bill has an effect on the nation's biodiversity and IPR as well. For instance, under the proposed legislation, the National Biodiversity Authority must first approve any application for intellectual property rights based on Indian biological resources, such as a patent filing (NBA). Therefore, it is crucial for businesses and inventors to comprehend the prerequisites for biodiversity-related patent applications.

To get more information, read the entire article about IPR and Biodiversity.

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IPR and National Biodiversity Authority: Guidelines for Biodiversity-Related IPR in India

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This article discusses IPR and biodiversity in light of the recently introduced Biological Diversity (Amendment) Bill 2021.

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Performing Third-Party IP Review on a Drug for Different Markets: A Case Study

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Performing Third-Party IP Review on a Drug for Different Markets: A Case Study

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Patent portfolio owners frequently engage in licencing, acquisition, and collaboration operations with financiers, research and development organisations, or startup accelerators. To assess the potential for profitability for an investing/partnering party or licensee, such business transactions necessitate meticulous due diligence and a third-party expert's assessment. For productive talks with possible investors or licensees and to anticipate extension to fresh markets, portfolio owners may take the initial step in the IP evaluation. However, many companies seek the advice and professional IP evaluation of a knowledgeable third party.

To get more information, read the entire article about IP Review.

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Entities owning patent portfolios are often involved in licensing, acquisition, and partnership activities with investors, R&D groups, or start-up accelerators. Such business transactions require thorough due diligence and third-party expert's opinion to determine the profitability scope for investing/partnering party or licensee. Portfolio owners sometimes take the first step in the IP reviewfor effective negotiations with the potential investors/licensees and to forecast extension to newer markets. However, many businesses reach out to an expert third party for professional IP review and recommendations.

The following case study explains how our IP review services helped a pharmaceutical company get the necessary details on possible threats, market competition, and additional suggestions for strengthening its IP.

IP Review and its Significance

A product in a portfolio predicted to succeed in one market may face different roadblocks in other markets. These challenges may be more on the regulatory and policy front. In such scenarios, a third-party opinion is helpful for portfolio owners as well as parties seeking to invest, license, acquire, etc., based on the IP owned by the business. The review involves an assessment of the entity's IP, possible edge over existing technology or products, upcoming opportunities according to the IP's current state and predicted market, potential competition, and risks involved.

Figure 1: Benefits of a Thorough IP Review

Significance of IP Review

IP review, a part of due diligence, enables businesses to save costs, avoid risks, and more importantly, capitalize on opportunities that would otherwise be missed. The assessment can either be general or specific.

General-purpose IP review helps big companies, start-ups and individuals not only identify opportunities, development needs, and risks but also evaluate and safeguard their IP assets. On the other hand, specific-purpose IP review is generally narrower in scope. One can determine the nature and extent of such an IP review by the objective or upcoming event for which the assessment is to be conducted.

Case Study

Sagacious IP conducted an IP review for a client on a drug useful for treating a type of arthritis. The client was keen to know how its drug fared compared to other drugs in the market, concerning strengths, challenges, opportunities, and impact. Furthermore, the client was interested in information about exclusivities and patent term extensions in three different jurisdictions and wanted an overall opinion and recommendations based on the findings.

Sagacious IP first performed a quick validity check on the patent portfolio to validate the claims and legal status of the portfolio. Subsequently, our team provided a detailed analysis of each patent in the client's portfolio to see if the formulation at the current stage could be implemented according to the patents' claims or solutions disclosed, existing applications, and potential applications in the future. The analysis was not restricted to patent search but also involved researching and identifying clinical and regulatory data for the drug formulations. Later, we compared the client's product with other known drugs used for treating the same conditions.

The impact of the drug formulations was assessed by identifying key problems they were solving, and an overall summary with our findings and recommendations was provided at each step. Further, a detailed table was prepared with information on - data exclusivities, PTE, orphan drug status, and accelerated examinations in jurisdictions of interest. This was crucial for the client to re-evaluate market readiness before stepping into new markets.

Unlike other searches and analysis, IP review provides summaries and recommendations for clients' specific questions regarding managing and negotiating their IP with businesses. In this case, Sagacious IP specifically provided suggestions to the client on:

Possible IP threats.

Market competition - based on factors such as clinical data, scaling up, and side effects.

Jurisdiction with the most favorable opportunities as per regulations and market.

Additional suggestions on strengthening IP such as opting for PCT Article 19 or Article 34 amendments within the prescribed timelines, and opting for voluntary amendment.

Final Thoughts

Sagacious IP provided the client with an overall third-party IP review with answers to specific queries pertaining to market advantage, IP competition, jurisdiction-based opportunities, and challenges. The client utilized this review as a due diligence/first-level IP audit study at various legal and regulatory proceedings for its portfolio across strategic decisions in different jurisdictions.

Sagacious IP offers various patent portfolio-related services, such as patent due diligence, to enable sound business decision-making. Our team of IP professionals specializes in several domains to help our clients in different sectors help overcome challenges regarding their IP. Please visit the service page to know more.

- Devika Saini (Life Sciences and Chemistry) and the Editorial Team

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Performing Third-Party IP Review on a Drug for Different Markets: A Case Study

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Entities owning patent portfolios are often involved in licensing, acquisition, and partnership activities with investors, R&D groups, or start-up accelerators. Such business transactions require thorough due diligence and third-party expert's opinion to determine the profitability scope for investing/partnering party or licensee.

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Expediting Patent Examination with Rocket Docket using Prior-art Search – A Case Study

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Expediting Patent Examination with Rocket Docket using Prior-art Search – A Case Study

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A design patent may be granted by the USPTO, or United States Patent and Trademark Office, after around 21 months. However, inventors can patent their inventions faster quickly by utilising the USPTO's accelerated programme known as Rocket Docket. Without the Rocket Docket, the average wait time for a first-design office action is between 16 and 17 months. The time it takes for an initial review to be completed from the Rocket Docket request grant date is reduced to about two months with expedited examination. Thus, an expedited design patent application avoids having to wait for the initial examiner examination for almost a year.

For more information, read the entire article about Prior-Art Search.

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The USPTO or United States Patent and Trademark Office can take around 21 months to grant a design patent. Inventors can, however, use the USPTO's accelerated program known as Rocket Docket to patent their inventions more quickly. The typical wait period for a first-design office action without the Rocket Docket is around 16 to 17 months. Expedited examination lessens the time it takes for an initial review from the grant date of the Rocket Docket request to around 2 months. Thus, an expedited design patent application saves approximately one year of waiting for the initial examiner evaluation.

This article will discuss a case study in which Sagacious IP's professional prior-art search helped a client expedite the patent examination process and get the grant through Rocket Docket. It also discusses Rocket Docket, cost, requirements, and other details.

What is a Rocket Docket?

While the approval process for a design patent application can take almost two years, not all businesses can wait that long. Thus, the USPTO offers prioritized examinations for applicants who require grants faster. This prioritized examination service is known as Rocket Docket. It allows applicants to request an expedited review of their design patent application. Therefore, an applicant can have designs patented in under six months with the help of Rocket Docket. If the expedited review request is approved, the applicant's patent application is prioritized over other design patent applications. It is recommended that the applicant file the design patent application and request for expedited examination together to expedite the process. Filing them separately may cause some delays.

Figure 1: Request Form for Expedited Examination of a Design Application (Source: USPTO)

How much does Rocket Docket Cost?

The USPTO charges $225 (subject to change) for micro-entities, $450 (subject to change) for small entities, and $900 (subject to change) for large entities to request expedited examination of a design patent application through Rocket Docket. The expedited examination fee is charged in addition to the standard filing fee.

The processing fee must accompany the request for an expedited examination. If an applicant does not pay the expedited examination fee, the patent office sends a notice of deficiency. If the applicant fails to respond, the application for a design patent is processed normally rather than expeditiously.

Requirements for Requesting Rocket Docketing

There are several requirements for seeking Rocket Docket expedited examination of a design application. These include:

Expedited examination request to the USPTO

Necessary filing fee for a design patent application

Additional fee for the expedited examination

An error-free design patent application

Black and white sketches of the design

A pre-examination search (Prior art Search)

A declaration that a pre-examination Prior-Art Search was carried out

Statement regarding the field of the search

Information disclosure statement must also be included

How long does Rocket Docket Take to Process an application?

It takes 4 to 6 months to approve design patent application through expedited examination. To expedite a design patent application using rocket docket, an applicant must conduct a Prior-Art Search to assist the patent office. The prior-art search must be thorough and complete. If the patent examiner suspects that the applicant has not conducted a thorough prior art search, he might reject the request for expedited review. So, it's required to conduct a prior-art search for the design on which the applicant is trying to get a design patent.

Problem Overview

Sagacious IP recently received a request for a design patent search for a clothing item. The search was related to the pre-examination search required for expedited examination to get a design patent in the US. The client came to Sagacious IP to determine the best strategy for his design application.

Our Solution

We performed prior-art search on several popular subscription-based search platforms and an exhaustive non-patent literature (NPL) search on relevant NPL databases. For the comprehensiveness of the search, we used multiple types of search strategies:

Keywords-based Search: Byusing the right keywords

Classification-based Searching: By using the right classification
Most patent offices across the globe use Locarno classification.

Many countries like the USA, Canada, and Japan use national design classes.

Searching on multiple search databases.

After the prior-art search, we shared our findings with the applicant through:

Pre-Examination Search Document - The document provides support for the petition for accelerated examination, and the format of the document is acceptable by the USPTO.

Accelerated Examination Support Document - It is a supporting document that includes all the identified similar/nearly-identical and related documents.

Search Iterations - At times, USPTO comes out with the request for further search to be performed by the applicant. There is an additional cost for such iterations. However, if the small corrections are suggested by the USPTO, Sagacious IP includes the same within the design patent search budget.

Conclusion

Design search is an essential part of IP analytics that helps the inventor to know if their design is actually unique. A thorough report helps inventors design around their product in case an exact design is identified during the search.

If you are an inventor or a businessperson, Sagacious IP's team of IP experts can help you with checking the patentability of your designs. We have over a decade-long experience in a wide range of design patents and trademark-related services. You can visit the design patent search service page to know more.

- Prabha Shankar, Rohit Joshi (Engineering Searching) and the Editorial Team

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Expediting Patent Examination with Rocket Docket using Prior-art Search - A Case Study

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The USPTO or United States Patent and Trademark Office can take around 21 months to grant a design patent. Inventors can, however, use the USPTO's accelerated program known as Rocket Docket to patent their inventions more quickly. The typical wait period for a first-design office action without the Rocket Docket is around 16 to 17 months.

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Trademark Registration Under EUIPO: All You Need to Know

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Trademark Registration Under EUIPO: All You Need to Know

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To enjoy protection from infringement, businesses having operations in the European Union can register a trademark with the EUIPO. The European Union body responsible for registering designs and trademarks across the European Union (EU) with a single application is the EUIPO, short for European Union Intellectual Property Office and formerly known as OHIM. Therefore, it saves businesses who want to defend their brands across several EU countries time and money. However, while choosing to submit a single trademark registration application, it is crucial to keep a few points in mind.

To know more, read the entire article about trademark registration.

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Businesses operating in the European Union can register a trademark with the EUIPO to enjoy protection from infringement. The EUIPO, short for European Union Intellectual Property Office and formerly known as OHIM, is a European Union agency responsible for design and trademark registration throughout the European Union (EU) with a single application. Thus, it saves time and cost for companies seeking protection for their brands across multiple EU countries. However, it is critical to bear some things in mind while opting for a single trademark registration application.

This article discusses what the EUIPO is, its advantages and disadvantages, and various trademark registration options available for businesses in the EU.

What is EUIPO?

The European Union Intellectual Property Office manages registered community designs and trademarks in the EU. It also collaborates with IP offices in the EU member states and international partners to provide a seamless IP registration experience across the world.

Design and trademark registration are crucial for trading, manufacturing, and service-offering businesses. The EUIPO can offer exclusive trademark and design protection rights throughout the EU with just one application. Figure 1 below highlights different types of marks one can register at EUIPO.

Figure 1: Types of Trademarks One can Register at EUIPO

Now that we have understood what EUIPO is, let us delve into the four trademark registration systems available for a business operating in Europe.

Four-tier System for Trademark Registration in the EU

A business operating in the EU has four trademark registration options. Based on the business requirements, an individual or a company can choose the one that suits them best.

Figure 2: Trademark Registering System

National: You may only require trademark protection in one EU member state where your business is currently located or where you wish to trade. One can directly file a trademark application with the appropriate national IP office for the same reason.

Regional: Suppose one requires protection in Belgium, the Netherlands, and Luxembourg. In that case, they will apply to the Benelux Office of Intellectual Property (BOIP), the only regional-level IP office in the EU, for trademark protection in those three member states.

European Union: If one seeks to protect the brand across the numerous EU member states, they have to apply for an EU trademark from EUIPO. An online application at the EUIPO costs €850 (subject to change). Moreover, the applicant needs to file the application in just one language. Upon successful trademark registration, the owner can renew it indefinitely every ten years.

The national, regional, and EU systems are complementary and work in parallel. The national and regional trademarks are necessary for users who do not want or need the protection of their trademarks at the EU level.

International: The fourth option is registering the trademark internationally. One can use their national, regional, or EU trademark application to expand the protection internationally to any Madrid Protocol signatory country.

The next section highlights the many advantages of a unified trademark registration system across the European Union.

Advantages of EUIPO

Several benefits are available for SMEs operating in the EU. These range from free customized counseling on IP matters and reimbursement of up to 75% of the design and trademark registration fees to 50% reimbursement of national patent fees and more.

A unitary title: A holder can protect his sign throughout the EU by filing a trademark application with the EUIPO. The EU trademark is indeed a unitary title covering all 28 member states of the European Union.

A single review: The conducts a single examination for a vast jurisdiction. If the application meets all the standards, this office registers the mark within six months of receiving the application. In other words, the EU trademark application does not "undergo" a review in each member state. Trademark registration protects IP for ten years, and the owner may renew it indefinitely.

Affordable fee: EUIPO charges a nominal fee as compared to the total charges for registration in all member states. Thus, it presents a cost-effective option for businesses seeking to protect their brands across most of Europe.

EUIPO has recently decreased the registration fee by opting for one fee per class system. The agency charges €850 for one class, €50 for the second class, and €150 (subject to change) for each additional class.

Disadvantages of EUIPO

A high risk of opposition: Because of its "unitary" structure, one cannot register the EU trademark if a prior national right owner challenges it. For example, if a Polish owner believes that an EU trademark infringes his rights, he can file a complaint with the EUIPO and have it rejected entirely or partially. This significantly raises the potential of opposition. All national trademarks of the 28 EU nations, other EU trademarks, and foreign trademarks targeting the EU or the EU countries are all prior rights opposable to an EU trademark.

The flip side of the unitary title: When a European trademark is rejected or revoked, it becomes obsolete, which means that it applies to all 28 EU member countries. Fortunately, the EUIPO anticipated this possibility and established a method for converting European trademarks into national ones. One can pay a fee to EUIPO for this conversion. Subsequently, one must choose the nations for retaining the protection. These countries will also charge a fee and conduct examinations. After this examination is complete, the holder receives national registration certificate. The question of Brexit and its impact on trademark registration in the region also arises. The cost of registering a European trademark is low, but there is a chance that it will be rejected. Therefore, it must be a part of a well-thought-out defense strategy.

Conclusion

The main objective of the EUIPO is cooperation. It aims to help businesses by strengthening the global IP framework. The EUIPO directs the trademark and design rights in the EU. These rights complement national Intellectual Property (IP) rights and are linked to international IP systems. Businesses operating in the Europe Union can choose from different trademark registration routes.

Before launching products or services in new markets, companies across the spectrum rely on trademark search to ensure they do not infringe on an existing trademark. Sagacious IP's trademark search service can give you insights needed before filing trademark applications and save time and money. Visit the service page to know more.

- Ashwini Prakash Chahande (Trademark) and the Editorial Team

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Trademark Registration Under EUIPO: All You Need to Know

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Businesses operating in the European Union can register a trademark with the EUIPO to enjoy protection from infringement. The EUIPO, short for European Union Intellectual Property Office and formerly known as OHIM, is a European Union agency responsible for design and trademark registration throughout the European Union (EU) with a single application.

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Drafting a Patent Application for Multiple Jurisdictions: Keeping up with Globalization

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Drafting a Patent Application for Multiple Jurisdictions: Keeping up with Globalization

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In this era of globalisation, it is more crucial than ever to submit patent applications with a worldwide view. It gives the invention a single priority date and lowers additional costs associated with drafting a patent application. However, due to variations in national patent systems and prosecution procedures, creating a common application may be a little ambitious and risky at the same time. But if various standards are carefully satisfied in a single patent application, the work is not completely difficult.

To know more, read the entire article about Drafting a Patent Application.

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Drafting a Patent Application for Multiple Jurisdictions: Keeping up with Globalization

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Drafting a patent application for multiple jurisdictions can help save critical resources. Here are key factors in writing one patent for

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A digital asset known as an NFT, or non-fungible token, is used to store digital data in a blockchain. NFTs, a relatively new technology, allow for the sale or exchange of ownership. However, there may be ramifications for trademark, patent, and copyright laws when one develops, monetises, advertises, sells, trades, transfers, and stores NFTs. Trademark protection for NFTs aids in brand protection against infringement.

To know more, read the entire article about NFT Trademarks.

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NFT Trademarks: A Complete Guide - Sagacious IP

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NFT trademarks enjoy additional protection against infringement. This article talks about NFT trademarks, reasons to trademark NFTs, how

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Sustainable Packaging Innovations and IP Trends: A Step towards a Greener Planet

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Sustainable Packaging Innovations and IP Trends: A Step towards a Greener Planet

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Sustainability has become a megatrend that is transforming the packaging business due to rising environmental awareness and the effects of non-biodegradable packaging. Sustainable packaging has grown significantly in recent years, going far beyond eco-friendly shopping bags and a few food-service goods. A poll by Deloitte last year found that approximately a third of respondents had stopped buying certain brands or goods owing to sustainability worries. Additionally, merchants and FMCG companies are actively making significant commitments to improve the sustainability of their packaging and reevaluate their packaging options.

To know more, read the entire article about Sustainable Packaging Innovations.

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Increasing concern over the environment and the effects of non-biodegradable packaging has made sustainability a megatrend that is reshaping the packaging industry. In recent years, we have seen a significant increase in sustainable packaging that goes far beyond just eco-friendly shopping bags and select food-service items. According to a Deloitte survey conducted last year, about a third of the customers in the survey had stopped purchasing particular brands or products due to sustainability concerns. Furthermore, FMCG businesses and retailers are actively making big pledges to enhance the sustainability of their packaging and reconsider their packaging options.

This article will discuss sustainable packaging innovations, their impact on businesses, the consumer market in packaging, IP trends in sustainable packaging, and much more.

Introduction to Sustainable Packaging

Consumers are now paying more attention to sustainable packaging when choosing products and it appears that the trend is going to stay. While governments around the world are announcing new policies and regulations on plastic waste usage, its handling and disposal; businesses are making efforts to innovate or partner with innovators to cater to the shift in sustainable packaging. The cost-effective and scalable solutions have a generally positive influence across industries since packaging needs are typically industry-neutral.

Growing middle classes in developing nations like India and China, in particular, are driving this trend by becoming more conscious of the environmental and health risks associated with packaging. In India, from July 1, 2022, the government has prohibited the manufacture, sale, and use of certain single-use plastic products, such as plates, cups, straws, trays, and polystyrene.

Why Businesses are Moving Towards Eco-Friendly Packaging

The consumer inclination towards eco-packaging encourages companies to develop more eco-friendly products for the market. Various industries use green packaging globally, including those in the healthcare, personal care, food & beverage, and pharmaceutical sectors.

The business is expected to expand steadily because of the growing food and beverage sector, which is adopting packaging made of recyclable and biodegradable materials at a higher rate. Accordingly, the food service business is switching to goods manufactured from paper or biodegradable options for packaging closures, lids, caps, food trays, single-use plastic straws, and cups. The sub-segment of food and beverages is anticipated to earn the highest revenue and experience the quickest growth.

As the food industry grows quickly, there is a growing need for recyclable food packaging to reduce the amount of waste it produces. Such elements will probably foster market expansion in the future and can also help companies attract new clients and retain existing ones. Further, companies have realized that customers are more interested in knowing about a company's environmental footprint before buying a product.

Many eco-friendly materials, such as paper, cardboard, corn starch, bagasse paper, etc, are available. Choosing the suitable material for the product to be packed with minimal production cost can boost sales. Corn starch, for example, is highly suited for packing fragile items and is one of the best plastic replacements.

How and how well the desired goods may be carried depends on the packaging's quality. The packaging leaves a lasting impact since it often serves as the consumer's first physical point of contact with a product. One of the major advantages of sustainable packaging is its recyclability and faster decomposition time. Packaging materials are regularly recycled through natural or technological additives to reduce degradation.

Popular Alternatives of Eco-Friendly Packaging

There are numerous eco-friendly solutions for businesses that care about the environment. Following are some of the popular eco-friendly packaging alternatives:

1. Biodegradable Packaging Peanuts: Biodegradable air peanuts are used to replace Styrofoam, a commonly used material in packaging fragile items. These peanuts are made using non-food plant ingredients; hence they are nontoxic. The major advantage is their value to the environment because they disintegrate in water and may contribute to compost piles after a single usage.

2. Corn Starch Packaging: Corn starch can be used in place of plastics since it has the same characteristics. It can be transparent or opaque and is a direct replacement for polystyrene (Styrofoam). It is ideal for things with limited use, including takeaway food packaging, cutlery, bowls, straws, glasses, water bottles, bags, plates, food storage, and so on. It is made of polylactic acid (PLA), a plastic alternative derived from fermented plant starch.

When properly disposed of, the material will degrade into carbon dioxide and water within a few months. Corn starch has disadvantages even though it is a more environmentally friendly packaging option than petroleum-based materials because it is made from maize grains. Corn starch packaging has numerous applications, including molded shapes, bottles, and loose-fill packaging. PLA, created by fermenting plant sugar and starch, is used as a base for this packaging method. One of the major advantages of corn packaging is that it may decompose into mere carbon dioxide and water within a few months, assisting in reducing both consumer and commercial carbon footprints.

3. Mushroom Packaging: Mushrooms are utilized to provide another eco-friendly packaging option that may be used to support smaller objects. To do this, agricultural waste is utilized, cleaned, pulverized, and then joined together using mushroom roots or mycelium matrix. Neither people nor animals could eat that agricultural trash. Consequently, it avoids any dispute concerning corn-starch packaging. At-home composting of mushroom packing results in organic matter that is nontoxic. Ecovative is one such company that develops eco-friendly packaging using mushrooms.

4. Seaweed Packaging: Agar, a gelatinous material in many seaweeds and algae, is already employed in several applications. In the food industry, it can be used as a thickening or a vegetarian substitute for gelatin. The use of this as a packaging material, however, has now been prototyped by a team of designers and received a design award. Seaweed packaging can be the newest and greatest in environmentally friendly packaging solutions because it is manufactured from excellent and dependable raw materials. The major advantage of seaweed packaging materials is that they can be edible without adulterants or preservatives. Notpla, EVO & Co, & Sway are a few companies developing seaweed eco-friendly packaging.

Current scenario of Sustainable Packaging

Companies require skilled designers and marketers to put efficient ideas into action, especially in the case of the sustainable packaging industry. Without compromising on quality or appearance, designers can help in selecting the packaging that is most appropriate for the product. Marketers may assist companies in setting up the groundwork for increased consumer attraction while also providing a business budgeting process.

The scenario of sustainable packaging around the world is being shaped by countries conscious of global plastic waste. For example, France wants to recycle all its plastics by 2025, and phase out single-use plastics completely by 2040. Similarly, to combat pollution, China implemented a "plastics limitation" policy in 2007. This policy was upgraded to a complete plastics ban in 2021. Since October 2020, New York has been subject to a state-wide ban on single-use plastic bags. No covered food service providers or retailers are permitted to market, sell, or distribute disposable food service containers containing expanded polystyrene foam in New York since January 2022. India too is taking action to support biodegradable substitutes, and its recent ban on single-use plastic is a testament to that. Meanwhile, Italy became the first EU nation to require manufacturers to inform consumers about the material makeup and end-of-life of their packaging. Under the 2025 National Packaging Targets, Australia wants to phase out single-use plastics and meet challenging recycling targets.

Not all sustainable packaging can support the long-term preservation of the quality and consistency of the products inside. Businesses must contact specialists and choose packaging that will offer the best durability at a reasonable cost. Instead of opting for the most sustainable packaging solution, companies must know about their products' shelf lifespan and select the most suitable materials.

Consumer Market

The market's growth has been fuelled by a rise in consumer awareness of green packaging techniques that employ bioplastics as a raw material in various industries, including FMCG, personal body care, and pharmaceuticals. The amount of solid trash created does not match the capability for recycling, limiting the market growth. The expansion of green products is increasing due to consumer demand and corporate public relations initiatives. Packaging will likely play a crucial role in shifting to more sustainable products, which brand owners foresee as one of the top growth drivers over the next two years.

According to Allied Market Research, the global green packaging market is anticipated to increase from $164,176.6 million in 2020 to $337,542.0 million in 2031, with a CAGR of 6.6 percent. Moreover, the returnable global packaging market is expected to grow at a CAGR of 6.5 percent between 2021 and 2030. Despite the dire circumstances, there were some beneficial outcomes throughout the pandemic. Vaccine development and approval in a few countries have brought some relief. Following the Covid-19 pandemic, the global green packaging market is predicted to rebound in a V-shaped pattern. The revenue of the major market participants, on the other hand, has been trending upward in the fourth quarter of 2020-2021.

Among promising packaging materials, seaweeds are being considered to hold high potential. The global seaweed-based packaging market is forecasted to reach USD 613 million by 2029. Seaweed being edible is a strong reason for applicability across the food & beverage industry. The material further offers high shelf life and reduces dependency on logistical support. However, there appears to be innovation required to combat the challenges related to low tensile strength and secondary supportive packaging required. Scaling the applications beyond food and beverage packaging is also to be addressed.

Impact of COVID-19 on the Sustainable Packaging Sector

Much like most other industries, the sustainable packaging sector has also seen a decline during the pandemic. The backbone of technology providers, small and medium-sized businesses, has seen a sharp decline in income since the pandemic's emergence in 2020. As a result of supply chain interruptions, market participants faced several difficulties. However, the situation is expected to improve when more supplies arrive online in the second half of 2022.

IP Analysis and Trends in Sustainable Packaging

The innovation in the space of sustainable packaging has seen significant growth in recent years. Increasing consumer awareness and growing impact on the ecosystem and economies are major contributors in this regard. The patent trends, particularly in the last ten years have been analyzed by Sagacious IP and presented through the graphs below:

Figure 5: No. of patents filed in the domain over the last few years

Note:

Priority Year refers to the time when the earliest patent application was filed for an invention.

The data pertaining to years 2020, 2021 and 2022 might not be complete, since it takes 18 months in general for a patent application to be published in the public domain.

Figure 6: Leading Patent Assignees in the domain

Leading countries where the research took place

China (maximum filings by several applicants - Mys Group, China Tobacco, Gree Electric, Zhengye Package) was the leading country where the research was conducted, followed by Japan (filings by some major brands such as Toppan Printings, Dai Nippon Printing, Nippon Paper). Clearly, most companies innovating in the space are based in Asia.

Figure 7: Leading Countries in Sustainable Packaging Patent

Top Technology Focus

The leading patents in sustainable packaging focus on technologies for wastewater treatment, mitigation of GHG emissions, paper-based solutions and those packaging with a specific form, etc. Figure 8 below represents the top tech classes indicated in the patents.

Figure 8: Top Technology Focus Patent in Sustainable Packaging

Figure 9: CPC Classes Definition

Conclusion

The usage of eco-friendly packaging has the potential for a massive positive impact. Efficient recyclable and reusable packaging can greatly reduce supply chain and logistics costs. Further, since consumers are becoming environmentally conscious, switching to eco-friendly packaging is a natural shift that companies are pursuing. The market for sustainable packaging is promising, with several drivers and some addressable challenges. Identifying the right raw material and mapping it to the sector-specific packaging requirements is a research-intensive task that is highly dependent on trial and error. Leading innovators have been working on smart solutions, and their IP protection is a strong indicator in this regard. Patented technologies in sustainable packaging have grown rapidly in recent years, especially in China, Japan, and Europe. With a continuous shift in the policies towards efficient waste management and lowering carbon footprint, the technology is expected to match industry requirements rapidly.

Conceiving and developing an idea for sustainable packaging innovation is only the beginning of a long journey. It is also critical to patent the innovation in order to protect the broader interest. Although it is possible to register the application on your own, considering the operational obstacles encountered when filing for a patent, it is recommended that you use the services of a reliable service partner.

With extensive expertise, Sagacious IP partners with clients in innovation by identifying disruptive technologies from moonshot innovations, determining innovation accelerators, developing insights to move forward with new solutions (determining solutions for upcoming challenges), and assistance in the commercialization of technology. Sagacious IP has been working with several innovative organizations researching in various areas, such as biomaterials, biochemical, polymer science, etc. to find solutions to key technical problems using our Technology Scouting service.

- Devika Saini (Life Sciences & Chemistry) and the Editorial Team

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Sustainable Packaging Innovations and IP Trends: A Step towards a Greener Planet

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Increasing concern over the environment and the effects of non-biodegradable packaging has made sustainability a megatrend that is reshaping the packaging industry. In recent years, we have seen a significant increase in sustainable packaging that goes far beyond just eco-friendly shopping bags and select food-service items. According to a Deloitte survey conducted last year, about a third of the customers in the survey had stopped purchasing particular brands or products due to sustainability concerns.

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Use of Third-Party Trademarks as Keywords in Online Advertisements

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Use of Third-Party Trademarks as Keywords in Online Advertisements

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In the last few years, there has been a significant increase in the number of companies advertising their items online. However, this quick expansion has also caused a rise in business disputes over intellectual property. Conflicts like these frequently occur when companies advertise their goods or services on search engines using the registered trademarks of third parties, which results in a decline in online traffic and sales for the relevant trademark owners. Companies engage in it so they can profit from a well-known brand's reputation and goodwill. Google Ads, a well-liked tool for placing advertisements on the Google Search results page, is frequently abused by companies that promote their goods and services by using the names of third parties as their keyword phrases. This has prompted legal actions for trademark infringement all over the world.

To know more, read the entire article about Third-party trademarks.

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Overcoming 35 USC 101 Rejections in View of Recent USPTO Guidelines and Examples

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Overcoming 35 USC 101 Rejections in View of Recent USPTO Guidelines and Examples

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For the US Patent and Trademark Office to consider a claimed invention patent-eligible, it must satisfy the standards of 35 USC 101. (USPTO). A subject matter eligibility test for the claimed invention is typically 35 USC 101. As a result, improperly written claim sets could induce 101 rejections. Furthermore, if the applicant fails to persuasively present an amendment and argument after the claim set has already been rejected under 35 USC 101 in an office action (OA), it may be rejected again under 101 in the subsequent OA.

The guidelines and examples provided by the USPTO, the requirements under 35 USC 101, how to effectively present claim amendments and arguments, and other topics will all be covered in this article.

To know more, read the entire article about 35 USC 101.

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Overcoming 35 USC 101 Rejections in View of Recent USPTO Guidelines and Examples

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35 USC 101 is typically a subject matter eligibility test for the claimed invention. Therefore, the claim set might invoke 101 rejections if

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How RPA Innovations are Changing the Legal and IP Industries

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How RPA Innovations are Changing the Legal and IP Industries

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Workflows can be streamlined with the help of robotic process automation (RPA), which enables businesses to operate more profitably, quickly, and adaptably. Additionally, it has demonstrated to be a crucial tool for companies in this age of digital transformation. RPA platforms are being developed by businesses like UiPath, Blue Prism, Automation Anywhere, EdgeVerve, Kofax, Pegasystems, HelpSystems, AntWorks, Softomotive, ARGOS LABS, WorkFusion, NICE, and others to improve the software’s user interface and enable the technology to be integrated with other tools and databases. To know more, read the entire article about RPA Innovations.

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The Future of IP in Circular The Future of IP in Circular Economy

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The Future of IP in Circular The Future of IP in Circular Economy

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According to a World Bank research, 3.4 billion tonnes of garbage would be produced annually around the world by 2050, up 70% from 2018. This alarming statistic highlights the necessity of fundamentally altering our economy and making a difficult transition to a more sustainable one. Additionally, eco-efficiency and green manufacturing ideas like the circular economy, an industrial system meant to be restorative or regenerative, are being stressed along with sustainable living and production. In order to establish sustainable innovation, it is essential to have strong intellectual property rights (IPR). By removing institutional barriers, promoting cross-industry dissemination, and conducting in-depth research on IPR issues for the circular economy, IPRs structurally assist businesses in making the transition to sustainability.

To know more, read the entire article about Sustainable IP in Circular Economy.

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This article is developed based on the 6th Future of IP Leadership Talk with Sagacious IP team by Yaron Damelin - the CEO of Focus IP and a leading IP Management consultant based in Israel. The article expands on Yaron's talk on the topic "Circular Economy."
According to a World Bank report, if current trends continue, the annual global waste creation will reach 3.4 billion tons by 2050 - a 70% increase from 2018. This scary number emphasizes the need to radically change how our economies work and to make a hard shift to a more sustainable model. Moreover, the emphasis on sustainable living and manufacturing extends to eco-efficiency and green manufacturing concepts, such as the circular economy, an industrial system intended to be restorative or regenerative. Intellectual property rights (IPR) are a critical component for establishing sustainable innovation as they structurally support firms in their transition to sustainability by removing institutional barriers, cross-industry dissemination, and conducting in-depth research on IPR concerns for the circular economy.

This article will discuss the idea of a circular economy, the role of intellectual property (IP), the future of green IP, UN sustainable development goals (SDGs), and more.

Understanding Circular Economy

Today's linear economy takes raw natural resources, converts them into products, uses such products, and then discards them - which is highly damaging and unsustainable. The circular economy, as a concept, emphasizes the policy of "Make, Use, and Return." It aims to close the gap between manufactured and natural ecosystem cycles by encouraging the use of today's commodities as resources for tomorrow. Hence, it embodies the idea of sustainable development.

A circular economy is based on the notion that there ought to be no product waste. We should aim to achieve this goal by making products built to last and optimized for a cycle of disassembly and reuse, making them easier to handle, re-purpose and renew. The circular economy model provides new potential for innovation and integration amongst the natural ecosystems, businesses, people's daily lives, and waste management.

Now that we know about the circular economy, we will move forward to a comprehensive view of the relationship between the circular economy and IP, and how this relationship can be leveraged to attain a sustainable future.

Circular Economy and IP

Humans are addicted to growth - financial, political as well as social. But this race towards development has led to greater consumerism, which is no longer the best path forward. As we approach consumerism's economic ceiling, it has become an increasingly polarized and destructive path to follow. The reality is that we require economies that enable us to thrive, irrespective of whether they grow or not. As the saying by renowned economist Kate Raworth goes, "A healthy economy should be designed to thrive, not grow."

This new ambition challenges us to create economies that are regenerative and redistributive by design. This is where intellectual property comes into the picture! While open sourcing knowledge and sharing it with others can aid in harnessing technologies to reach everyone, which is encouraged wherever relevant; climate-related IP helps create an economic system and currency for incentivizing technology players to deeply cooperate in combating environmental challenges and work towards a healthy and sustainable future. Smart and constructive usage of IP assets can boost the adaptation and development of clean technology in all sectors and geographies.

Key Features of Sustainable IPTM

Change is inevitable, and it brings about innovation and creativity, leading to the creation of sustainable IP TM. It refers to both IP that contributes to and supports sustainability, and IP assets that are more economically sustainable, justified, and beneficial to the IP-owning entity. These IP assets are often essential for achieving maximum efficiency and a greener economy. As the world realizes and embraces the need to think about future generations, sustainable IP TM is making progress. However, it is not replacing the traditional model. By implementing sustainable IP TM, we are just adding to the existing approach, rather than focusing and complementing it to further the sustainability agenda. Following are some key features of sustainable IP TM:

Transparent ownership to facilitate cooperation.

Uses IP to accelerate sustainability by regulating and incentivizing.

Enables the creation, adaptation, and distribution of green technology.

IP is intended to drive innovation that is meant to be shared.

Includes social sustainability and Environmental, Social, and Governance (ESG) screening.

Helps achieve zero carbon mission by building recyclable products with new materials. Hence, fueling the need for new technology, and patents to protect such enhanced functionalities.

Inventions revolve around available/recyclable/sustainable materials.

Makes it a win-win situation for everyone, including the government, consumers, and corporations.

The development of new products requires a significant investment in IP. Sharing it with everyone for a fair license can help create more impact from the innovation.

Trade secrets are the biggest obstacle. There is an increasing need to urge corporations to open trade secrets to patenting and disclose IP to others for the greater good.

Introduces a new paradigm in which customers are charged for typical, non-sustainable usage, and not for sustainable usage.

Employs a business model that generates profits while providing social benefits. To achieve this, innovations are licensed at a minimal cost to establish social benefits and use these patents to keep market pricing in check.

We can see how adopting the sustainable model can benefit our economy. However, paving the road for sustainable IP TM still needs significant efforts in order to design a low-carbon future. In the following section, we will go through the relationship between sustainable IP TM and the new economy model.

Circular Economy and Sustainable IPTM

Resources, such as oil, metals, and polymers, are finite. Further, early disposal of products kills their life cycle and generates massive amounts of waste. Hence, we need creativity and innovation to use fewer materials. We must design items for long-term disposal and use the regenerative circular economy approach to resell, decompose, re-service, re-manufacture, de-member, and reuse them.

Due to a shortage of raw materials, new business models have been cast into the spotlight. For example, the Turn Two Model suggests that the producer stays responsible for the product and raw materials, from consumption to usage. It forces us to rethink ownership and shift our attention to performance. When we separate the value of the raw materials from the product, then the consumer does not need to pay for the raw materials but only for the performance. Currently, the consumer pays for it all and disposes the products early.

In another painful example, the fashion industry and its ever-evolving trends have often been associated with massive unnecessary toxic waste. Therefore, proficient waste handling should be designed into its system. Clothing, for example, can be recycled by incorporating labels that can be scanned when the object is no longer in use. As a result, the goods return to the industry/producer, and the customers receive a rebate.

Sustainable IP TM development and commercialization still have a long journey to cover. The following four categories and related services are designed to help you get ahead of the curve in this new economy:

Figure 1: Approach to Sustainable IPTM

The United Nations Sustainable Development Goals have recently gained much traction, and they can have a huge impact on IP and IP practitioners. The next section discusses the same in detail.

IP and UN Sustainability Development Goals (SDGs)

The General Assembly, in September 2015, adopted the 2030 Agenda for Sustainable Development, which includes 17 ambitious Sustainable Development Goals to end poverty, protect the planet, and promote peace and prosperity. The new agenda emphasizes an inclusive approach to attain sustainable development for all, based on the principle of "leaving no one behind." IP, like the SDGs, is multidimensional and contributes to SDGs by driving technological advances, education, business, and other areas.

Figure 2: 17 SDGs set up by the UN

Here is how mapping patents can impact United Nations Sustainable Development Goals, the SDGs with patents.

1. Performance measurement and control: There are targets under each of the 17 UN SDGs that, if met, will achieve the relevant goal. These are global, universally applicable metrics complemented by regional and national indicators. They can be linked to scientific and technological advances expressed through patented innovations.

2. Identification of technologies that match UN SDG targets and indicators: Users may gain insight into sustainable innovation in various fields worldwide by mapping advances in science and technology as indicated by patentable innovation against the UN SDGs. This unique proposition enables patent and non-patent specialists to quickly access and receive helpful knowledge in their areas of interest. This can lead to better decision-making and reporting, informed R&D, improved investment strategies, effective evaluation, and smoother business communication to educate employees, customers, and shareholders.

3. Identification of opportunities and risks of sustainable technological development: Identifying growth opportunities in emerging markets is essential to gain competitive advantages in future-oriented technologies. It is also critical to support strategic decision-making for long-term investment and to understand the involvement and limitations in the process of development of sustainable technology. Further, tracking the progress of investments in sustainable R&D and technology over time can aid in distinguishing between the sustainable innovations that have had an impact and those that have not.

4. Portfolio management and competitive landscape analysis: Increasing IP portfolio efficiencies and identifying competitive strengths and weaknesses can also help achieve the targeted goals. Defining country filing strategies, managing annuity costs, and uncovering pruning potential and cost-saving opportunities can also be beneficial.

5. Identifying collaboration partners, M&A targets, and new entrants in related technologies: Patent research and analytics can be used to study the patent portfolios of acquisition targets. It helps to analyze innovation landscapes and technological fit to locate essential patents within portfolios. It also helps to determine crucial issues, such as average ages, life expectancy, or legal status.

Role of IP Service Providers in Circular Economy

This new economic model is bound to impact the world critically as it will affect energy, transport, manufacturing, supply chains, budgets, education, politics, academia, food security, conflicts, and economies. Undeniably, IP service providers will play a significant role in the adaption and expansion of the circular economy. An effective IP service provider must:

Be proactive in leading the pack to support R&D and business strategy to meet the sustainability agenda.

Open doors and minds to great new opportunities in working with the new economy to promote good-world policies.

Build up service offerings to lead the charge in the new-age economy.

Generate cutting-edge studies and analytics to support corporate IP Strategy.

Help clients in this space to succeed in business and make a more significant impact.

The role of IP service providers is bound to increase in the circular economy to encourage more innovations. Here's what IP service providers can do to facilitate the expansion of the circular economy:

Geographical indicators (GIs) are IPRs that identify a product that originates from a specific geographical area and has a quality, reputation, or other characteristics that are essentially attributable to its geographical origin. IP services providers can promote these GIs to help distinguish businesses employing advanced, green products for customers to make better purchasing decisions.

IP service providers should help advance, develop, lead and turn around the economies of developing nations, not just the developed ones.

They can also help bring about a significant paradigm shift with the emergence of new stakeholders, such as youth, politicians, and ordinary people.

IP service providers can look beyond IP ownership and consider who else benefits from the innovation.

The world saw an unprecedented level of cooperation across public and private ecosystems despite the rapid and disrupted change. IP service providers can make this cooperation a norm to boost innovations.

Identifying, protecting, and valuing core IP can help green tech companies invest in further R&D, and diffuse their tech through partnerships and co-initiatives.

These service providers can also help raise growth capital with IP as collateral in order to accelerate market entry.

IP consulting companies can facilitate joint green initiatives by ring-fencing, valuing IP, and committing to the relevant IP.

Climate change adaptation will be necessary to remedy climate-related damage. The Cooperative Patent Classification (CPC) system was launched in 2013, with the addition of section Y, where class Y02 represents innovations or applications for climate change adaptation. IP service providers expert in the domain can be hugely beneficial for companies innovating in the space.

At COP26, the alternatives for transferring mitigation actions between countries and private parties were defined to open the possibility for market mechanisms to facilitate the implementation of mitigation measures. IP service providers can aid in increasing technological development to align with sustainable development in the coming years.

Conclusion

The world needs fully sustainable, closed-loop systems in which resources are reused, recycled, re-purposed, re-generated, and re-distributed wherever feasible. We can close the loop and create a truly circular economy by beginning to perceive waste as a resource of equal or greater value than those used to make it. The circular economy can also improve customer satisfaction and loyalty by making them feel proud of their purchasing choices, and IP rights can significantly help in moving industrial sectors toward more sustainable models. Please visit our Future of IP page to learn about our other Leadership Talks and insights into the latest developments in the intellectual property space.

- Yaron Damelin (Global Advisory Council Member) and the Editorial Team

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The Future of IP in Circular Economy - Sagacious IP

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This article is developed based on the 6th Future of IP Leadership Talk with Sagacious IP team by Yaron Damelin - the CEO of Focus IP and a leading IP Management consultant based in Israel. The article expands on Yaron's talk on the topic "Circular Economy."

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The Importance of Patent Valuation Service in the Digital Age

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The Importance of Patent Valuation Service in the Digital Age

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A patent has become a crucial intangible asset in today’s knowledge-based economy. While earlier, it was primarily used to protect innovations, its usage and application expanded in modern times such that licensing and assigning patents became standard practices. However, there is one underlying problem while looking for monetary gains from this – how does one identify the true value of a patent? This is where patent valuation comes to aid. It is an approach to calculate the real market value of patents so patent owners can generate suitable returns from its licensing or sale. Read the original article about Patent Valuation.

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A patent has become a crucial intangible asset in today's knowledge-based economy. While earlier, it was primarily used to protect innovations, its usage and application expanded in modern times such that licensing and assigning patents became standard practices. However, there is one underlying problem while looking for monetary gains from this - how does one identify the true value of a patent? This is where patent valuation comes to aid. It is an approach to calculate the real market value of patents so patent owners can generate suitable returns from its licensing or sale.

On the surface, patent valuation does not seem challenging with the advent of modern financial tools. However, delving deep into it reveals the complexity of the task. Let us use an example to understand how complex patent valuation can be. A patent might keep other companies from directly competing with you. In such scenarios, measuring the effectiveness of a patent in deflecting competition is not possible, as the competitors might not be interested in the patent at all.

This article is a comprehensive discussion about all the facets of patent valuation - when it is required, different approaches to patent valuation, and the role of claim analysis in patent valuation. We will also talk about how Sagacious IP approaches the practice of patent valuation.

When do you Need Patent Valuation Services?

The potential reasons behind patent valuation are shown in Figure 1 below:

Fig. 1: When Patent Valuation Services are Required

1. Patent Licensing, Sale, or Purchase: Proper patent valuation is vital while negotiating the licensing, sale, and purchase of a patent. As a seller or a licensor, you would like to receive a fair value as a one-time settlement or ongoing royalty for the patent. Similarly, as a buyer or licensee, you would also like to pay a reasonable amount for the patent. Thus, patent valuation can help assess the right value for different monetization plans.

2. Patent Enforcement: In a world of cut-throat competition, patent infringement has become a common state of affairs. It is imperative to enforce your patent rights and recover the revenue lost due to infringement on a patent. Patent valuation plays a critical role in determining the losses incurred due to third party infringement. After measuring the potential loss, a patent owner can aim to recover an appropriate amount from the infringer.

3. Mergers & Acquisition: Complex financial activities such as mergers & acquisitions require a lot of work related to patent valuation. As discussed earlier, patents have become crucial intangible assets, and their correct valuation is critical for a seamless mergers and acquisitions process. In addition, patent valuation is significant in structuring future decisions. In today's world, patent valuation has also become an important tool for investors, who utilize it to arrive at the right valuation of a company.

4. Assessing Research and Development (R&D) Investment: While investing in research and development, the real goal is to have the patented item increase revenue or be a cost-saving measure for the business. In such cases, the patent value is the actual cash value in the future. Therefore, patent valuation is also conducted to set a budget for R&D activities.

5. Internal IP Audits: IP audits are standard practices for organizations to gauge value, mitigate risks and resolve other problems in an IP portfolio. Patent valuation helps assign the correct value to the patents in a portfolio based on market and technology relevance. This may further aid decision-making pertaining to the maintenance of these intangible assets.

6. Raising Funds: A robust patent portfolio is an attractive resource for raising funds. Patents not relevant in specific geography can have high demand in other locations due to a lack of technology or market penetration. Therefore, patent valuation becomes essential to command the right price. In addition, while availing a collateral (patent) based loan, the optimal patent valuation helps secure the best possible loan offer.

7. Insurance of IP Assets: A new market is coming up as some of the leading insurers across the globe are developing insurance products linked to the capital value of the IP assets. The valuation of patents helps get the best deal on IP insurance products.

8. Financial Reporting: While IP assets were traditionally not included in a company's balance sheet, the accounting community has realized the value of mentioning IP assets in financial reporting. The International Accounting Standards Board (IASB) has started recognizing identifiable intangible IP assets, and requires companies to mention all acquired IP assets, separate from goodwill, on their balance sheet. Therefore, the task of patent valuation becomes crucial to capture the correct value of patents on the balance sheet.

9. Liquidation: During bankruptcy or liquidation, the company's IP assets have to be valued along with other physical assets in determining how those assets are to be distributed. The right patent valuation can make a massive difference in the amount of payout for debtors, investors, etc., at the time of liquidation.

10. Taxation: While planning for tax optimization, the task of patent valuation assumes a significant role. IP assets create several opportunities for tax planning, including third-party transactions and internal strategies, such as centralizing the ownership and cross-border transfer pricing. The tax authorities are also always extra curious to know the methods for the IP valuation to spot any discrepancies for possible tax evasion. Therefore, it is also crucial from the taxation viewpoint to employ the right valuation technique and eradicate any flaws.

Once you know when the patent valuation services are required, the next step is to understand the patent valuation approaches required to carry out the task. Let us take a look at these.

Different Approaches to Patent Valuation

There are seven patent valuation approaches. These are shown in Figure 2 below:

Fig. 2: Seven Different Patent Valuation Approaches

Cost Approach: This approach is based on determining the value of a patent by calculating the development cost of the related patent, either internally or externally. The method finds the patent's value by combining the opportunity costs and direct expenditures in its development and obsolescence. For instance, if a patent owner has the data related to the cost incurred for the last five years, then the current value of the patent is calculated by adjusting for inflation. The cost approach is employed when the patent is not contributing to any real income. There are two types of cost approaches, i.e., the reproduction cost method and the replacement cost method. The differences between the two are shown in Table 1 below:

S. No. Reproduction Cost Method Replacement Cost Method

1

It deliberates the construction of a duplicate of the original patent

It considers the cost necessary to recreate the functionality and utility of the subject patent

2

It is the overall cost, at the current price, for developing a replica of the patent to be valued

It is the overall cost, at the current price, for creating a new patent with equal functionality or utility to the patent to be valued

3

The replica is created using similar standards, materials, designs, and layout, and has the same quality as the original patent

The replacement patent is developed as per current standards, using the latest technology and adhering to the highest quality standards

4

The method does not factor in change in technology, greater utility from other materials, and other important factors

The replacement patent might have higher functionality and utility than the original one

Table 1: Differences between Reproduction and Replacement Cost Method

2. Market Approach: In this approach, a comparison is made with the actual price paid for a similar patent under comparable situations. In addition, the concerned market where the price has been paid must be active. For valuation in this approach, three essential factors need to be met:

Presence of an active market

An exchange of identical patents or a group of similar patents

If the patents are not comparable, variables to control the differences

The volume of information, such as the nature and extent of rights transferred and the transaction's circumstances, determines the exact valuation of the concerned patent. This approach reflects the market perception and moods regarding a specific patent compared to valuation based on other methods. The five essential steps involved in the market approach for patent valuation are listed below:

Research: A thorough examination is conducted to obtain information about a market, such as sale transactions, offers to purchase/sell a similar patent, etc.

Verification: The information obtained is verified for its authenticity to ensure that market transactions indicate an arm's length market consideration.

Selection of Units: Relevant units of comparison are selected, such as per drawing, per customer, per location, and line of code, and a comparative analysis is developed for each unit.

Adjustment: Market patent transaction is compared using various factors, and the necessary adjustment to the price is made for the subject patent.

Reconcilement: All the indicated values produced from the analysis of the market transactions are reconciled into a single value or a range of values.

3. Income Approach: The underlying assumption of the income approach is that the value of a patent is the result of its future success that will generate cash flows for the business. Within the income approach, there are four different methods available for patent valuation:

Direct cash flow prognosis method

Relief from royalty method

Incremental cash flow method

Multi-period excess earning method

Each method mentioned above allows a unique way of separating the specific cash flow for the relevant patent. Therefore, based on individual cases, the most suitable strategy can be figured out.

4. Time Approach: Discounted cash flow methods (DCF) or time approach for valuations are practical in many domains, including intellectual property. It takes two critical factors into consideration - time and uncertainty/riskiness. The problem of patent valuation adjusting for time is solved by using equivalent cash flows in which the projected cash flows are adjusted to account for riskiness over time. The values are then discounted for the time value of money. As patents have a limited lifetime, the problem of estimating residual values for the cash flows beyond the expiry period is not required. It is one of the significant advantages of patent valuation using DCF method.

5. Uncertainty Approach: Similar to the time approach discussed above, the problem of patent valuation adjusting for future uncertainty and risk is solved by using equivalent cash flows to account for uncertainty. With a multi-stage cash flow for a patent, the risk involved with the cash flow will fluctuate over its lifetime. For instance, a newly granted patent under litigation for the first time has a greater risk than a ten or fifteen-year-old patent that has survived many litigation onslaughts. All the influencing variables are considered to see their effect on the final DCF value.

6. Flexibility Approach: In the simple DCF method, no consideration is paid to the various possibilities open to the managers of a project. For instance, it could be allowed to lapse or be abandoned at different stages of the patent lifecycle. The flexibility approach for patent valuation enables the capture of such possibilities in Decision Tree Analysis (DTA). It is the process of defining a decision with a graphical representation of many alternate solutions available to solve a given problem to find the most effective course of action. The greatest advantage of the DTA method over simple DCF is that it considers the value of flexibility in the patent lifecycle.

7. Changing Risk Approach: The significant point in changing the risk approach is to account for fluctuating risk and develop a probable risk-neutral valuation. Contingent claim analysis is one of the powerful methods to adjust for the changing risk with the underlying idea of both discrete-time type analysis and continuous-time option valuation models.

Having discussed the seven different methods of patent valuation, let us now focus on how Sagacious IP uses the hybrid model for patent valuation.

Sagacious IP's Approach to Patent Valuation

The team at Sagacious IP uses a hybrid approach that considers factors such as the cost for reproduction, marketability, and value proposition concerning the IP. The first part of the hybrid approach covers the market analysis of the technology under consideration, determining the revenue that would be generated by the execution of the subject technology, whether the technology is new or outdated in the market, discount rate, etc. In addition, several other factors affecting the market are considered to reach an expected license value.

The next important component of the hybrid approach consists of a rigorous analysis of the intellectual property under study. There are multiple factors affecting the applicability of a patent. All the factors have to be considered to understand the actual worth of the intellectual property under study.

After conducting an exhaustive market and IP study, the patented technology is scored for various markets and IP parameters. The market parameters consist of taxes, cost, market size and share, product stage of the subject technology, etc. A net profit value (NPV) is calculated using a mathematical model depending on the scores. The IP parameter covers technology uniqueness and impact, competitive technologies, legal aspects, infringement potential, etc. The scores obtained from the IP parameter are used for calculating a weighing factor. The NPV and the weighing factor eventually provide the overall value of the patent under study.

Moving on, we will discuss how claim analysis plays a vital role in patent valuation.

Role of Claim Analysis in Patent Valuation

Proper patent valuation needs the combination of three specialized disciplines: technology, patent law, and finance, with a particular focus on claim analysis. To determine a patent's value, one must determine the scope of the patent's claim, the services or products covered by the patent's claim, and the economic advantages associated with the service or product.

A patent's claim defines the limits and boundaries of the technical subject matter. Therefore, the patent's value coincides with the value of the covered technology. In other words, a patent's value coincides with the value of a product or service which infringes the patent claims. Hence, an accused infringer only needs to show that their product lacks a single element of the asserted claim to absolve themselves of all the infringement charges, thereby eliminating the need to pay licensing royalties.

Let us understand the concept with an example. Suppose a claim contains five elements while the product accused of infringing has four elements. In that case, the accused product does not infringe the claim. As a result, the patent owner is not qualified for 80% of the damages it would receive otherwise. The patent owner would receive no damages irrespective of the number of citations that the patent has received, relative age and the cost incurred in obtaining the patent. Summing up, one can say that the extent of the patent claim supersedes all other proxies for patent value.

Besides choppy claim constructions, other significant factors affecting patent valuation. We will be discussing the same in the next section.

Key Factors Affecting Patent Valuation

Some of the key factors that affect patent valuation are listed below:

1. Functional Obsolescence: It occurs when the patent owner incurs an extra operational cost to use the patent against the current alternatives. Functional obsolescence can bring down patent valuation by several notches depending upon the degree of practical relevance.

2. Technology Relevance: Technology always plays a critical role in patent valuation. Upcoming technology with a booming market always commands a premium during valuation. Patents related to obsolete technology can drag the valuation quickly due to their little or no practical utility.

3. Remaining Lifespan: The patent's lifespan also plays a role in its valuation. Generally, a patent with a shorter duration pulls down the valuation by varying levels depending upon the buyer's interest.

4. Economic Obsolescence: This happens when the use of the patent in its best possible form cannot provide an adequate return on investment. It generally occurs when the patent is unique and has very little use outside a particular application. Therefore, the economic limit of the patent can also drag a patent's valuation.

Organizations in the IP industry have different approaches to patent valuation. In the next section, we will enumerate reasons for you to choose Sagacious IP for patent valuation service.

Why Choose Sagacious IP for Patent Valuation?

The reasons for choosing Sagacious IP for patent valuation are listed below:

Flexible approach to patent valuation in any technology

Proven expertise in determining the correct value indicator based on concerned patent technology

Deep research on facts and figures to obtain a practical value

Evaluation of technology patents at the initial stages of development

Fast, accurate, and cost-efficient results for one-fifth of the standard market rates

Valuation certificate

Vast experience in working with top brokers

All these reasons and many more have made Sagacious IP the first choice for many big and small companies for their patent valuation needs.

Conclusion

Winding up, we can say that as the global economy makes the rapid switch from manufacturing-centric to a more knowledge-based one, the importance of patents as immaterial assets is only going to increase. Like other assets, patents also demand their correct valuation to arrive at critical business decisions. Patent owners, licensees, and portfolio managers should also remember that patent valuation is a tactful task as the concept of "one size fits all" does not apply here. Different patent valuation methods are used depending on the type of patents and the objectives. Considering the task's complexity, it is advisable to outsource the job to the hands of a reliable third-party service provider.

Sagacious IP was started to provide seamless and transparent IP solutions in the era of knowledge and information-based businesses. Over the past few years, the company has served its clients across the globe with a team of 300+ techno-legal professionals. It has rapidly expanded to four delivery centers with offices in six countries. Its patent valuation service enables you to determine the monetary value of your patent, which in turn impacts your R&D efforts, bolsters your intellectual property rights, and enhances revenue, stock performance, and reputation. Get in touch with us now to know more about patent valuation and the myriad of other IP-related services that we offer.

- Honey Mago (ICT Licensing) and the Editorial team

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The Importance of Patent Valuation Service in the Digital Age - Sagacious IP

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A patent has become a crucial intangible asset in today's knowledge-based economy. While earlier, it was primarily used to protect innovations, its usage and application expanded in modern times such that licensing and assigning patents became standard practices. However, there is one underlying problem while looking for monetary gains from this - how does one identify the true value of a patent?

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The Need for Trademark in Pharmaceutical Industry

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The Need for Trademark in Pharmaceutical Industry

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Pharmaceutical trademarks are similar to conventional trademarks, with the exception that they are typically registered for reliable pharmaceutical goods and services, such as life-saving pharmaceutical drugs and healthcare products and services. Pharmaceutical trademarks are particularly important since they are directly linked to a matter of public health.

This article is a comprehensive discussion on what you need to know about trademark in the pharmaceutical industry, their importance, why pharmaceutical trademarks are needed, and how to register a trademark in pharmaceutical industry.

Read the original article about Pharmaceutical Trademarks.

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Pharmaceutical trademarks are similar to conventional trademarks, with the exception that they are typically registered for reliable pharmaceutical goods and services, such as life-saving pharmaceutical drugs and healthcare products and services. Pharmaceutical trademarks are particularly important since they are directly linked to a matter of public health.

This article is a comprehensive discussion on what you need to know about trademark in the pharmaceutical industry, their importance, why pharmaceutical trademarks are needed, and how to register a trademark in pharmaceutical industry.

What is Pharmaceutical Trademark?

Pharmaceutical trademarks are mostly filed for reputable pharmaceutical goods and services. In the case of pharmaceutical trademark, the brand name or drug name is typically taken from the drug's treatment, salt composition, or any other associated medical word. For example, if the drug for the liver is called LIV, the next drug from the same firm will be labeled "LIV 1."

Medicinal and pharmaceutical products are commonly named after their generic ingredients. However, such marks are frequently regarded as weak or non-distinctive because they can easily be traced back to their individual ingredients.

Figure 1: Examples of pharmaceutical trademark

Importance of Pharmaceutical Trademark

Pharmaceutical trademarks are important because they are directly related to public health issues and help users identify the products they want, which improves the reputation and motivates pharmaceutical companies to maintain high quality. By minimizing name-related prescription errors, pharmaceutical trademarks protect a patient's health and safety. Any chance for error or mistake in a medicine's nomenclature, such as identical sound or resembling names or any similarity in trade style, packaging, etc., might affect a patient's purchasing decision, whereas the purchase of the wrong drug can be fatal. As a result, courts are strict in this regard and take particular caution when evaluating problems related to the pharmaceutical industry, with public welfare and health as the highest priorities.

Due to business and regulatory factors, the pharmaceutical industry's procedure is extremely time-consuming. Here's a quick checklist of actions you must take with the help of an IP professional or trademark attorney to help you register an effective pharmaceutical trademark:

Make a list of possible trademark contenders and rank them in order of importance.

Proceed with the strongest options; conduct a full trademark clearance similarity search to determine the risk of your trademarks being confused with existing brand names.

Proceed with the strongest options; conduct a full trademark clearance similarity search to determine the risk of your trademarks being confused with existing brand names.

To keep track of possible infringement by using both traditional and non-conventional resources.

File for trademark registration.

Manufacturers might also be enticed to invest in new treatments by using trademark to secure the safety of their existing drugs. Apart from this, trademark in the pharmaceutical industry also:

Supports Health Professionals to Minimize Medication Errors.

Enables Consumers to Choose Suitable Medications.

Allows Manufacturers to Monitor Their Drugs.

Naming a New Pharmaceutical Drug

Pharmaceutical products are distributed all over the world. Thus, pharmaceutical companies must choose a trademark that is recognized in every country where the product will be sold. Companies who are introducing a new pharmaceutical product must conduct a global trademark search to ensure that their intended trademark is not already in use and that their branding does not have a negative impact in particular regions. Before attempting to sell a pharmaceutical product, it is critical to seek approval from the appropriate health authorities as well as the appropriate trademark registries.

There are multiple names for all pharmaceutical drugs. This includes a scientific name, which follows International Union of Pure and Applied Chemistry (IUPAC) rules for small molecular medicines. Because these names are often long and complex, a nonproprietary or generic name is also chosen. These names must go through an approval process to make sure they do not sound too similar to existing drugs and that the same 'stems' aren't used to name related chemical compounds. As a result, drugs that treat a certain type of condition end with the same suffix (e.g., '-lol' for beta-blockers).

Naming Process

The Ultimate goal is to have a name that:

Satisfies branding and marketing goals.

Minimizes the risk of medication errors.

Is approved by the United States Patent and Trademark Office (USPTO) and foreign trademark offices.

Is acceptable to the FDA, EMA, and other regulatory bodies.

Name ready and approved by launch day (timing is important).

Check Similar-Sounding Pharmaceutical Trademark

The similarity in drug names should be avoided since the possibility of confusion endangers consumer health. Bringing the greatest pharmaceutical trademark to market can be challenging, but it will help with medicine safety. Confusion for similar-sounding pharmaceutical trademark is influenced by similarities in design, packaging, or pattern. Using these pharmaceutical marks in a way that is likely to deceive customers, as with any trademark, jeopardizes goodwill, affects fair competition and may result in serious health risks for consumers.

For Example: - The major difference between these two insulins is that Novolog 70/30 contains both intermediate and very fast-acting insulins, while Novolin 70/30 contains both intermediate and short-acting insulins.

Figure 2: Novolog 70/30 vs. Novolin 70/30

Regulatory Approval in Pharmaceutical Branding

After the selection of suitable names for a new drug or product, pharmaceutical companies must secure regulatory and legal approval, which can be highly complicated and time-consuming. Pharmaceutical products must be approved by a health authority and registered with the appropriate trademark before they can be sold on the market. Regulatory approval allows you to sell the pharmaceutical drug under the approved brand name. Hence, pharmaceutical companies must select strong trademarks that are available in each country where the product will be introduced. Before registering a pharmaceutical trademark, a global trademark search must be conducted to guarantee that the desired trademark is unique and that the branding does not negatively affect any country. The following aspects can aid in the selection of a strong pharmaceutical trademark:

The rule of the standard trademark should apply to pharmaceutical trademarks.

The pharmaceutical trademark must be registered with the USPTO.

The guidelines of the United States Food and Drug Administration (USFDA) should be followed when creating a pharmaceutical trademark.

Foreign Direct Investment (FDI) in Indian Pharmaceutical Sector

Pharmaceutical Sector is one of India's top ten industries attracting foreign investment. In Medical Devices, 100% foreign investment is permitted under the automatic approach, wherein foreign investment in pharmaceutical greenfield projects is authorized up to 100%, and foreign investment in brownfield pharmaceutical projects is allowed to invest beyond 74% to up to 100%. But approval from the government is necessary.

After the fall of the Foreign Investment Promotion Board (FIPB) in May 2017, the Department of Pharmaceuticals was tasked with reviewing foreign investment proposals under the Gov-11 Annual Report 2020-21 government approval procedures. Besides that, the Department analyses any pharmaceutical FDI proposals arising from Press Note 3 of 2020, dated 17.04.2020, in which the investors/ultimate beneficiaries are from the land-sharing bordering countries of India.

Between April 2020 and December 2020, the Department of Pharmaceuticals approved 17 FDI bids for brownfield pharmaceutical projects worth Rs 1,512 crore.

Figure 3: FDI inflows in pharmaceutical sector, includes both pharmaceuticals and medical devices (Source: DPIIT)

Advantages of Trademark in Pharmaceuticals

Some of the major advantages of Trademark in Pharmaceuticals are as follows: -
1. Allowing Drug Manufacturers to Monitor Their Products
Manufacturers will be able to monitor the safety of their existing drug, thanks to the use of trademarks. Without the use of a trademark, they would be unable to determine whether their products were involved based on reports of side effects that just stated the drug's common name. It would result in costly investigation that may be avoided if the manufacturers involved were distinguished by Pharmaceutical Trademarks.
2. Encouraging Health Professionals to Prevent Medical Error
The purpose of the Trademark is to ensure that the mark is unique and original. Due to the similarities of multiple generic names for pharmaceuticals in the same category, many nurses, physicians, and other practitioners find it difficult to recall or spell common names. Healthcare practitioners ensure that the correct medication is administered to patients by employing unique Trademarks for each pharmaceutical drug.

3. Letting users choose suitable medications

People are typically hesitant to switch from their favorite branded drug to a generic equivalent. The peace of mind that comes with the administration of a well-known branded drug may be the reason for some clients to exercise brand loyalty. Users can also learn about the availability of unique treatments for their health conditions quickly, thanks to the start of direct-to-customer advertising in many countries.

How to Register a Trademark in the Pharmaceutical Industry

While all potential trademarks face similar problems in terms of creation and registration, pharmaceutical companies that want to protect themselves with a trademark confront a number of unique issues, particularly with respect to Pharmaceuticals. Pharmaceutical trademark approval and protection can be difficult since brand owners and IP specialists must not only design a wholly different brand name, but must also guard against counterfeiting, trademark infringement, and passing-off attempts. Any new naming stage always starts with a big list of possible names, which is narrowed down to more reasonable proportions using a range of approaches. Some companies will conduct a deeper comprehensive search to eliminate names that may be confusingly similar to existing trademarks, as well as to reject names that may have unexpected meanings or implications in any of the languages spoken in the areas where the product will be sold.

Comprehensive trademark searches guided by Sagacious IP experts allow you to confidently kick start your final pharmaceutical names. Our evaluation for your final-candidate names combines the global trademark registration data with name safety to ensure that any potential conflicts have been detected and reported for your final inspection. For more details regarding the trademark registration, click here.

Non-Conventional Trademark

In today's age of competitive marketing, a variety of tactics are used to capture consumers' attention. Non-traditional trademarks are also playing a role in the same. Non-traditional trademarks exist beyond the scope of standard trademarks. These include marks based on shape, sound, smell, taste, and texture. In recent years, pharmaceutical businesses have started using advanced and novel strategies to differentiate their products from those belonging to competitors. As a result, pharmaceutical companies are depending on non-traditional trademarks to stay ahead of the curve, in addition to merely the brand name or drug name. This helps in avoiding confusion among customers while simultaneously emphasizing the trademark's uniqueness.

In terms of non-traditional trademarks, India has a long way to go. With the introduction of new technology and developments in trademark recognition and association, going beyond the old approaches has become vital.

Trademark Infringement Cases In the Indian Pharmaceutical Industry

In the Indian pharmaceutical industry, there have been a bunch of cases over the years involving pharmaceutical trademark infringement. One common feature of these several cases is that the risk of misunderstanding in cases involving drugs must be kept to a minimum, if not zero, to avoid any negative impact on public health. Some well-known trademark infringement cases in the Indian pharmaceutical industry are discussed below:

Case 1: Cadila Healthcare Ltd. V. Cadila Pharmaceutical Ltd, 2001(5) SCC 73

Cadila Healthcare Ltd. was granted a trademark for "FALCIGO" to market its medicine for cerebral malaria. After a year, Cadila Pharmaceuticals Ltd. launched their drug "Falcitab" in the market. Cadila Healthcare Ltd. filed a complaint in the district court of Vadodara seeking a judgment prohibiting Cadila Pharmaceuticals Ltd. from using the term "Falcitab. " According to the appellants, both pharmaceuticals were used to treat the same condition, the labels were misleadingly similar, and both medicines were to be prescribed as a last resort. But according to the responders, the word 'Falci' is derived from the disease Falcipharum malaria and is used in the pharmaceutical sector.

Despite the fact that both pharmaceuticals can only be bought through a prescription, the Supreme Court concluded that this information was insufficient to prevent confusion. The Supreme Court declared that the disturbing similarity criteria must be amended in the case of pharmaceutical medications since misreading medicinal products can be fatal. As a result, the injunction was considered to be appropriate in this case. The Supreme Court of India also set the following factors for determining whether two pharmaceutical trademarks are deceptively similar:

The type of trademarks, such as a word, label, or composite mark.

The degree to which the trademarks are similar.

The kinds of goods or services for which they are used as trademarks.

The similarity in the character, nature and performance of the rival's products.

The type of buyer who is most likely to purchase or use products with the trademarks they need, based on their education and intellect, as well as the degree of caution they are likely to practice while buying or using the products.

How things are purchased or orders are placed.

And any other information that could help determine the degree of dissimilarity between the competing marks.

Case 2: Mankind Pharma Limited V. Novakind BioSciences Private Limited

In the case of Mankind Pharma Limited v. Novakind BioSciences Private Limited, the Honorable High Court of Delhi granted an ex-parte ad-interim injunction in favor of the plaintiff (Mankind), prohibiting the defendant (Novakind) from, among other things, manufacturing and selling any pharmaceutical product with the suffix "KIND." The plaintiff was the owner of the well-known trademark "MANKIND" and a number of other marks with the suffix "KIND," while the defendant was using the mark "DEFZAKIND" for its pharmaceutical medicine.

Case 3: Cipla Limited vs. M.K. Pharmaceuticals MIPR

In this case, the plaintiff sold "NORFLOXACIN" tablets in blister packaging that were oval in shape and orange in color, under the trademark "NORFLOX-400." The defendant adopted the identical name, "NORFLOX-400." However, the plaintiff did not sue the defendant for the name; rather, the plaintiff alleged that the defendant imitated the shape, color, and blister packaging of tablets, causing confusion. It is well understood that no color monopoly can exist as no one orders medicine based on its color, form, or packaging. The use of blister packaging is common, and pills are frequently round or oval in shape. As a result, there was no injunction issued.

Case 4: Neon Laboratories Ltd. V. Medical Technologies Ltd.

The appellant filed a trademark registration application in 1992, and was granted the trademark "ROFOL" in 2001. However, the product was not released until 2004. Meanwhile, in 1998, the respondent introduced the drug "PROFOL." Due to this, the respondent had an earlier user date, and the appellant had an earlier registration date. The case was in favor of the respondent as the respondent began producing and distributing, as well as earned substantial goodwill in that period. As a result, the trademark "ROFOL" was placed under injunction. The temporary injunction factors of balance of convenience and irreparable damage favored the respondent.

Why Choose Sagacious IP?

Since trademarks are valuable in the pharmaceutical industry, it is necessary to do a comprehensive search before registering one to avoid duplication. The trademark search is required to avoid the infringement of a drug manufacturing formula, as each drug takes extensive study and has its own manufacturing formula. Whether you're looking for a trademark in the USPTO database, the WIPO database, the EPO database, or a custom search, Sagacious IP's experts can help you find what you're looking for. Some of the reasons why Sagacious IP is the best option for you are as follows:

Dedicated team of 20+ Trademark experts.

Trademark searches on global, cluster-based, and local level.

Find existing mark names that are Exact, Near Exact, or Similar Sounding in the same Classifications and Goods & Services.

Find all possible identical brand/trademark names that could jeopardize the trademark rights.

Find out about any other well-known brand names or trademarks that are comparable.

Make a list of restricted trademarks so you can see if their brand name or trademark is included in the list.

Identify other products/logos that appear to be similar to respective companies.

The team has all of the tools necessary to offer you precise and dependable data.

Solutions that is both affordable and effective.

Excellent Results.

Flexible Delivery Schedules based on Customer Needs.

Conclusion

After examining pharmaceutical Trademarks, it is clear that Trademarks are important in the pharmaceutical industry. To avoid trademark infringement, a systematic search should be done prior to registration to avoid similar naming and sound-alike pharmaceutical names, whether you're searching the WIPO Trademark Database, the EPO Trademark Database, or conducting a custom search. A pharmaceutical trademark identifies a drug manufacturer's success by prohibiting counterfeiting of its products/processes. To summarize, Indian courts are adopting a stricter approach to adjudicating the probability of confusion in pharmaceutical trademarks due to the impact on human life. As a result, based on the opinions adopted by various courts, the following aspects should be considered when selecting a brand name for pharmaceutical products:

1. Avoid phrases or words that have become familiar in the business or are descriptive, as they may not function as source identifiers but rather as markers of ingredients or diseases.

2. Avoid suggestive words or terms.

3. Avoid the danger of infringement or passing off action, and conduct a check on the Trade Marks Registry website before registrations or applications.

4. Conduct a google search to see whether there are any similar pharmaceuticals on the market, and avoid names or taglines that are similar in appearance or sound, as well as trade dress or packaging that is comparable to your goods.

5. Avoid terms or marks that may be misleading because they contain inert or inactive components.

Sagacious IP's comprehensive Pharmaceutical Trademark Search solutions are designed to provide the customers with the information they need before filing for trademarks. The experts at Sagacious IP can assist you in achieving your goals. The team has every resource at its disposal to give you reliable and accurate data. Furthermore, we assist clients in identifying existing and available trademarks for registration using our Trademark Search service. More information about this service can be found by clicking here.

- Priyanka Nimje (Trademark) and the Editorial Team

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The Need for Trademark in Pharmaceutical Industry - Sagacious IP

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Pharmaceutical trademarks are similar to conventional trademarks, with the exception that they are typically registered for reliable pharmaceutical goods and services, such as life-saving pharmaceutical drugs and healthcare products and services. Pharmaceutical trademarks are particularly important since they are directly linked to a matter of public health.

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Engineering versus Patent Drawings: Understanding the Difference

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Engineering versus Patent Drawings: Understanding the Difference

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Although a simple observation might not reveal much difference between engineering and patent drawings, the actual variations, however, can be quite prominent. Engineering drawings can be defined as rich and specific outlines that show all the detailed information about the product needed for its manufacturing. These drawings, without showing the exact dimensions of the product or item, can be used in the patent application form as patent drawings.

While engineering drawings act as a guide for reproducing the exact product with specific dimensions, patent drawings only highlight the functionality or aesthetics of the product, without any mention of the dimension. So based on the objective, a choice is made between engineering and patent drawings.

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Although a simple observation might not reveal much difference between engineering and patent drawings, the actual variations, however, can be quite prominent. Engineering drawings can be defined as rich and specific outlines that show all the detailed information about the product needed for its manufacturing. These drawings, without showing the exact dimensions of the product or item, can be used in the patent application form as patent drawings.

While engineering drawings act as a guide for reproducing the exact product with specific dimensions, patent drawings only highlight the functionality or aesthetics of the product, without any mention of the dimension. So based on the objective, a choice is made between engineering and patent drawings.

This article will discuss the concept of engineering drawings, patent drawings, types of engineering and patent drawings, and finally, the role of both the drawings in patent applications.

Concept of Engineering Drawings

As mentioned above, the basic concept of engineering drawings is to provide or convey all the information necessary for manufacturing a product. The information includes dimensions, numbers, names of parts, etc. Once the manufacturing team gets the drawing, they can start the production process without a second thought.

Moreover, engineering drawings (as shown in Figure 1) use standardized language and symbols - a common rule for drafting engineering drawings. It makes the drawings simple and easy to understand, with little to no personal interpretation possibilities - since a common rule ensures that understanding of drawing is the same for everyone.

Figure 1: An Example of Engineering Drawings

To further enhance your understanding of engineering drawings, it is imperative to delve into the various components of engineering drawings. These are discussed below in detail:

Different Types of Lines: Every line in engineering drawings represents something different. For instance, continuous lines indicate the boundary of a part or component. In comparison, thicker lines are used to indicate the outer border, and thinner lines are used to reflect inner boundaries. The purpose of hidden lines is to show something that would not be otherwise visible on the drawing. Essentially, it highlights the hidden part or any internal part without a section or a cut-out view. Some of the other lines used are the center line, dimension line, etc. More details about the varied types of lines are discussed in Table 1 below:

Table 1: Different Types of Lines Used in Engineering Drawings (Source)

2. Different Types of Views: There are primarily two types of views, i.e., isometric views and planer views (a view of an object projected on a horizontal plane), which are further divided into sub views. The different isometric views are front perspective, rear perspective, bottom perspective, etc. The planer views can also be termed as standard views. These are top view, rear view, front view, bottom view, left side view, right side view. Figure 2, shown below, explains the different views.

Figure 2: Example of Planer and Isometric Views

The left side views are planer views, while the image on the right side represents an isometric view.

Often, only images or information of planer views are available. In such cases, with the help of planer views, a 3D image, similar to one on the right-hand side in Figure 2 is prepared. This 3D image is often further used to prepare an object.

After learning the types of views in engineering drawings, it is also essential to understand the different types of engineering drawings. The next section of this article will tell you about these.

Types of Engineering Drawings

There are mainly two types of engineering drawings. These are discussed in detail below:

Freehand: These drawings are prepared on white paper without using instruments other than pencil and erasers.

Figure 3: Example of a Freehand Engineering Drawing

2. Instrument drawings: These drawings are prepared using different kinds of modern software, such as AutoCAD.

Figure 4: Example of an Engineering Drawing using Instrument

Having understood the two types of engineering drawings, let us now discuss the role of engineering drawings and what they actually do.

Role of Engineering Drawings

These are used to fully and clearly define the requirements for the engineered items.

Engineering drawings are used to create standardized conventions for layout, blueprints, nomenclature, interpretation, appearance, size, etc.

Their purpose is to accurately and unambiguously capture all the geometric features of a product or a component.

Engineering drawings are used to convey all the required information that will allow a manufacturer to produce the item.

To help you understand the subtle differences between engineering and patent drawings, we will now focus our discussion on patent drawings.

Concept of Patent Drawings

A patent application usually contains drawings used to explain the invention better. Such drawings in a patent application form are referred to as patent drawings. The objective of patent drawings is to illustrate the invention, some of its embodiments (implementations or methods of the invention), or the prior art.

Patent drawings play a vital role in patent applications as they offer a better understanding for the examiner by highlighting the relevant parts of the invention. Therefore, it is often mandatory to use patent drawings in a patent application to convince the examiner and help in expediting the patent grant process. In the absence of patent drawings, there is a greater probability of rejection or an office action (OA).

Figure 5: Example of a Patent Drawing Showing Water-Soluble Polyvinyl Alcohol Film (Source)

Therefore, professional patent drawings are critical to avoid any rejection and expedite the process of patent examination and approval. In addition, one needs to be meticulous in creating specific and detail-oriented patent drawings as there are particular rules and regulations in place for different patent offices. The additional importance of patent drawings services are shown below in Figure 6:

Figure 6: Importance of Patent Drawing Services

1. Simplification of Complex Details: Explaining the working of new machines with several hidden cross-sectional areas can be a daunting task, even for the best of inventors with tons of experience. An examiner or ordinary observer who may not have the required technical prowess will find it challenging to grasp the invention with a textual explanation. That is why patent drawings come in handy to capture the intricate details of the invention more straightforwardly for better clarity. A professional patent illustrator is more adept at placing the drawings in the appropriate place to facilitate easy comprehension for the examiner or a general observer.

2. Improving Clarity of the Invention: The description of a new invention that consists of working of complex parts may not be easily grasped by an ordinary observer who lacks the necessary technical knowledge. Patent drawings for various angles can help them visualize the invention's working in the real world. For example, the working of any mechanical or electronic device is best captured by illustrations to focus on the specific part of the invention.

3. Assisting in Patent Filing: While a utility patent is concerned with the feature and functionality, the design patent focuses on the aesthetic part of a product. Design patents are crucial for establishing the uniqueness of a brand, and it is best portrayed with the assistance of a drawing. A well-crafted drawing firmly shows the essence of design and strengthens a brand's market position.

4. Increasing Strength of the Claim: In the absence of neat and well-labeled patent drawings, there is a probability that the claim for the invention might be rejected. The examiner may not understand the invention's novelty with the textual explanation and deem it unoriginal. Patent drawings that are placed at relevant places aid in boosting the claim of your invention.

After learning about the basic concept of patent drawings, one must also understand the various types of patent drawings and their features.

Types of Patent drawings

There are mainly three types of patent drawings as discussed below:

Utility Patent Drawings: The purpose of utility patents is to protect the product's functional aspects, i.e., how the article works and how it is used. Utility patent drawings help illustrate the following things - block diagrams, electric circuits, chemical formulas, flow charts, and line drawings showing the shape of objects. In an ideal scenario, the utility patent drawings must cover the entire element mentioned, at least in claims.

Although it is said that the task of preparing utility patent drawings is best left to the professionals, a basic understanding is still necessary for everyone involved. Some of the standards for drafting impeccable utility patent drawings are discussed below:

Lines Numbers and Figures: The utility patent drawings submitted in patent applications are black and white line drawings with solid and secure black lines. There is more relaxation allowed while filing the provisional applications. Every sheet and figure has to be numbered consecutively, and the text should be at least 1/8 inch in height for better readability upon reduction. The two commonly used sheets sizes for drafting patent drawings are A4 and Letter. The majority of the drafting companies use the default sheet size unless directed to use a specific size.

Lead Lines: In utility patent drawings, reference numbers are used for correlating a feature to a written description of that feature. To facilitate a better understanding for the examiner, a lead line or other indicator is used to link reference numbers and features. The rule of the thumb regarding lead lines is that they should meet the object, surface, or line identified at a right angle.

Aesthetics and Improving Legibility: While preparing the utility patent drawings, it is critical to take care of the symmetry. A symmetrical drawing improves the aesthetics and increases its readability and understanding. A utility patent drawing should be easy on the eye so that interpretation of the main points of the drawings becomes easier.

Flowcharts: Symmetry and consistency are also important while incorporating flow charts for utility patent drawings. The lines and the boxes used in the flowcharts should have the same thickness, color, and size to avoid confusion in the mind of general observers. In addition, the arrow length should be the same to maintain the same distance between two consecutive blocks. A symmetrical and balanced flowchart is successful at delivering the desired message. Figure 7 below shows an example of a utility patent drawing.

Figure 7: Example of a Utility Patent Drawing

2. Design Patent Drawings: Compared to utility patent drawings, a design patent drawing only protects an article's ornamental appearance, such as its shape, surface ornamentation, or configuration. It covers the aesthetics of a functional item. Some examples are furniture, jewelry, beverage containers, and computer icons. The shading in design patent drawings must be clear to reflect the invention's contour, shape, and material textures. Unlike utility patent drawings, design patent drawings do not have reference numbers. Some of the requirements for drafting a clean design patent drawing are listed below:

Color of Design Patent Drawings: The drawings must be illustrated in black and white. Special care has to be taken for any surface shading to project the character and contour of all surfaces related to the 3D aspect of the design. Broken lines are utilized to indicate portions that are not a part of the claimed design. For special cases, black and white photographs can be used in place of ink drawings if photographs are the only way to illustrate the invention. However, applicants must file a petition and seek approval to file colored drawings or photographs in place of black and white drawings.

Design Patent Drawings Views: The drawings of the design patent should cover the following views - front, rear, right side, left side, top and bottom. All the views should be presented head-on and not from a particular angle. Views presented from an angle are called perspective views and are not mandatory in patent applications. In case the two views are mirror images of each other, then one of them can be removed. However, it is better to provide a statement confirming that the other side is a mirror image of the one highlighted in the drawing. The bottom view can be omitted if the bottom is flat and has no ornamentation. However, the figure description must include a statement emphasizing the point that the bottom is flat and unornamented. The surfaces that are not flat should not be described as unornamented.

Figure 8: Example of a Design Patent Drawing

3. Plant Patent Drawings: A plant patent protects the critical features of a plant from being copied or used by others. Plant drawings are generally reproduced in other mediums, such as permanent watercolor renderings that truly capture the appearance of the plant. These drawings are not mechanical in nature and must be well-drafted to highlight their unique characteristics. A large number of inventions are easily understood with the inclusion of patent drawings in patent applications. Plant patent drawings may be in color. However, the color portrayed must also match the respective color designation defined in the color dictionary specification. Usually, two copies of the color drawings are submitted in a patent application.

Figure 9: Example of a Plant Patent Drawing

Having understood the three types of patent drawings and what they entail, let us now discuss the role of patent drawings and where exactly they are used.

Role of Patent Drawings

The most prominent role of patent drawings is to expedite the patent application. In addition, the applications often require patent drawings to help the examiner understand an invention clearly and with minimum effort. This is because patent drawings make a patent application more detailed and illustrative.

There are different patent applications in which patent drawings play a crucial role in understanding the invention more clearly. The various types of applications where a patent drawing is used are discussed below:

1. Provisional Application: This is a provisional application filed while the invention is still at the experimentation or development stage. Although the patent application does not need a drawing at this stage, its inclusion does help demonstrate creativity in a more precise way.

2. Patent Cooperation Treaty (PCT) International Application: The PCT applications facilitate patent filing in more than 150 countries using only a single application. Patent drawings are mandatory in this application, while grayscale photographs can be used depending on complexity. However, patent drawings can also be rejected, and the correct drawing should be filed within two months of receiving the office action.

3. PCT National Phase Application: An international application can also be filed for a specific country. However, the applicant must file the national phase application within 30 months from the global filing date or priority date, whichever falls earlier. Like PCT international application, patent drawings are compulsory for PCT national phase application. Therefore, patent drawings in the application can be rejected due to lack of novelty and faulty drawings. Sometimes, rejection can be based on hatch patterns used in the drawings that violate USPTO requirements. For instance, the sectional view's lack of or incorrect hatching can lead to rejection.

4. Other Patent Applications: Other types of patent applications that also require patent drawings are typical applications, convention applications, divisional applications, and patent of addition.

With the advancement in technology and readily available software, many organizations perform the task of patent and engineering drawings in-house. However, it is a good idea to explore the services of a reliable third party to avoid office actions and save time. Let us take a look at what sets Sagacious IP apart from other patent drawing service providers.

Why Choose Sagacious IP?

Sagacious IP offers you the best patent drawing services in the industry. We have a team of highly experienced and adept illustrators who specialize in drafting different types of patent drawings. In our patent drawing services, we follow all the rules and regulations of the USPTO to ensure that your patent application is swiftly processed with minimal office actions. With a quick turn-around time and a number of iterations, our team also ensures that customer is delighted with the results.

We use the CAD technique for engineering drawings to prepare a solid model in 3D (as shown in Figure 10), which helps generate views with accuracy and precision. The 3D models are designed with the help of experienced illustrators with an engineering background and include all the necessary information for making the final product. Moreover, the team at Sagacious IP can also prepare a 3D model without the exact dimensions with minimum references.

Figure 10: Example of a 3D model with CAD Software

Conclusion

Summing up, we can say that engineering drawings are detailed drawings used to manufacture a product or show a layout like a blueprint with the dimensions of the products. But on the other hand, patent drawings are used in the patent application to demonstrate the invention more clearly. Therefore, hiring the services of a dependable third party becomes critical if you are looking for impeccable patent drawings to save time and expedite the patent application approval process.

Sagacious IP set out to provide next-generation IP solutions for its clients. Over the years, it has formed a team of 300+ techno-legal professionals who have delivered 25,000+ projects across the globe. In addition, through our patent drawings/illustration services, we help prepare patent drawings such as design drawings, utility drawings, plant drawings, trademarks, etc., as per the requirements with the help of our experienced Patent illustrators.

- Rishabh Arora (Illustration) and the Editorial Team

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Engineering versus Patent Drawings: Understanding the Difference - Sagacious IP

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Although a simple observation might not reveal much difference between engineering and patent drawings, the actual variations, however, can be quite prominent. Engineering drawings can be defined as rich and specific outlines that show all the detailed information about the product needed for its manufacturing.

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CMOS Image Sensors: Evolution, Patent Trends, Leading Players & More

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CMOS Image Sensors: Evolution, Patent Trends, Leading Players & More

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Image sensors are semiconductor devices used to capture the world with a touch of our fingers. Thanks to the evolution in semiconductor technology, the size of image sensors has also reduced to the tip of our fingers. It is estimated that over 1.7 trillion images will be taken in 2022. This is a testament to the widespread role image sensors have in our lives. These sensors can now capture details on macroscopic and microscopic levels that not even a human eye can capture. The primary function of the image sensor is to capture light from our environment and convert the captured light into electrical signals. Image sensors can be categorized into Charge-Coupled Devices (CCD) and Complementary Metal Oxide Semiconductor (CMOS) image sensors based on the architecture for converting light to electrical signals, and device structure. The latter are used in all sorts of digital cameras for image and video shooting. Read more about CMOS Image Sensors at: https://sagaciousresearch.com/blog/cmos-image-sensors-evolution-patent-trends-leading-players-more/

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Image sensors are semiconductor devices used to capture the world with a touch of our fingers. Thanks to the evolution in semiconductor technology, the size of image sensors has also reduced to the tip of our fingers. It is estimated that over 1.7 trillion images will be taken in 2022. This is a testament to the widespread role image sensors have in our lives. These sensors can now capture details on macroscopic and microscopic levels that not even a human eye can capture. The primary function of the image sensor is to capture light from our environment and convert the captured light into electrical signals. Image sensors can be categorized into Charge-Coupled Devices (CCD) and Complementary Metal Oxide Semiconductor (CMOS) image sensors based on the architecture for converting light to electrical signals, and device structure. The latter are used in all sorts of digital cameras for image and video shooting.

This article will discuss the evolution of image sensors from CCD to CMOS, their main components and advantages, applications, the difference between the front-side and backside illuminated CMOS image sensors, major players in the market, and top patent assignees in the image sensor technology.

A Brief History of Image Sensors

MOS image sensors are not a recent development. They were first devised and developed in the mid-1960s when the existing technology for capturing images and video was the vidicon tube. However, despite the excellent image quality, there were several downsides, such as its large size, lagging video, and huge weight. In addition, it also suffered from temporal noise and high fixed patterns.

CCD image sensors were developed in 1969 to overcome the problem of MOS image sensors, and they quickly captured the market. All pixel charges in a CCD sensor are transformed to an analog voltage, amplified, and digitized via an output. Throughout the 1970s, the use of MOS image sensors had been restricted to a few particular applications, such as spectroscopy, and CCD ruled the image sensors market because of its inherently lower fixed-pattern noise (FPN). However, there was one problem: the CCD market was controlled by only a few companies, which created a conducive environment for research on CMOS image sensors (CIS) by universities and companies.

The downside of CCD image sensors, such as high energy consumption, the slow reading speed of the serial data stream, low homogeneity and quality of image, poor link performance, and low battery life, were overcome by CIS. Each pixel undergoes a charge/voltage conversion in a CIS, and the image data is transformed into digital data on the CMOS sensor chip. This advantage of parallel read-out of picture data from a CMOS sensor offers a higher frame rate at comparable resolutions.

A CIS has a smaller analog to digital conversions (ADC) per pixel column than CCD, enabling faster frame rates. CMOS sensors have improved dramatically over the years, and the most recent ones are now equivalent to or better than CCD in terms of image quality, image speed, and total value. In addition, the CMOS image sensors enable scalability by allowing image acquisition and processing circuitry to be integrated on the same chip using a standard CMOS process.

Now that we are aware of the history of image sensors and the evolution of CIS, let us discuss its main components that contribute to an excellent performance.

Critical Components of a CMOS Image Sensor

There are four essential components in a CMOS image sensor, as shown in Figure 1.

1. Microlens

2. Color Filter (CF)

3. Transistors and Interconnects

4. Photodiode (PD)

Figure 1: Four Main Components of a CMOS Image Sensor (IBM, FSI)

A CIS comprises an array of microlens used to direct light towards the photodiodes. The RGB (red, green, and blue) components of directed light are separated using the color filters. The photodiode (PD) is a device that collects photons/captures light and converts the collected photoelectrons into electrical signals. The pixel transistors are used for controlling the signals that are transported within the image sensor using interconnect structures/metal wiring. The CMOS image sensors can be categorized into Front-Side Illuminated (FSI) and Backside Illuminated (BSI) based on the placement of the photodiode and interconnects layers concerning each other.

In the next section, we will discuss the advantages of CMOS sensors over CCD image sensors.

Advantages of CMOS Image Sensors

There are numerous advantages of using CMOS image sensors over CCD image sensors. The four main advantages have been discussed below:

1. Energy consumption is significantly reduced in a CMOS image sensor. It is crucial as less heat dissipation means a more excellent camera with less noise.

2. It has higher sensitivity owing to the new pixel architecture, which is helpful in low-light situations. Sensitivity in the near-infrared band and short-wave infrared radiation is heightened.

3. A better fidelity image will benefit from less dark noise.

4. The camera size can be smaller because the read-out logic may be built into the same chip.

The advantages of a CMOS image sensor can be better understood when we capture its differences from a CCD image sensor. These are highlighted in Table 1 below:

To further better the performance of CIS, some changes had been made in the arrangement of its components for a shift from the front-side illumination to the backside illumination. In the next section, we will understand the difference between the workings of the front-side and backside-illuminated CMOS image sensors.

Front-Side Illuminated (FSI) Versus Backside Illuminated (BSI) CMOS Image Sensors

The working of FSI and BSI CMOS image sensors are shown in Figure 2. The conventional CMOS image sensors follow front-side Illuminated (FSI) architecture with a microlens array at the top, followed by color filters, interconnect layer below color filters, and the photodiodes at the bottom. In FSI image sensors, light enters pixels through the front metal wiring and concentrates on the photosensitive region (photodiode). Since the ratio of the height of the pixel's optical stack and the pixel size is minimal for larger pixels, the photosensitive area is relatively guaranteed. Therefore, the FSI image sensors have a better performance for larger pixels.

As the industry strived to reduce the size of the CMOS image sensors or increase the number of pixels in a given area to improve resolution, there was a call to shrink the pixel size. Unfortunately, the pixel size shrinkage led to reduced fill factor, longer optical route, and loss in the absorption of metal wiring's light, lowering the FSI sensor's performance.

The BSI (Backside Illuminated) architecture resolved the problem by placing the photodiode layer at the top of the interconnect layer. It separates electrical components from light, allowing the optical route to be tuned independently, eliminating the FSI metal wiring layer's absorption, reflection, and flare. Furthermore, the BSI pixel's optical stack is considerably reduced and achieves a higher QE (quantum efficiency) than FSI.

Figure 2: Working of FSI and BSI CMOS Image Sensors (Source)

BSI for Present and the Future

The need for the evolution of the image sensors is either to improve their performance or to reduce their size.

The BSI sensors evolved to stacked sensor structures that include the pixel layer formed over a chip in place of the supporting substrate in conventional BSI sensors. The stacked sensor structures enabled the mounting of large-scale circuits on a small chip. Since the pixel and circuit sections are formed on a different chip, specialized manufacturing processes are used to produce a pixel section with high image quality and a circuit section with high performance, enabling higher resolution and a compact size.

These stacked BSI structures utilized through-silicon via (TSV) in the pixel array's periphery to provide connections between the pixel and circuit die. It led to the development of Cu-Cu direct bonding between the stacked pixel and circuit dies which enabled space-saving around the periphery and reduction in the size of the sensors.

The focus on autonomous vehicles has led to significant research and development in aspects, such as Time of Flight (ToF), single-photon avalanche diode (SPAD) pixels, and the use of AI within image sensors. The ToF and SPAD enable measurement of the distance of an object (e.g. vehicle, person, road sign, etc.) from the detector, while AI enables faster processing of the captured image for pattern/object identification within the sensor.

Higher resolution, minimum power consumption, and lower costs benefit smaller pixels in CMOS image sensors. These benefits remain the factors for the current and future advancements in the CIS technology, and are expected to boost the market growth.

Due to their many benefits, CMOS image sensors find practical applications in many industries and devices. Therefore, our next point of discussion will center on its real-world applications.

Application Areas of CMOS Image Sensors

The CMOS image sensors have many application areas, including mobile, computing, security, medicine, automobile, and defense. The incorporation of camera systems in mobile devices and the continuous increase in demand for smartphones by consumers have led to the drastic evolution of image sensors. The image sensors remain an area of constant development for providing high-quality images while reducing the size of the sensor module within smartphones. In addition, smartphones utilize image sensors for a range of security applications that enable user authentication, such as facial recognition, in-screen fingerprint recognition, iris recognition, etc.

CIS has recently found a significant application in the automotive industry based on the work in the field of autonomous vehicles that utilize an array of image sensors for implementation of Driver Monitoring Systems (DMS) and Advanced Driver Assistance Systems (ADAS).

The image sensors also have applications in drones, robots, virtual reality, augmented reality, mixed reality, and gesture-based gaming consoles. Figure 3 lists the revenue percentage by market segments of CMOS image sensors in 2020. Mobile comfortably led the race with a 68% share, followed by computing and security at 8 percent each.

Figure 3: Revenue percentage by Market Segment of CMOS Image Sensors in 2020 (Source)

Considering the wide array of applications, each with its own set of requirements from the image sensors, there is an inherent need for evolution in the technology. These application areas have led to the CMOS image sensors capturing a market size of almost $21 billion in 2020, which will continue to increase. Let us look at some of its key market trends in the next section.

Key Market Trends in CMOS Image Sensors

CMOS image sensors have many applications in smartphones, tablets, and digital single-lens reflex (DSLR) cameras. As the smartphone manufacturers focus their attention on improving the camera quality, the demand for CIS is expected to be steady in the coming years.

In addition, the inclination toward dual-camera smartphones by all major smartphone vendors due to consumer preference is expected to help sustain demand. The underlying technology used in dual-camera smartphones requires two sensors. Together, they combine the colored and monochrome images generated by the individual CMOS image sensors to create a single image. Now even twin cameras are not enough for consumers as Galaxy S22 Ultra from Samsung boasts five cameras, four rear, and one front camera.

The consumer's preference for dual and 3D cameras will significantly impact CMOS volumes. In addition, new applications, such as telescopic lens drones, virtual reality, robots, and augmented reality, are anticipated to fuel this rising market.

Consumer electronics consumption has been on the rise globally. According to the National Bureau of Statistics of China, the retail trade revenue of consumer electronics and household appliances in China stood at CNY 96.31 billion in June 2019 alone. A number of camera-equipped electronic goods are projected to drive the market for CMOS image sensors.

The Asia-Pacific region is anticipated to drive the market in the next few years. China is anticipated to lead the growth because of its burgeoning middle class and demand for consumer electronic goods. As per the data of the National Bureau of Statistics China, the country's electronic equipment, communication equipment, and computer manufacturing market increased by 13.1 in the fiscal year 2018.

Thanks to government initiatives, India is also experiencing steady growth in several smart cities projects. The increase in smart cities projects will power the demand for CMOS image sensors as the need for electronics solutions, such as surveillance, monitoring, and maintenance, will assume a central role.

The CMOS Image sensors will also find practical applications in the healthcare industry as non-invasive testing equipment for scanning purposes. The healthcare industry in India is anticipated to reach approximately USD 133 billion by 2023.

The Asia-Pacific region is also projected to contribute to more than 25 percent of the global smart homes by 2030, and the sales are expected to jump to USD 120 billion. At present, Japan is leading the race. However, the push toward adopting smart homes will accelerate the demand for CMOS image sensors in the region.

To have a better insight into the current and future state of the CMOS image sensor market, we will focus our discussion on its leading players across the globe.

Major Players in the Global CMOS Image Sensor Market

Key players, such as Sony, Samsung, OmniVision, and ST Microelectronics, continue to invest in the development of technologies that would give them an edge over the competition. The name of the leading players by market share occupied is shown in Figure 4 below:

Figure 4: Leading Players in the Global Image Sensors Market (Source)

1. Sony: It has recently developed stacked CMOS image sensor technology with 2-layer transistor pixels. The conventional CMOS image sensors' photodiodes and pixel transistors occupy the same substrate. Sony's new technology separates photodiodes and pixel transistors on different substrate layers. This new architecture approximately doubles the saturation signal level in comparison to conventional image sensors, widens the dynamic range, and reduces noise, substantially improving imaging properties.

2. Samsung: The company recently launched ISOCELL HP1 image sensors based on ChameleonCell technology. The ChameleonCell technology enables pixel-binning that uses a two-by-two, four-by-four, or complete pixel layout depending on the environment (i.e., low-lit or bright). In a low-lit environment (e.g., indoors or in the evening), the HP1 transforms into a 12.5MP image sensor by merging 16 neighboring pixels, which captures brighter and clearer photos. The sensor's 200-million pixels can capture ultra-high-definition photography on mobile devices in bright environments.

3. OmniVision: It recently announced a significant pixel technology breakthrough in developing the world's tiniest 0.56-µm pixel with high quantum efficiency (QE) performance, excellent quad phase detection (QPD) autofocus capabilities, and low power consumption. With a pixel size that is smaller than the wavelength of red light, the pixel shrink is no longer constrained by the wavelength of light. The pixel is based on OmniVision's PureCel®Plus-S stacking technology, and deep photodiode technology is applied to embed the photodiode deeper into the silicon carefully. These advanced technologies have enabled OmniVision to develop the tiniest pixel, allowing for higher resolutions in the same optical format and further enabling the image sensor to have more ISP functions, lower power consumption, and faster read-out speed.

4. SK Hynix: The Company recently unveiled a new technology called the All 4-Coupled (A4C) image sensor that provides a giant leap forward from the conventional Phase Detection Auto Focus (PDAF). The A4C uses a photodiode to convert light into electric current and color filters to absorb specific light wavelengths selectively. The A4C structure has one microlens on each group of four-color filters of the same color pixels enabling faster and more accurate focusing of a subject using the different rays of light from the subject to converge to one focal point.

A quick analysis of the assignees (as shown in Figure 5) to one of the CPC classes - H01L27/1464 specific to BSI sensor structure - shows that the key players capturing significant market share for image sensors are also some of the top patent filers in the field of BSI. Sony, Samsung, and OmniVision are leaders in developing the BSI technology while holding most of the market share for image sensors.

Figure 5: Top Patent Assignees for the BSI CMOS Image Sensors (Derwent Innovation)

Conclusion

We can say that CCDs found a thriving market for video cameras and DSC (Digital Still Cameras). However, the development in the technology and the demand for CIS for smartphones enabled CIS to also be used in video cameras and DSC that required good image quality with faster processing. It has led to the shrinking of the market for CCD image sensors and expansion in the market for CIS. The requirement for higher resolution, smaller pixel size, and higher QE led to the emergence of BSI. The BSI technology continues to evolve based on widespread applications with specific requirements.

It is crucial to stay on top of the technology curve to have a competitive edge in the business. Patenting your idea and invention is an excellent way to assert your presence in the market for new technology. Many companies with optimal resources perform the task of securing patent grants themselves. However, the task becomes challenging with multiple players attempting to receive a patent grant for the same invention. That is why the services of a third party with proven capabilities are valuable.

Sagacious IP is a global IP research and consulting company. Since its inception, its focus has been to leverage its profound capabilities to deliver world-class IP solutions for its clients. Its unique approach has garnered appreciation from different quarters of the industry. In addition, through its technology scouting services, it assists organizations in spotting promising trends in the CMOS image sensor domain. Click here to know more about this service.

- Kushagra Magoon (ICT Licensing) and the Editorial Team

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CMOS Image Sensors: Evolution, Patent Trends, Leading Players & More - Sagacious IP

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Image sensors are semiconductor devices used to capture the world with a touch of our fingers. Thanks to the evolution in semiconductor technology, the size of image sensors has also reduced to the tip of our fingers. It is estimated that over 1.7 trillion images will be taken in 2022.

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Patent Monetization: A Foolproof Approach to Decide Between Licensing and Selling Patents

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Patent Monetization: A Foolproof Approach to Decide Between Licensing and Selling Patents

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Patent monetization is a frequent technique among organisations with a large portfolio of patents. The approaches for monetization may range from one to the other. A patent owner may, for example, opt to develop a patent into a product, enforce it against infringers, or lease or sell it. We discuss the aspects to consider when deciding between monetization techniques such as licencing and selling patents in this article. Let's start with an overview of patent monetization and the strategies used.

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Patent monetization is a common practice for companies that possess a sizable portfolio. The methods used for conducting monetization may differ for each one. For instance, a patent owner may decide to turn a patent into a product, enforce it against infringers, or license/sell it. In this article, we talk about the factors one should consider while choosing between monetization methods such as licensing and selling patents. Let us first understand the role of patent monetization and the methods involved.

Why is Patent Monetization Important?

Companies often rethink and readjust their business strategies to continue generating revenue and prevent losses. This is where patent monetization plays a crucial role as it opens up new streams of revenue inflow in the company. Oftentimes, businesses face difficulty in choosing the right monetization strategy without professional assistance. Strategic guidance by patent practitioners helps them to select the right method as per their business objectives.

There are two widely used patent monetization methods: patent selling and patent licensing. Patent selling involves the transfer of patent ownership to a person or a company for a mutually agreed amount that is received generally as a lump sum. In patent licensing, the patent owner retains the patent right. However, the owner may give exclusive or non-exclusive license in return for royalty payment which is directly related to the sales of the product through licensing.

Factors to be Considered Before Opting for Patent Sales or Licensing

1. How the money rolls in - royalties vs. lump sum

Depending on its needs, a company may choose between a one-time lump sum payment and continuing payments as royalties. If a company is in debt, then it may opt for a lump sum amount. This implies that it can choose to sell. On the other hand, if a company can bear the litigation cost, it might opt for licensing. Read this article to know how one can be benefitted in patent licensing.

2. Core vs. non-core patents

A company's decision to opt for licensing or sales also depends on the type of patent it wants to monetize - core and non-core. In the case of core patents, it is better to go for patent licensing rather than patent sales.

Considering the factors discussed above, Sagacious IP has developed a proprietary solution known as the F3 analysis model. It assists companies in deciding which patents to license and which ones to sell. In this model, patents in the portfolio are categorized into three subcategories: fundamental patents, future patents and fringe patents. Read our article on this to know more.

According to Sagacious IP's experience and expertise, one can license both fundamental as well as fringe patents. Licensing fringe patents also prevents counter assertion as one asserts his/her patents on companies that are not direct competitors. Furthermore, the patent owner can even sell his/her fringe patents as it would not result in losing the competitive edge. Figure 1 below encapsulates how patent owners can monetize their patents depending on the category.

Figure 1: Monetization of Patents as per Category

How to Identify Fundamental Patents?

We have observed that big companies categorize their patents. Therefore, by looking at their technology tags, which are related to their business units (BU), one can identify which patents are fundamental. When technology tags are not available, fundamental patents can be identified by CPC codes related to the core businesses or patents which have related features. For instance, let's assume a company in the mobile domain has a patent related to authentication. Though authentication patent is relevant in multiple fields, it is particularly relevant to the mobile domain. Therefore, this patent is fundamental for the company.

How to Identify Fringe Patents?

Let's assume a company has a fringe domain (non-core domain) in mind. In this case, it can use search strings to mine patents from the portfolio that are relevant to that domain. Furthermore, it can use CPC analysis to analyze CPC codes of the patent portfolio, analyze tags of the portfolio, and perform citation analysis.

CPC Methodology

CPC methodology is used to quickly identify non-core patents from a large patent portfolio. It saves time since one can simply filter out patents with core CPC to obtain non-core patents and then bucket relevant patents to specific non-core markets/domains.

Despite analyzing fundamental and fringe patents using F3 analysis or CPC code analysis, the ultimate decision of licensing or selling the patent depends on macro analysis. It offers insight into the actual number of potential assets in the portfolio. To do so, one may perform a detailed analysis for each patent, which is very time-consuming. However, Sagacious IP's approach wherein a detailed analysis is performed on an extremely small subset of patents is both time and cost-effective. Figure 2 illustrates an example of using this approach:

Figure 2: How to Use CPC Methodology

Impact Story

We applied the above-mentioned approach to one of our fortune 100 clients' portfolio, who initially wanted to enter the payment domain via licensing routes but changed its mind after Sagacious IP's macro analysis. Read this case study to know more.

How to Assess Value of a Patent Package?

While choosing between licensing or sale of a patent package, it is important to understand the factors involved in determining the asking price of a patent package. The term "asking price" implies that a patent portfolio might be sold at a higher or lower price than what's actually quoted. Multiple factors are involved in determining the asking price of a patent package such as the average asking price for concerned portfolio technology, size of the package (smaller packages are preferred as they generate more money), alice-affected technology patents in the portfolio, etc.

Conclusion

Patent monetization is a common practice for revenue generation followed by companies that possess sizable portfolios. Licensing and selling patents are the two popular monetization methods that can be used based on specific requirements and objectives. Sagacious IP's F3 analysis model can help businesses make these strategic decisions and derive quality results.

Sagacious IP's patent licensing and monetization service provides end-to-end solutions for ranking the patent portfolio and finding potential licensees. The cost-effective solutions offered by us enable companies to transform their IP into a revenue generation unit. Click here to know more about the service and click here to watch a webinar on this subject.

-Aman Goyal (ICT Licensing) and the Editorial Team

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Patent Monetization: A Foolproof Approach to Decide Between Licensing and Selling Patents - Sagacious IP

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Patent monetization is a common practice for companies that possess a sizable portfolio. The methods used for conducting monetization may differ for each one. For instance, a patent owner may decide to turn a patent into a product, enforce it against infringers, or license/sell it.

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Trademark Monitoring: A Vital Step towards Tracking Competitors to Protect your Brand

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Trademark Monitoring: A Vital Step towards Tracking Competitors to Protect your Brand

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Building a brand name and identity from the ground up is no easy feat. Businesses can often end up losing their reputation if their brand gets infringed by any means. Therefore, it gets critical for businesses to protect their brand against infringement by registering their trademark to avoid such incidence. However, filing the application and securing the registration is merely the beginning. It is crucial for every company to keep an eye out for other businesses who might be using these trademarks without proper authorization. This is when trademark monitoring is advisable.

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Building a brand name and identity from the ground up is no easy feat. Businesses can often end up losing their reputation if their brand gets infringed by any means. Therefore, it gets critical for businesses to protect their brand against infringement by registering their trademark to avoid such incidence. However, filing the application and securing the registration is merely the beginning. It is crucial for every company to keep an eye out for other businesses who might be using these trademarks without proper authorization. This is when trademark monitoring is advisable.

This article discusses the aspects of trademark monitoring - such as the need to monitor a trademark, the drawbacks of not monitoring your trademark, and useful tools for this purpose. So let us begin by first understanding what it means.

What is Trademark Monitoring?

It is the process of searching social media, websites, and online and offline marketplaces for potential infringers using identical or similar trademarks - such as names, phrases, packaging, logos, and more. It is a proactive measure that preserves the brand image and saves possibly hundreds and thousands of dollars in lost revenue and trademark infringement suits. Trademark monitoring allows businesses to watch their own and competitors' trademarks to identify threats and opportunities at an early stage. Furthermore, it allows companies to identify new entrants in the business area.

Now that you know what trademark monitoring is, let us delve into the need to monitor your trademark.

Why Monitor Your Trademark?

The importance of trademark monitoring has been on the rise with the growing numbers of brands in the offline and online markets. Early detection of infringement cases is a pre-cursor to enforcing your trademark rights effectively. Identification of infringing brands in the primary stage also helps to build up evidence of misuse while initiating legal proceedings against them. The fear of possible trademark infringement proceedings acts as a deterrent for mischievous players in the market who are looking to ride on the goodwill of your carefully cultivated brands. A well-defined trademark monitoring plan can yield many positive outcomes. The most important reasons for trademark monitoring are shown in Figure 1 below:

Figure 1: Reasons To Monitor Your Trademark

1. Prevent Trademark Dilution: The distinctiveness of a brand's trademark is severely compromised with their unauthorized or indirect use. Trademark dilution refers to unsanctioned use of a trademark that impacts the novelty of a brand. If not monitored, rampant dilution can occur in the market in one or more forms. Trademark monitoring keeps the dilution activity in check and discourages imitation. Besides, it also puts a brake on cheaper and low-quality copies of the brand's products in the market. An example of trademark dilution is shown in Figure 2 below:

Figure 2: Trademark Dilution through Similar Brand Logo

2. Avoid Trademark Infringement: Trademark monitoring explores the online and offline world for infringement and immediately alerts the business of a possible threat. Trademark infringement is the use of the exclusive trademarks of a brand without the owner's approval, authorization, or license. Moreover, trademark infringement has become increasingly rampant during this era of globalized economies. A trademark monitoring service adds extra efficiency to infringement search with the support of the latest tools and technologies discussed later in the article. Early identification of infringement cases and taking corrective measures reduces the number of infringement cases in the future.

People often confuse trademark dilution and infringement and use them interchangeably. However, there is a subtle difference between the two. While infringement entails a degree of customer confusion, dilution can occur with customers fully aware of the imitation taking place.

3. Discourage Impersonators, Imitators, and Knock-offs: Grabbing customer attention is a formidable challenge in a world full of new and emerging brands. Careful brand cultivation is one of the effective ways to develop brand loyalty. Once the brand equity is built, trademark monitoring helps in keeping the impersonators, imitators, and knock-offs at bay. You can spot the potential imitators through the monitoring activity and take immediate remedial measures before too much damage is inflicted.

4. Stay Ahead of Competitors: Trademark monitoring also offer insights into your competitors across the globe. While monitoring, one might come across new developments that may prove decisive in attracting the customer's attention to your brand. Since a trademark is a crucial asset, it is vital to explore the competitors' progress in the trademark domain.

5. Ensure Present and Future Damage Control: There are instances where a trademark may be of low value or at the bottom of the popularity ladder. However, that does not guarantee that it will not rise shortly. One of the purposes of trademark monitoring is to identify such low-lying trademarks with massive potential and tweak your brand strategy accordingly to thwart possible present and future damages.

6. Counter against Doctrine of Laches: Doctrine of laches is usually asserted as an affirmative defence by a defendant in a civil dispute. A party is barred from raising a claim due to unreasonable delay in pursuing the claim. With trademark monitoring, contentious brands and trademarks are identified at the preliminary stage, thereby building a solid argument against the doctrine of laches.

Despite its many advantages, you might still be apprehensive about continuous trademark monitoring. That's why it is crucial to understand what happens if you are short of any decisive trademark monitoring plan.

Drawbacks of Not Having a Trademark Monitoring Plan

There are several disadvantages to not monitoring your trademark. The three crucial ones are shown in Figure 3 below:

Figure 3: Three Common Drawbacks of not having a Trademark Monitoring Plan

1. Loss of Trademark Rights: If you do not constantly monitor your trademark, its use may become rampant in the market to the extent that it no longer acts as a brand identifier. The use of your trademark by third parties for a long time may weaken your claim, and you may suffer from the loss of trademark rights. The situation becomes even more critical if the infringer is a competitor with similar products and services like yours.

2. Erosion of Brand Value: Trademark is an intangible asset, and commands significant value in the market. Building a brand takes years of diligent planning, and trademark is an essential part of the branding strategy. Some of the leading brands across the globe are valued at billions of dollars. For instance, three of the biggest brands in the world, Apple, Amazon, and Google, are valued at 263.38, 254.19, and 191.22 billion US dollars, respectively. Unrestricted and unchecked use of a trademark severely impacts the brand value. Customers limit their interaction with a brand that does not appreciate the novelty. Apart from customers, other stakeholders, such as creditors, suppliers, etc., also hesitate to enter into a long-term agreement with the business. The loss of brand credibility also causes revenue loss for the organization.

3. Dissipation of Brand's Uniqueness: Creating a remarkable product or service is not enough in itself. To leave an indelible mark on the target segment, one needs to create the right buzz around the brand. That is why marketers spend a considerable amount of resources building a narrative. Once you have created a brand, it is equally important to protect it through trademark monitoring. A complacent attitude can lead to imitators riding on your success, dissipating the brand uniqueness associated with the product or service.

Once you have acquired a fair understanding of the consequences of lack of trademark monitoring, you might be curious about the tools typically used for it. Let us have a look at these.

Options to Pursue Trademark Monitoring

Once you have decided to pursue trademark monitoring seriously, there are two options. The first choice is to avail the services of an eminent lawyer, a law firm or an IP research company to monitor the trademark on your behalf. They can offer immediate assistance in tracking down the infringers and suggest corrective steps. If you are just starting your brand journey, they can also counsel you to ensure that you are not infringing upon the trademarks of others.

The second choice for trademark monitoring is to invest in professional software or tools and carry it out yourself. There are free as well as paid tools available for comprehensive trademark monitoring. Some of these are discussed below:

Google AdWords and Keyword Planner: The two tools by Google are great starting points to figure out potential infringement of your trademarks on the web by looking for specific terminology. Google AdWords helps discover if any individual or organization is using your trademark to advertise on the search engine. Keyword Planner shares results drawn whenever someone conducts an online search using your trademark. This can help you identify businesses looking to capitalize on a brand's online search volume and web traffic.

Google Search and Alerts: Although a common tool, Google Search can produce remarkable results when it comes to trademark monitoring. Users can also use Google Alerts to receive email notifications whenever fresh content that has an uncanny resemblance with the trademark under monitoring appears online.

Trademark Electronic Search System (TESS): This search system uses robotized operations to spot trademark infringement even before it begins. The search engine finds out trademarks under suspicion based on various variables. TESS is maintained by the United States Patent and Trademark Office (USPTO) to help individuals search for registered trademarks and applications.

Conclusion

To conclude, regularly updating the information gathered via trademark monitoring helps businesses develop their IP strategy, identify threats from competitors, and foresee opportunities. Also, since trademark monitoring is a continuous process, its costs must be analyzed using an appropriate budgeting technique as it helps an organization understand the trade-offs between indulging in trademark monitoring and cost-saving. Failing to monitor your trademark can have serious repercussions, such as trademark dilution, infringement, and more. While there are tools and software aiding businesses to carry out basic trademark monitoring themselves, it is advisable to avail the services of an adept law firm or IP research company that specializes in the domain.

Sagacious IP is one of the foremost research and consulting IP companies with a team of more than 300 techno-legal professionals committed to delivering high-quality services. It has global operations with an enviable reputation. In addition, it offers various hyper-targeted trademark monitoring services to monitor competitors' IP and keep a watch on specific technical domains. Our team of highly qualified trademark practitioners is committed to offering the most reliable trademark monitoring solutions to businesses. We not only monitor your mark but also analyze it thoroughly to ensure optimum quality of the project report.

Mayur Agrawal (Trademark) and the Editorial Team

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Trademark Monitoring: A Vital Step towards Tracking Competitors to Protect your Brand - Sagacious IP

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Building a brand name and identity from the ground up is no easy feat. Businesses can often end up losing their reputation if their brand gets infringed by any means. Therefore, it gets critical for businesses to protect their brand against infringement by registering their trademark to avoid such incidence.

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Patent Prosecution – Strategizing Office Actions For A Favorable Outcome

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Patent Prosecution – Strategizing Office Actions For A Favorable Outcome

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The patent prosecution process describes the interaction between the patent seekers with the patent office to attain a grant for their patent application. It involves drafting and filing the patent application and working with the patent office to gain patent protection over the invention. Office Actions are a crucial part of this process as it is the response of a patent examiner to a patent application after its examination. The response consists of references to the prior art, i.e., evidence of invention already known and why the applicant’s claims have been allowed or rejected. Read more about Office Actions now.

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The patent prosecution process describes the interaction between the patent seekers with the patent office to attain a grant for their patent application. It involves drafting and filing the patent application and working with the patent office to gain patent protection over the invention. Office Actions are a crucial part of this process as it is the response of a patent examiner to a patent application after its examination. The response consists of references to the prior art, i.e., evidence of invention already known and why the applicant's claims have been allowed or rejected.

Our latest case study enumerates the challenges faced by one of our US-based clients in drafting responses to their office actions and the solutions we offered. The client had filed multiple applications that were technologically complex and were related to each other. The complexity of the underlying technology on which the patent applications were based was prolonging the process and leading to narrowing down of the claims. It could have proved counter-productive, but we offered a strategized solution to overcome the situation.

Understanding Patent Terminologies

Before we begin with the case in question, it is important to familiarize ourselves with a few patent terminologies:

Inventor: A person who has contributed to the invention claimed in a patent application. There can be multiple inventors for a single invention. Moreover, they can be an independent individual or an engineer/scientist working in an organization. However, they may or may not have any ownership interest in the patent.

Patent Assignee: Organization(s) or individual(s) that have an ownership interest in the legal rights of a patent. A patent may or may not have an assignee, and it can also be changed at a later date.

Applicant: The organization or individual that files the patent application is called the "applicant." This could be the original inventor, or it could be the assignee.

Holder: Patent holder and patent assignee are the same.

Manual of Patent Examining Procedure (MPEP): It is a document published by the United States Patent and Trademark Office (USPTO) that describes all the laws and regulations to be followed while examining a patent.

Now we move further to understand the common challenges faced by patent seekers while drafting an office action response.

Challenges in Drafting Office Action Responses

Drafting Office Action responses for various patent applications of a common inventor(s) or common assignee(s) can be challenging. There is often a thin line distinguishing the novel/inventive steps of such patent applications. Additionally, the technology of these patent applications starts to saturate with time. As a result, the prosecution process remains open for an extended period. Furthermore, the patent application attains allowance with multiple office actions leading to narrower claims. Both of these scenarios are not beneficial for the patent holders. The reason being that the patent holders are left with little time to monetize their claims as the validity period of a patent is capped at twenty years and includes the duration of prosecution. In the second part, the narrowed scope of claims does not allow the patent holders to cover different products or even the targeted products.

Therefore, the objective of the patent applicants is to get an allowance in the early stages of the prosecution with the broadest possible claims. In addition, it helps maximize the monetization of the patents by covering more products under the claims for the most prolonged period possible. Such objectives are often challenging to meet.

Earliest allowance and broadest claims

Our client was facing similar challenges, and many of their patent applications were pending prosecution. We were given a set of patent applications to draft their office action responses. An effective drafting practice of the office action responses requires understanding the client's objectives. Towards this end, we employed a strategic approach that applies to every office action response. It has two steps -

1. Analyzing the office action and prior-art references

2. Drafting the office action response as per the analysis

For the first step, the entire subject application is thoroughly analyzed. The solution offered by the invention is determined from a detailed description of the application. Moreover, we check the validity of the prior-art references under the filing date criteria, common inventors, and common assignees. The standard MPEPs are utilized to navigate the rejections if the references are invalid. Otherwise, the claim set of the subject application is analyzed to make sure that the solution part is mentioned in it. The solution part indicates the patent application's novel/inventive aspect, so we give importance to analyzing this aspect with accuracy.

In the second step, the rejections stated in the office action and the examiner's interpretations are analyzed in view of the prior-art references, to determine whether the invention was disclosed earlier or not. In the latter case, the examiner's interpretation is challenged by presenting the arguments in the office action response.

Or else, the subject patent application claims are amended so that the prior-art references are not disclosing the amended claims. In addition to this, we need to make sure that the amendments contribute to the invention's solution part.

Thus, in the first stage, we develop a strategy to overcome the rejections of the office action. Then, in the second part, the office action response is drafted, wherein the claims are amended as per the strategy, and the arguments are presented.

Moreover, to draft a fool-proof office action response, the following steps are executed:

The subject application is thoroughly analyzed to amend the claims, and the generic features are kept broad.

The features to be argued are recited in the broadest possible manner so that the prior-art references are not rendering the invention obvious.

The arguments included are drafted to make them crisp and clear, stating the actual difference between the claimed invention and the prior-art references.

The office action response is thoroughly checked to fix antecedent errors, spelling/formatting issues, missing elements, and potential 112 issues.

Lastly, the office action response draft is filed after a thorough quality check.

Statistics

We received forty-two office actions to draft office action responses, out of which the client abandoned two applications while fourteen office actions were allowed. Another 19 cases have been filed, and their response is pending. In addition, seven responses are to be filed. See Graph 1 below.

Graph 1: Showcasing the Legal Status Count of the client's Patent Applications

From the above statistics, it can be construed that our strategy has successfully worked for the client, specifically the 14 allowances that the client appreciated. Further, in the cases where responses were entered, the client spent minimal time in analysis, and their only effort expended was filing formalities undertaken with the patent office.

Tested strategy for office actions

Sagacious IP has filed several office action responses by following the above-described approach. As a result, we attained notice of allowance on almost all the patent applications by the second round of prosecution. Accordingly, we improved the client's patent application allowance rate with the broadest possible claim sets to target different products for monetization. To know more about our office action response services, please click here.

- Neha Malia (ICT Drafting) and the Editorial Team

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Patent Prosecution - Strategizing Office Actions For A Favorable Outcome - Sagacious IP

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The patent prosecution process describes the interaction between the patent seekers with the patent office to attain a grant for their patent application. It involves drafting and filing the patent application and working with the patent office to gain patent protection over the invention.

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How 3D Modelling Can Enhance Your Patent Drawings

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How 3D Modelling Can Enhance Your Patent Drawings

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Visual representation has the ability to effectively narrate a complex concept. Which is why drawings and illustrations are used to describe inventions while drafting patent applications. With the technological advancement, several computer-aided tools are being used to capture innovation in 3-dimension (3D) on a 2-Dimensional (2D) sheet. Read more about Patent Drawings.

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Visual representation has the ability to effectively narrate a complex concept. Which is why drawings and illustrations are used to describe inventions while drafting patent applications. With the technological advancement, several computer-aided tools are being used to capture innovation in 3-dimension (3D) on a 2-Dimensional (2D) sheet.

This article is an attempt to highlight how 3D modelling helps to improve the scope of patent drawings, the problems that one may encounter when 3D modelling is not used, and the relevant solutions to tackle such issues. Let us begin by understanding the role of patent drawings and why they are used to describe inventions.

Patent Drawings

What is 3D Modelling

Problems Encountered Without 3D Modelling

Solutions with 3D Modelling

Case Study

Solution

Outcome and Services

Conclusion

Patent Drawings

They are a group of illustrations showing the detailed features of an invention and are submitted during the patent application process. These drawings represent the interactive and unique features of an invention. The purpose of patent drawings is to provide the examiner with enough information to understand precisely how an invention works. However, certain special rules and regulations apply to the drawings submitted with a patent application that must be adhered to.

Before proceeding to the problems that occur without the use of 3D modelling in patent drawings, it is crucial to understand its definition.

What is 3D Modelling

The term “3D modelling” is the process of creating a three-dimensional representation of an object using specialized software. This representation, called a 3D model, can convey an object’s size, shape, and texture. You can produce 3D models to describe product specifics as well as designs that haven’t yet been produced in real life.

You will better understand the significance of 3D modelling after getting familiar with the issues faced in the absence of 3D modelling.

Problems Encountered Without 3D Modelling

Without the use of a 3D modelling tool, patent drawings might not be able to represent complex innovations in the most descriptive manner. The problems that occur without 3D modelling are shown in Figure 1 below:

Figure 1: Problems Encountered Without 3D Modelling

1. More Time for Drawing Preparation: In theabsence of 3D modelling, the drawings take more time to prepare. That is because inventors need to represent all the sections and parts of drawings with a limited capacity of 2D graphics.

2. Extra Time for Understanding an Invention: A drawing representation with 3D modelling, makes it easy for an examiner or a general observer to grasp the finer details of the invention. The same cannot be said about a 2D representation as it might not be able to represent the 3D concept of the drawing in a 2D perspective. Consequently, it may take more time, even for the most experienced examiner and observer to fathom the details of the invention.

3. More Time to Establish Consistency between Each View: Establishing consistency and relationship between symmetric views becomes easy with 3D modelling. For example, while explaining the invention in 3D perspective, drawings can be represented in a combination of top and bottom view, left and right view, front and back view, etc. This results in more clarity for the examiner and observer from a 360° perspective. However, in the absence of 3D modelling, the consistency between different views is hard to establish and comprehend.

4. Errors in Representing Same Parts at Different Angle in Different Figures: The tools and features available in 3D modelling make it easier to reproduce the same parts at different angles in different figures. However, replicating the same task is relatively more complicated in the absence of 3D modelling, thereby creating confusion in the observer’s mind while going through the drawing representation at different angles.

5. More Time to Prepare Exploded and Sectional View: Exploded diagrams explain how different components of a product can be assembled with dotted lines representing the point of connection. On the other hand, sectional views are used to represent interior construction of a part that is otherwise challenging to describe with hidden lines in exterior view. Both the exploded view and sectional view are critical to representing an invention’s uniqueness. Hence, they are best represented by 3D modelling. Without the sophistication of 3D modelling, it becomes difficult to capture the intricacies of the invention without a suitable representation of the exploded and sectional view.

6. Greater probability of Office Action over Consistency and Quality: Without 3D modelling, reproducing the desired representation of the product’s part/s becomes a stretching task. Moreover, it is also tough to capture the uniqueness of the invention. Any deviation from the actual product representation (that inventor wishes to show) creates ambiguity in the examiner’s and observer’s mind, leading to office action over quality and consistency.

Identifying the problems without 3D modelling is the right step before strategizing over its solutions. Therefore, let us discuss the solutions offered by 3D modelling in the next section.

Solutions with 3D Modelling

The drawings take minimum time to prepare with 3D models.

One can easily drag the required views of the invention from the 3D models.

The inventions are better represented.

One can describe the exact part of the invention without any missing lines.

Maintains consistency between each view.

Similar parts can be easily made from different angles in different figures without disturbing the uniformity.

One can easily prepare exploded and sectional views at any required angle.

Merely knowing solutions with 3D modelling will not produce the desired result; it is crucial to know its practical implementation too. In the next section, we will discuss how Sagacious IP helped a client with its 3D modelling patent drawing service.

Case Study

A US-based inventor working in the machine tool domain was interested in filing their patent. The client wanted to file a design and a utility patent application for their new product in specific countries to move forward with the filing process. However, they had only rough diagrams and ideas of their invention. Therefore, the client was interested to know all the requirements for filing their application without any rejections.

Solution

Firstly, Sagacious IP’s Illustration team narrated the significance of design and utility patent application. Next, it suggested the client to write a patent draft or add patent drawings of their invention in the patent application while filing the patent.

In the process, the team also outlined the importance of drawings and suggested preparing a 3D model of the invention for a better understanding.

Finally, we explained how design and utility patent drawings with the use of 3D modelling for the client’s invention would strike the right impression with the examiner.

Outcome and Services

After understanding patent drawings’ importance, the client requested us to prepare 3D modelling of their invention. Our patent illustrators suggested our illustration services that take care of the drawings of design patent applications, utility patent applications, and preparing 3D models. Our familiarity with the patent guidelines of all countries and our proven expertise in 3D software such as Solidworks, Catia, Creo, etc., helped in providing the required support to this client. Finally, we shared our patent drafting support service with the client from where they get a draft of their invention.

Conclusion

From the above article, we can conclude that with the help of 3D modelling, we can effortlessly prepare neat and crisp patent drawings at the required angle. In addition, the desired result can be obtained with reasonably minimum effort and time. It also helps to maintain consistency and the quality of the drawings. Finally, it reduces the chances of receiving an office action by the patent office examiner. Therefore, although an in-house team can prepare patent drawing/illustrations with 3D modelling, it is better to outsource the task to a reliable third-party service provider who is an expert in this field.

Sagacious IP’s patent drawing/illustration services offer drawings, including 3D modelling that are drafted keeping in mind the patent drawing rules of the concerned PTO. Click here to know more about this service.

Himanshu Panwar (Illustration) and the Editorial Team

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How 3D Modelling Can Enhance Your Patent Drawings - Sagacious IP

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empt to highlight how 3D modelling helps to improve the scope of patent drawings, the problems that one may encounter

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Software & Machine Learning Patents – Key Differences & Best Practices for Patent Drafting

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Software & Machine Learning Patents – Key Differences & Best Practices for Patent Drafting

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Artificial Intelligence (AI) and related concepts like Machine Learning (ML) and Fuzzy Logic have become ingrained in our daily lives. Advanced machine learning algorithms are transforming how we travel, shop, and communicate with one another, from how Google Maps is utilised for traffic speed prediction to how Dynamic Pricing supports ride-sharing applications like Uber and Lyft and how the Autopilot function on flights controls the aircraft.

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Artificial Intelligence (AI) and its techniques such as Machine Learning (ML) and Fuzzy Logic have become an intrinsic part of our daily lives. Right from how Google Maps are being used for traffic speed prediction, the way Dynamic Pricing supports ride-sharing apps such as Uber and Lyft, and how Autopilot feature on flights controls the aircraft - advanced machine learning algorithms are thus changing how we travel, shop, and interact with each other.

We can gauge the popularity of machine learning from the fact that 150,637 patent families concerned with AI techniques have been published until 2018. This makes machine learning the dominant technique (89% of total AI patents) that has been witnessing a rapid rise over the years. For inventors seeking a patent in this domain, it is imperative to understand the difference between software and machine learning at a fundamental level.

This article will discuss the main differences in filing a patent for software and machine learning and the challenges faced by the applicants. But first, let us understand the difference between software and machine learning, and then analyze the difference in patent filings and grants.

Fundamental difference between Software and Machine Learning

The primary aim of both software and machine learning is quite similar. Both are developed to solve complex human problems by better understanding the problem area. While software helps automate a task by writing a set of rules that a computer follows, machine learning adds extra depth and automates the task of writing the rules itself. Upon developing a software, human intelligence is applied to create a solution and frame it as an exact program for a computer to execute. However, in machine learning, data scientists usually collect the input data and the probable output values. Next, the computer finds a program that calculates an output for each input value. The concept is explained in Figure 1 below:

Figure 1: Difference Between Software Program and Machine Learning (Source)

Now that we understand the fundamental difference between traditional programming and machine learning, let us know what software patents are and the challenges in proving patentability for software patents.

Software Patent and the Difficulty in Proving its Patentability

A software patent is granted for those patents that improve computer performance with the help of a new computer application. However, there is no legal or specific definition for a software patent. Moreover, different countries across the globe place dissimilar restrictions on patenting software innovations. For example, U.S. patent law does not allow patents with abstract ideas. This restriction is used to deny software patents. For receiving the software patent grant, the patentability of the subject matter is critical. The challenges in proving the patentability are discussed below.

For example, a software program can employ complex systems to match or surpass a physical process or the machine and thus become challenging to classify the software program as a new invention, algorithm, or design. Besides, not all inventions and innovations are granted patent rights. For example, scientific theorems, mathematic algorithms, and techniques are not patentable.

Having understood the basics of software patents and the difficulty in proving its patentability, let us discuss ways to patent a software program in India.

How to Patent a Software program in India

Compared to other technology domains, obtaining a patent for a software program in India is a challenging task. To successfully obtain such a patent, the applicant must draft the application, highlighting the features that demonstrate technical effect and advancement in claims. Moreover, such claims must be properly enabled in the specification of software patent applications. Such an approach would boost the chance of receiving a patent grant.

The main requirement for patentability of the software includes inventive steps, novelty, industrial application, and overcoming section 3(k) that discloses algorithm and computer program per se, as not patentable subject matter. Applications must be filed, keeping the points in section 3(k) at the forefront.

Now that we understand how to patent a software product in India, let us discuss ways to draft claims and specifications in software patents.

How to Draft Claims and Specifications in Software Patents

The five basic steps for drafting claims and specifications in software patents are listed below:

1. Treat the innovation as a problem-solution concept

2. Prepare a neat and labeled flow chart diagram to cover all the features and functions disclosed by the innovation

3. Draw system architecture or block diagram representing fundamental hardware elements connected through the network

4. Allow proper synchronization between the block diagrams and flow charts

5. Draft patent claims (apparatus or systems) illustrating all block diagrams and method claim elements

The steps to draft claims and specifications in software patents (as described above) prove to be useful while obtaining AI/ML patents.

AI/ML Patents

According to U.S. patent law, an ML algorithm cannot be patented directly. However, the law does allow a series of steps in an algorithm to be patented. The underlying logic is that algorithm is seen as a series of mathematical steps and procedures under the U.S. patent law. Therefore, while software can be patented because it is regarded as a finished product, machine learning algorithms are considered abstract.

Critical Issues in Patent Subject Matter Eligibility of AI/ML Patents

AI/ML subject matter becomes patent-eligible only when it achieves a technical purpose and, at minimum, offers a technical effect that does more than performing the solution more quickly or efficiently. The general application of AI/ML to solve a problem predictably is not eligible for patentability. However, when the general application is supplemented with the technical contribution, the AI/ML patent applications are considered eligible for patentability. For example, using a neural network (an ML algorithm) in a heart-monitoring apparatus to identify irregular heartbeat qualifies as a technical contribution.

Now that we understand AI/ML patents and critical issues in patent subject matter eligibility of AI/ML patents let us discuss creative ways to draft claim specifications in software patents.

How to Draft Claims and Specifications for AI/ML Patents

The focus of the claim drafting must be in a direction that yields positive results. The guidelines for drafting an effective claim and specifications for AI/ML patents are listed below:

Focus on the structure of the ML model in the claim

Identify if the invention lies in the training phase or execution phase or both

Claim the training process

Emphasize the input data preparation

Cover the input mapping to the model

Claim the post-processing and interpret the output data

Draft different claim sets for the training phase and the execution phase

Avoid the claim of conventionally applying an existing model to an existing data

Conclusion

We can conclude from the above-discussed points that the process of obtaining software and ML patent are pretty dissimilar. The claim drafting is entirely different when filing a patent for software and ML. Apart from the fundamental differences between the two, patent subject matter eligibility also has a divergence. Although ML patents can be filed on their own by an organization, it is recommended to avail services of reliable IP experts.

Sagacious IP specializes in delivering next-generation IP solutions leveraging the benefits of emerging technologies such as AI and machine learning. It offers solutions to its clients through four delivery centers and offices in six countries. So far, the company has delivered more than 25,000 projects globally, proving its mettle in the world of intellectual property. In addition, through its Patent Filing & Prosecution Service, individuals and businesses can secure inventions by leveraging a solid patent draft prepared by a skilled patent professional. It ensures your invention is protected most swiftly and cost-effectively. Click here to know more.

Samaksh Verma (Patent Drafting Filing & Prosecution) and the Editorial Team.

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Software & Machine Learning Patents - Key Differences & Best Practices for Patent Drafting - Sagacious IP

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Artificial Intelligence (AI) and its techniques such as Machine Learning (ML) and Fuzzy Logic have become an intrinsic part of our daily lives. Right from how Google Maps are being used for traffic speed prediction, the way Dynamic Pricing supports ride-sharing apps such as Uber and Lyft, and how Autopilot feature on flights controls the aircraft - advanced machine learning algorithms are thus changing how we travel, shop, and interact with each other.

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Setting The Right Objective For Trademark Search

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Setting The Right Objective For Trademark Search

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As a unique identifier of identification, a trademark is an important marketing tool for positioning your brand. As a result, businesses are ready to invest significant time, money, and resources to perfect a trademark for registration. Do you realise, however, that your trademark for registration may not be legally available? As a result, conducting a trademark search is recommended to verify the correct trademark selection and availability. Read more about trademark searching here: https://sagaciousresearch.com/blog/setting-the-right-objective-for-trademark-search/

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Trademark is a crucial marketing tool to position your brand uniquely as it serves as a unique marker of identity. Hence, organizations are willing to spend considerable amount of time, money, and resources to finalize a trademark for registration. However, do you know that your finalized trademark for registration might not be legally available? Therefore, it is advisable to conduct a trademark search to ensure the correct selection of trademark and its availability.

This article will discuss the objective behind trademark search, its advantages, search report, and how to conduct a trademark search.

Different Objectives for Trademark Search

Trademark search provides a quick and straightforward way to explore the global availability of your chosen brand name in your domain of business. Most of the industry experts recommend the search activity before the use of a new trademark. However, if the search is not performed, the original owner of the trademark can force the mark to be discontinued. The damage could be even more if the trademark owner enforces his right after the introduction of your company's product.

Before conducting any trademark search, it is vital to know the objectives for your search. There are essentially two objectives:

1. To check whether using a trademark will be infringing upon anyone else's rights

2. To check whether a trademark can be registered once you file an application

Let us understand these objectives in details:

1. Infringement Searching

Applicants need to search official trademark registers for both current and pending trademark registrations to avoid infringing on anyone else's rights. Moreover, they should also conduct market-based common law searches for competitors using similar but unregistered trademarks.

A precise infringement search results mean that the probability of using a competitor's similar mark is rare. A clear result is also great news from a legal perspective, as you won't be exposed to a potential lawsuit in the future.

2. Registrability Search

To check whether your trademark is registrable, you must search for deceptively similar or substantially identical trademarks in existence. For this reason, you must make similar inquiries as required for infringement search. Besides, you need to identify if your trademark contains:

Geographical name

Surname

Illegal/inappropriate meaning or connotations

Deceptive or confusing elements

Known meaning related to quality, kind, quantity, value or intended purpose of the goods or services.

After understanding the different objectives for trademark searching, it is crucial to know the trademark registration process.

Process of Trademark Registration

In most cases, trademark searching is a vital first step in trademark registration or a brand launch strategy. The 'searching' activity ensures no infringement of any third-party trademark rights. Once the searching activity generates a positive result for the selected words or terms, filing for trademark registration can be initiated. The process of trademark registration is shown in Figure 1.

Figure 1: Process of Trademark Registration

1. File Trademark Registration: The trademark application can be filed either online or on paper. Applicants can submit the duly filled application either online or in writing to the trademark office. The application contains the trademark for which the protection is sought. The form also contains the class of products/services covered by the trademark and other required documents as per the filing.

2. Official Search Report & Examination: The examiner examines the application at the trademark office and moves forward to the next step if he is convinced on the following grounds:

The trademark is not confusingly identical or similar to a previous trademark that covers a similar product or service.

The trademark does not simply elaborate on the product or service it covers.

If the examiner feels unsure about the above conditions, he issues an examination report with objection.

3. Response to Examination: Applicants should address the objection with persuasive written arguments to assure the examiner. However, if the examiner still has some doubts, he may list the application for a hearing. Afterward, a trademark attorney can appear before the hearing officer to state the reasons for permitting trademark registration in question. Applicants should submit a response to examination only when the concerned authority demands it.

4. Acceptance and Publication: Once the trademark examiner is convinced about the examined trademark, it is published on the trademark website for four months.

5. Opposition Period: In the four months, any third party can oppose the trademark registration. It does not have to be the registered proprietor of any mark. Even a customer, purchaser, or public member can object. The underlying logic is that the opposing person represents the public at large. Two similar marks in the market can confuse the public and members of the trade. However, such cases are sporadic in everyday scenarios. If there is an opposition, the applicant has to overcome it before the trademark is registered.

6. Registration: Once the trademark has been advertised for four months and upon its expiry, the trademark is registered. The applicant is issued the trademark registration certificate online. Usually, the registration is valid for ten years after which it can be renewed again.

Once you are familiar with the trademark registration process, the next step is to search for a free trademark name.

How to Search for Free Trademark Name

The use of search engine tools effectively filters out the same or similar mark, already in use by any third party. Moreover, it can offer the details of the related product or activities. However, search engine tools have some limitations. For example, it fails to identify registered trademarks but is yet to be launched in the market. The solution to the limitations of search engine tools is to conduct detailed trademark availability search in official or task-specific databases. The trademark search usually falls into one of the following categories:

1. Identical trademark search: It identifies marks that are phonetically or visually an exact match.

2. Similar trademark search: This type of searchidentifies identical or confusingly similar marks.

3. Trademark search with opinion ('search with advice'): It generallyincludes an attorney's recommendation for the results of the identical or similar trademark search based on consideration of identified prior mark.

4. Index search: This type of searchidentifies companies with similar/identical names to the search terms.

5. In-use verification search: It checks if the third party with prior rights is using its trademark rights correctly, which may provide grounds for challenging a registration.

6. Trade name search: This type of searchidentifies trade name rights that may conflict with desired trademark, by filtering companies with similar/identical names to the search terms. Besides, a trademark attorney can also check a chosen mark for unintended meanings and associations. This search is of particular significance should a company launch its product or brand in foreign countries where linguistic differences could charge you out.

Knowing how to search for a free trademark name is insufficient; you must also know how to comprehend the search report and its results.

Search Report

A search report for a trademark is a comprehensive report that contains search results. It is beneficial for businesses looking to register their trademark before submitting an application and who wish to know all about the trademark availability, similar marks, and other details. These reports are generally collected by specialised recruitment firms and can also be requested by trademark attorneys.

Applicants can start by searching online with a reasonably reliable mark. Next, try to check services or goods provided in your specific industry. This activity is normally performed online. The search for the trademark easily takes two full days.

It is also recommended that an experienced trademark attorney request a formal opinion before applying for registration or engaging in the trade, advertisement, or manufacturing. The attorney can review the mark and conduct a detailed check on the trademark database about the availability and registration of the proposed mark. The Search Report for a trademark lawyer would constitute the groups in which the proposed mark is to be submitted, with maximum security based on the goods/services being located in the native country and the activity of the company in these transactions. Besides, he will also draft an appropriate definition of the class trademark for filing.

The attorney's report is a holistic report that makes it possible for the decision-maker to predict the possibility of the trademark registration from the point of absolute grounds for refusal and the relative grounds for refusing. It also emphasizes the risk of objection from third parties or further proceedings.

Focusing on the scope of the trademark search is equally vital after understanding the significance of the search report and its results.

Scope of Trademark Search

The extent of a trademark search has to be detailed enough to encompass references to federal trademark registrations, state trademark registrations, and common law trademark rights. The federal and state searches should include abandoned applications, pending applications, and expired registrations. The reason for such a holistic search is that trademark rights in many countries are granted on use and registration is not required for the rights to exist in the trademark. Therefore, although abandoned registrations and pending applications specify no federal rights to those marks, the marks of these applications could still be in use and very much relevant.

It is also crucial to discover common law trademarks even where no applications have been filed for registering the marks. Many databases created contain lists of product names, although they are not complete. Additional data sources must be examined, such as periodicals that cover the area in which the trademark will be used, internet domain name registrations, press releases, phone book databases, and corporate information databases. Trademark searches without a relatively comprehensive common law trademark search are of little worth when utilizing a new trademark.

Now that we understand the scope of trademark search, we will shift our focus towards the benefits of trademark search in the next section.

Benefits of Trademark Search

The benefits of trademark search are shown in Figure 2.

Figure 2: Benefits of Trademark Search

1. Saves Money and Resources: The first benefit of a trademark search is to save money and resources against a mark that might not be available. The activities of moving forward with the registration of a trademark (in the absence of any search mechanism) will prove counterproductive with the wastage of financial and human resources.

2. Saves Time & Provides Flexibility: A comprehensive trademark search identifies the similar or exact mark already in existence, thus cutting out the possibility of a claim in the future by any third party. Therefore, a lot of time is saved without wasting on an already registered trademark. Applicants also get a lot of flexibility in searching before the actual product is launched in the market.

3. Avoid Business Hiccups: In the absence of trademark searching, businesses can go forward with the trademark usage and application filing. The branding activity associated with the trademark is also initiated. However, all the hard work is spoilt once the trademark is flagged for infringement or dilution. Consequently, a business will be forced to rebrand causing a major hiccup in the process. This can be avoided by performing an effective trademark search.

4. Avoid Dispute & Litigation Cost: Using an existing trademark can result in dispute and increase litigation cost if the trademark owner decides to enforce its right. Performing a trademark search to check the availability of a trademark saves you from complicated disputes and litigation costs.

5. Get Valuable Insights: While conducting a trademark search, you also learn about the trademarks that the competitors are using in your specific industry. After getting valuable insights, you can change your selection according to market trends.

In conclusion, trademark search helps save time, money, and resources and provides the flexibility of altering the trademark at the right time. It is a significant investment, and it is prudent to know your objectives clearly before proceeding. Although trademark search can be performed on your own, it is prudent to hire the services of a reliable third party.

Sagacious IP is a leading value-driven and technology-focused IP research firm that provides reliable support services to the global IP community. Its presence across three continents offers service to Fortune 500 companies, law firms, start-ups and R&D organizations. In addition, through our Trademark Search service, we help clients to identify the existing and available trademark for registration. Click here to know more about this service.

-Gopal Singh Rawat (Trademark) and the Editorial Team

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Setting The Right Objective For Trademark Search - Sagacious IP

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Trademark is a crucial marketing tool to position your brand uniquely as it serves as a unique marker of identity. Hence, organizations are willing to spend considerable amount of time, money, and resources to finalize a trademark for registration. However, do you know that your finalized trademark for registration might not be legally available?

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Understanding Patent Obviousness and Overcoming Associated Rejections

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Understanding Patent Obviousness and Overcoming Associated Rejections

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Obviousness is likely the most difficult barrier to overcome when proving an invention's patentability. This is owing to the fact that it is unclear and subjective. An inventor's excellent invention may be deemed unpatentable due to an indistinct concept, resulting in rejection of an application due to obviousness. Prior art references and the interpretations formed from them are used to make obviousness rejections. As a result, it's critical to grasp the concept of Obviousness and figure out how to resist it. This article is an attempt to do the same. Read more about patent obviousness here: https://sagaciousresearch.com/blog/understanding-patent-obviousness-and-overcoming-associated-rejections/

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Obviousness is perhaps the most challenging obstacle to overcome while substantiating the patentability of an invention. This is due to its ambiguous and subjective nature. Rejection of an application due to obviousness could be a grave dissatisfaction for an inventor, whose brilliant idea was rendered unpatentable due to an indistinct concept. Obviousness rejections are based on prior art references and the interpretations derived from them. That is why it becomes imperative to understand the concept of Obviousness and identify ways to overcome it. This article is an attempt in the same direction.

So what makes an invention obvious?

An invention is declared as obvious if the differences between the claims and the prior art(s) are apparent to a person with ordinary skill at the time of filing of the patent application. In short, if an invention is obvious to an average person, it cannot be patented. Thus, as the concept is entirely subjective, a significant part of the patent prosecution process is related to arguing with the examiner for the invention being not apparent,and it is not based on the prior arts cited by the examiner. In many cases, it has been seen that the examiner has used a combination of prior arts to reject a claim (one or more prior art references to interpret). Moreover, when we compare the concept of Novelty with the idea of Obviousness, the subjectivity of the latter becomes even more evident as we will see in the sections below.

Novel vs. Obvious in Patent Law

Novelty is defined under Section 102 of United States Code Title 35 - Patents of the U.S. Patent Act. A claim lacks novelty if each component has been described or discovered in a single prior art.

On the other hand, "Obviousness" is defined under Section 102 of United States Code Title 35 - Patents of the U.S. Patent Act, and a claim is not patentable if all the elements of the claim can be arrived at either by combining elements of the two or more prior arts or by combining the elements of the one or more prior arts with the knowledge of the person ordinarily skilled in the art. Moreover, the classification of the underlying claim as 'Obvious' leans more towards the legal aspect of the process rather than being a technical question. USPTO has provided various guidelines for rejecting a claim under obviousness. These guidelines arrange the cases in the following groups of obviousness rationales:

1. A simple substitution of one known element with another element to determine the same result.

2. Uses of known techniques for improving the same devices (methods, or products).

3. "Obvious to try"-choosing from a finite number of identified predictable solutions, with a reasonable expectation of success.

4. Some teaching, suggestion, or motivation available in the prior art led a person with ordinary skill to modify or by combining the prior art references to arrive at the same claimed invention.

5. Known work in one field may prompt variations for use in either the same field or a different field if the variations are predictable to one of ordinary skill in the art.

6. Combination of prior-art elements according to known methods to yield predictable results.

Ways for overcoming the Patent Rejection from Obviousness

While protecting the patent application from being rejected on arbitrary and unrelated bases, it is essential to know how to tackle when such situations arrive. The following points will help in avoiding the obviousness rejections:

Any unsupported conclusions or reliance on only common sense by the examiner should always be challenged by arguing that the rejection is conclusory and unsupported.

One must challenge the conclusion of Obviousness by explaining how the problem was not known in the prior art or other pieces of evidence related to the solution.

If an examiner rejects the claim based on patents or published patent applications, it is suggested to have a closer look at the patent's prosecution history. The takeaways from it may be used to dispute any assertion made by combining different references.

Assumptions by the examiner about the finite number of solutions with anticipated success can be targeted by showing the examiner the number of choices and how uncertain the outcomes of each alternative could be.

The examiner's analysis can also be challenged on the grounds that the prior art failed to suggest any solution to the problem solved by the invention.

The unpredictability and variables of the Obviousness suggested by the examiner should be explained, and, if possible, the unexpected results can be demonstrated.

Lastly, if still the examiner is not convinced, amendments to the claims can be made and specific elements that were not shared in the prior art references can be added.

Additionally, while responding to the obviousness rejection, the applicant must use the above arguments (as applicable). Even, in case, if the examiner is not persuaded, the statements may be persuasive on an appeal.

Conclusion

SAn invention is not just a new idea. It represents hard work put in by the inventor in the form of time, energy, and resources. The biggest challenge is not just creating something new but also protecting what has been created. Understanding the concept of Obviousness and knowing ways to protect against its related rejections helps you protect your valuable invention from being denied unjustifiably. Moreover, a well-drafted patent application can even minimize the occurrence of obviousness rejection in the first place itself. It helps in saving resources and achieving the intended results. Learn more about our patent drafting services and how they can help you reduce such obstacles.
- Yojit Bhugra (Engineering Drafting and Prosecution Team) and the Editorial Team

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Understanding Patent Obviousness and Overcoming Associated Rejections - Sagacious IP

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Obviousness is perhaps the most challenging obstacle to overcome while substantiating the patentability of an invention. This is due to its ambiguous and subjective nature. Rejection of an application due to obviousness could be a grave dissatisfaction for an inventor, whose brilliant idea was rendered unpatentable due to an indistinct concept.

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A Bird’s Eye View of IP Through Technology Credentialing

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A Bird’s Eye View of IP Through Technology Credentialing

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Innovation and technology enhancement are crucial towards navigating effectively in the market. However, it is also vital to communicate the underlying novelty of the innovation to the end consumer to establish the brand’s credibility. While companies protect their Intellectual Property (IP) via patents, trademarks, etc., the technical advancements and improvements are best communicated through ingenious methods of communication. Such methods help to explain the potential impact of the technology and effectively improve the company’s market position. These communication methods are via different channels and through the product/service itself, forming the core of the technology credentialing concept. Read more about technology credentialising here: https://sagaciousresearch.com/blog/a-birds-eye-view-of-ip-through-technology-credentialing/

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Innovation and technology enhancement are crucial towards navigating effectively in the market. However, it is also vital to communicate the underlying novelty of the innovation to the end consumer to establish the brand’s credibility. While companies protect their Intellectual Property (IP) via patents, trademarks, etc., the technical advancements and improvements are best communicated through ingenious methods of communication. Such methods help to explain the potential impact of the technology and effectively improve the company’s market position. These communication methods are via different channels and through the product/service itself, forming the core of the technology credentialing concept.

This article will explain the concept of technology credentialing and how its in-depth research provides an edge to competitor landscape analysis.

Technology Credentialing and Why to Track it

How to Effectively Search and Analyse Technology Credentialing: A Case Study

Conclusion

Technology Credentialing and Why to Track it

A product or technology’s commercial success depends on the market drivers, and consumer choices play a significant role. For effective market growth, it is imperative among competitors to promote their products so that the consumer can understand their USP. Technology credentialing comes into play here as products are provided with descriptions that are best suited to reflect technological advancements over the competition without confusing jargons. Determining how competitors are credentialing their products is helpful for businesses to gain insights into market trends and strategize accordingly.

For instance, an applicant filing patent applications would not see the returns immediately after filing an application. However, once the application is published, the company markets its technology to pitch potential licensees or develop a consumer base by credentialing its products. Pending IP is one of the labels that are added while marketing the product. Alternatively, the company may disclose “new formula using X advanced process” as a part of technology credentialing without disclosing the exact formulae. It helps affect brand marketing and promises a consumer base before the IP is protected or monetized. Such credentialing is done using various marketing platforms such as websites, social media, advertising channels, blogs, surveys, etc.

Tracking such credentialing provides insights related to:

How competitors target consumers – labelling IP, technical advancements, problems claimed to be solved

What drives consumer choices – this is generally reflected in the market success of products with credentialing

Markets of interests for competitors – the difference in credentialing between markets is also reflective of IP filed in those regions

Subsidiaries and brands within companies can be tracked while identifying credentialing

Platforms that are popular among product owners and consumers

Drawing parallels and trends in IP filing and market presence

Region-wise trends for a company’s product

How to Effectively Search and Analyse Technology Credentialing: A Case Study

Sagacious IP worked with one of the Fortune 500 companies to uncover how their global competitors credentialed their technology to consumers. The idea was to understand how the technological advancement in their products and the protected IP is explained to the consumers in straightforward language to expand the market base. There was a certain level of IP to be studied; however, the market presence of the technology was the central aspect of the search.

With a strong presence in various consumer segments, such as hair, skin, personal care, grooming, home care, etc., the client was interested in determining how competitors communicate the differentiating factors of their product from others based on technology. They had a compilation of around 20 competitors across 8 eight segments in four South Asian markets, which they wanted to study.

The project scope was expansive as each competitor had various brands under them, with multiple products in each product segment across different markets in South Asia. Sagacious IP assisted the client in brainstorming through other aspects to be studied for this research and the depth of study.

Eventually, taxonomy was prepared to credential the technology in the following manner:

Competitor I

Brand I

Segment I

Product I

Multiple products under each segment, each brand and each competitor were studied for their IP, technology presence on social media, presence in scientific literature, e-commerce, press release and blogs across markets. In addition, indicative features had been highlighted with supporting information such as product claims and case studies.

The overall project was a vast landscape across various technology segments. The graphical trends were quite diverse and exciting due to each segment’s multiple brands and products. The insights were significant to determine the points shown in Figure 1.

Figure 1: Insights from Technology Credentialing Study

The client received bite-size yet highly impactful information compiled into the technology landscape and graphical deliverables, which they could use to understand upcoming competition and align with their strategy.

Conclusion

Technology credentialing studies provide a bird’s eye view of IP and the market presence of various products. It is especially helpful in tracking multiple competitors in a technology space across geographies and marketing platforms and developing a long-term strategy for R&D business. The study becomes significant in today’s age with a shorter product life cycle, low brand customer loyalty, and reduced attention span. The right technology credentialing strategy offers a valuable insight to brand communication and saves time and resources while starting from scratch.

-Devika Saini (Life Sciences & Chemistry) and the Editorial Team

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A Bird’s Eye View of IP Through Technology Credentialing - Sagacious IP

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These communication methods are via different channels and through the product/service itself, forming the core of the technology

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Video Coding and Related Patent Licensing Pools: A Beginner’s Guide

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Video Coding and Related Patent Licensing Pools: A Beginner’s Guide

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Video technology has advanced dramatically over time, resulting in an increase in video content demand. Video file sizes have grown in size, making quality streaming at fast speeds problematic. Video encoding, which reduces videos to appropriate formats while also simplifying transmission without sacrificing quality, is a prominent solution to this problem. Licensing pools are developed to encourage innovation in this industry and to ensure that all people have equal access to these technology. Read more about patent licensing pools here: https://sagaciousresearch.com/blog/video-coding-and-related-patent-licensing-pools-a-beginners-guide/

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Video technology has evolved significantly over the years, leading to an increase in demand for video content. The increased file size of videos often makes it difficult to ensure quality streaming at high speed. A popular solution to this issue is video encoding which compresses videos to suitable formats, while also facilitating their transmission without compromising on quality. In order to promote innovation in this field and to ensure equitable access to such technologies for all, licensing pools are created.

The following article discusses video coding, streaming technologies, video coding standards, and why video codec patent licensing pools are important.

Defining Video Encoding

Role of Video Coding Standards and Streaming Technologies in Video Transmission

Standard Setting Organizations for Video Codecs

Video Codec Patent Licensing Pools and their Importance

Conclusion

Defining Video Encoding

Before we begin discussing video coding standards or streaming technologies, let us first understand video encoding.

Video encoding is the process of converting raw video data into a digital format that is compatible with multiple devices. Such a conversion can be done with the help of a video codec – a device/program that reduces the size of a digital data file to a manageable one, thereby making its storage and distribution easier. A codec has two components – an encoder and a decoder. The encoder helps in compressing raw video files while the decoder recreates the final video for playback. Below is an illustration of how encoders and decoders work in video encoding:

Fig.1:  The Complete Video Encoding Process (source: Brid.TV)

Role of Video Coding Standards and Streaming Technologies in Video Transmission

A video coding standard is a document that explains a bitstream structure as well as the decoding method for compression of videos. Such a standard is essential for understanding the video coding process. At present, multiple video coding standards are available in the market including VP9, H.266/Versatile Video Coding (VVC), AOMedia Video 1 (AV1), H.265/High Efficiency Video Coding (HEVC), and H.264/Advanced Video Coding (AVC).

Besides the video coding standards, streaming technologies are also crucial as they help in sharing compressed videos to the end devices/users. Some of the popular video streaming standards/protocols include Motion Picture Experts Group-Dynamic Adaptive Streaming over HTTP (MPEG-DASH) and HTTP live streaming (HLS). These standards break the video into chunks, send the chunks to the end device, and then reassemble the data to make it playable. The image below represents the overall architecture of a video distribution network including video codecs and streaming protocols.

Fig. 2: Overall Video Distribution Network (Source: Apple)

Standard Setting Organizations for Video Codecs

By definition, a standard-setting organization(SSO) develops and adopts an industry standard for a particular domain. Two standard-setting organizations – the International Organization for Standardization (ISO) and the International Telecommunications Union (ITU) have developed a series of standards that have shaped the media industry. The ISO has created the Motion Picture Experts Group (MPEG) series of standards such as MPEG-1, MPEG-2, and MPEG-4. While the ITU has published the H.26x line of coding standards including H.261, H.262, H.263, H.264, H.265, and H.266 (the VVC standard).

Video Codec Patent Licensing Pools and their Importance

When competing businesses with patents on a specific technology refuse to share their IP, it dampens innovation in that industry. One way to tackle this issue is to create a patent pool, which is an agreement between two or more patent holders who transfer their IP to a joint venture. The businesses inside the pool either enter into a cross-license agreement with each other or with a third party. Such a pool enables licensees to use patents on fair, reasonable, and non-discriminatory (FRAND) terms.

When it comes to video codecs, there are three main patent pool administrators – HEVC Advance, MPEG LA, and Velos Media. HEVC Advance (also known as Access Advance) has been created to develop, administer, and manage patent pools related to HEVC or H.265 standards. This patent pool administrator recently launched the VVC/H.266 pool and also introduced a multi-codec bridging agreement (MCBA). MPEG LA has also announced the development of a VVC standard patent licensing pool. Velos Media is yet another independent company licensing standard patents from different companies. While these pools allow licensees access to as many patents as possible, there is a probability of some patents being essential to the standards but not being part of any of these pools. The best way to tackle this challenge is to have an all-inclusive patent pool.

Conclusion

Given the growing video viewership around the world, it is imperative to provide quality videos at high speed. Video coding and streaming technologies can help in doing so by compressing videos and transmitting them while maintaining their quality. Further, to foster innovation in the media industry and ensure equitable access to these programs or technologies and their related patents, some licensing pools have been created. However, there is an increasing need to fine-tune how FRAND licensing is being done by these pools due to the high disparity in their royalty rates. To know more about the topic, view our webinar here.

Abhinav Mahajan, Gagandeep Singh (ICT Licensing) and the Editorial Team

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Video Coding and Related Patent Licensing Pools: A Beginner’s Guide - Sagacious IP

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The following article discusses video coding, streaming technologies, video coding standards, and why video codec patent licensing pools are

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Nutraceuticals – Insights on Industry & Associated IP Rights

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Nutraceuticals – Insights on Industry & Associated IP Rights

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Attention to health and related parameters has been a focal point in the current world scenario. Subsequently, the healthcare market has gained precedence and commanded strong market hold. While the healthy food movement has been on the trend for the past few years, its significance has gained priority ever since the current pandemic set in. People have realized the importance of a healthier lifestyle, and this is where the products under Nutraceuticals fit right into the puzzle. Read more about Nutraceuticals here: https://sagaciousresearch.com/blog/nutraceuticals-insights-on-industry-associated-ip-rights/

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Attention to health and related parameters has been a focal point in the current world scenario. Subsequently, the healthcare market has gained precedence and commanded strong market hold. While the healthy food movement has been on the trend for the past few years, its significance has gained priority ever since the current pandemic set in. People have realized the importance of a healthier lifestyle, and this is where the products under Nutraceuticals fit right into the puzzle.

In this article, the basics of Nutraceuticals are discussed, along with their types and benefits. It also highlights the market demand and how innovations in this field can be protected through intellectual property rights. So let us first understand the world of nutraceuticals.

What are Nutraceuticals

The term "Nutraceutical" combines two words - nutrients and pharmaceuticals. It implies that Nutraceuticals offer nutrients essential for a well-functioning body and some therapeutic utilities. Stephen DeFelice coined the name in 1989 to describe products that are based on natural food sources and offer some additional health benefits. These foods focus more on prevention than on cure and help promote general well-being, prevent malignant processes in the body, and modify diseases to reduce their severity.

Types of Nutraceutical products

Nutraceuticals can be classified under four categories based on their natural sources, pharmacological conditions, and chemical constitution. These are:

1. Dietary supplements: These products contain nutrients derived from natural food products and are concentrated in liquid, capsule, or powder form, such as l-arginine, casein, etc.

2. Functional foods: These types of foods are enriched and fortified with additional nutrients that are not found in their natural form. Thus, they offer more health benefits to reduce the risk of some severe diseases.

3. Medicinal foods: These foods are very specific to their purpose and are used in the dietary management of a condition. They are administered under the supervision of a medical professional.

4. Farmaceuticals: As evident, the word is a combination of 'Farm' and 'Pharmaceutical'. It is used for the foods that are attained from modified agricultural crops or animals. These foods have medically valuable components and are highly cost-effective.

Benefits of Nutraceuticals

The continuous rise in the popularity of these products is a result of the immense health benefits they bring to us. So let's discuss them one by one:

1. A positive role in biological processes: Nutraceuticals play a positive role in several biological processes. This includes providing defense against antioxidative stress, managing cell proliferation, enhancing gene expression, and safeguarding mitochondrial integrity.

2. Increase life expectancy: It is expected that Nutraceuticals may increase life expectancy by supporting the functions of the body and maintaining its integrity. In addition, they have been suggested to improve the quality of life by preventing chronic diseases, slowing down aging, and improving overall health. Thus, increasing the quantity as well as the quality of life.

3. Disease-modifying tendency: Nutraceuticals may boost immunity and reduce susceptibility to certain diseases. Moreover, they have also been found to show disease modification tendencies, i.e., affecting the pathophysiology of the diseases to reduce its activity and progression and result in a better outcome.

Nutraceuticals Industry: Market Demand

In the early 90s, the nutraceuticals industry first started to emerge. However, it underwent phenomenal growth during the 2000s based on its unique ability to merge scientific discoveries with the ever-growing demand for health-enhancing products. Moreover, it also works as a cost-effective substitute against expensive treatments across various markets. Thus, consumer demand will remain the primary driver for the solid growth of the market.

And riding on this high consumer demand, it is expected to reach USD 826 Billion at a CAGR of 8.9% during the period 2021-2028. To put it in perspective, it stood at USD 278.8 Billion in the year 2020.

Further, the prominent markets for these products in the current scenario are - United States, Europe and India. However, China is expected to surpass them all by 2030.

At present, the United States represents the largest Nutraceutical market globally. An increasing number of US companies are looking to include Nutraceuticals in their product line. This inclusion results from a push from highly health-conscious consumer demands.

Next, the European Nutraceutical market is anticipated to register a growth rate of 7.5% CAGR during 2020 - 2025. While the Netherlands, Germany, and Sweden may emerge as innovation hubs for the Nutraceuticals market, Spain and Great Britain may prove to be the decisive test markets for new products.

Lastly, the nutraceuticals market in India is projected to grow from USD 4 billion in 2017 to USD 18 billion in 2025. There are various factors for it. The first, and the most obvious one, is the rising demand for dietary supplements. Secondly, around 15 percent of the Indian population is malnourished, which is a large number considering the huge population in the country. And the government has taken several measures to reduce the same, such as Integrated Child Development Services (ICDS), National Health Mission (NHM), and the mid-day meal scheme. Nutraceuticals have an essential role in these services by fulfilling the nutritional demands at affordable prices.

Regulations and the challenges therein

The regulations in the Nutraceutical sector pose a crucial challenge. The prominent concern is about the variation in definition across the market. This discrepancy hampers the goal of globalizing the product. For example, in Japan, functional foods are defined based on ingredients, and they should exclusively include natural ingredients. On the other hand, in the United States, functional foods offer some health benefits over and above the apparent essential nutrition. Moreover, they can include biotechnological products. In addition to it, there are no specific regulations to deal with Nutraceuticals, as we will see in the next section.

Starting with the US, Nutraceuticals are regulated under Dietary Supplement Health and Education Act (DSHEA). Under these regulations, manufacturers are responsible for the safety of the product. Therefore, the registration of the product before making it public is not mandatory. However, they have to ensure that the information on the label is genuine.

They are moving to Europe, legislations related to food come under European Food and Safety Authority (EFSA). Under this umbrella, the regulation of food supplements comes under Directive 2002/46/EC. Moreover, in contrast to the US, new products in Europe undergo stringent requirements to ensure safety before they arrive at the market.

Lastly, the next big market is India. Here too, no specific regulation has been assigned to Nutraceuticals. However, it comes under the Food Safety and Standards Act (FSSA). The manufacture, storage, distribution, sale, and import of nutraceuticals are regulated in India under the Food Safety and Standards Act of 2006.

Intellectual Property in Nutraceuticals: Patents, Trademarks, and Trade Secrets

The above discussion on Nutraceuticals lays certainty on the dynamic and growing nature of the industry. A high rate of innovation is expected with large-scale mergers and acquisitions being witnessed already - the latest being acquiring Bettera Holdings for $1 Billion by Catalent Inc.

That is why Intellectual Property (IP) becomes indispensable when capturing the Nutraceuticals market. The reason is that the market is relatively new, and it is booming with innovation. Thus, investing in IP will protect the innovators against competitors and enhance the overall value of the company and attract more investors to it. Moreover, the new players entering the market should also be wary of infringing the IP of existing players as well.

In the next section we will discuss about the different types of IP and the related concepts and how they can help you leave a mark in the Nutraceuticals industry.

Patents protect innovation

To protect your innovation, it is indispensable to get a patent grant. There are two type of protection provided under patents:

Utility Patent can provide legal protection to the novel and the non-obvious composition, formulation, manufacturing process and the method of usage of a nutraceutical product. You can refer to this case study to better understand utility patents. On the other hand, the design patent protects the distinctive visual qualities of a manufactured item, such as packaging material. You can read the article to know more about design patents.

Further, filing a patent is a complex task requiring a fair knowledge of the patenting processes, its technical aspects, and the patentability of the innovation. For a better start to the process, you can read this article on patent filing strategies.

Trademarks protect your brand

Trademark establishes your unique market identity. A good trademark helps in identifying the original manufacturer of the product. In addition, it offers protection to the labeling and packaging of the product along with the slogan and logo of the company. Thus, it confers a competitive advantage to the business by developing goodwill with consumers. This could be particularly useful for Nutraceutical companies and a trademark specialist can help such a company to decide the aspects that can be protected, as mentioned above.

Our guide on trademark can help you choose the best one for you.

Trade Secrets

They are intellectual property rights that protect a business secret via legal secrecy. In order to be recognized under trade secrets, the information should have the following:

1. It should have a commercial value.

2. It should be known to a limited number of people.

3. It should be reasonably protected by the rightful secret-holder.

Unlike patents and trademarks, neither the trade secrets require registration, nor do they expire, and nor do they get exposed to the public.

There are various types of information that a Nutraceutical company would like to protect through trade secrets. This includes examples such as protecting the manufacturing process that could otherwise be detected through reverse engineering if the process was protected via a patent. Similarly, the list of suppliers providing ingredients can also be kept as a trade secret. Moreover, a particular physiological mechanism that enhances a physiological function can be regarded as a trade secret. Lastly, even the amount of individual ingredients within a proprietary blend can be kept as a trade secret - assuming other FDA requirements are met. The only downside to this can happen if a proprietary formula can be reversed engineered - in which case it will cease to remain a secret and acquiring a patent instead might be the correct approach in this particular scenario. Similarly, 'negative know-how'* can also be protected.

*Negative know-how refers to information derived during the development stage that states formulations or processes, etc., that do not work. Such information can be critical as a time-saving measure and should be protected from a competitor.

Freedom-to-Operate (FTO)

Before a Nutraceutical product is launched, it is a best practice to know if it has the freedom-to-operate in the market. Please read this article to know the role of FTO and why an FTO analysis is paramount so that a Neutraceutical company can modify the product or packaging to mitigate potential infringement risk and protect its brand reputation.

Final Thoughts

To conclude, the Nutraceuticals industry has great potential to offer its consumers innovative products that serve their immediate health-conscious needs. Therefore, protecting that innovation is crucial to gaining market traction. Implementing a suitable Intellectual Property Right (IPR) based on your individual needs can be tricky. Our experts in IPR can guide you.

Shweta Sharma (IPP) and the Editorial Team

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Nutraceuticals - Insights on Industry & Associated IP Rights - Sagacious IP

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Attention to health and related parameters has been a focal point in the current world scenario. Subsequently, the healthcare market has gained precedence and commanded strong market hold. While the healthy food movement has been on the trend for the past few years, its significance has gained priority ever since the current pandemic set in.

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Indian Patent Filings Trend in the Life Sciences Sector

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Indian Patent Filings Trend in the Life Sciences Sector

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India's life sciences industry has grown tremendously over the years. The country's extensive formulation expertise, concentration on improving manufacturing and regulatory capabilities, and an inventor-friendly patent environment are just a few of the elements fueling the sector's rise. And, while some may argue that India's life sciences sector has lagged behind those of some of the world's leading nations, it has come a long way. Read more about patent filings here: https://sagaciousresearch.com/blog/indian-patent-filings-trend-in-the-life-sciences-sector/

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Over the years, the life sciences sector in India has grown significantly. The country's substantial expertise in formulations, emphasis on developing manufacturing and regulatory capabilities, as well as an inventor-friendly patent regime are just some of the factors driving the growth of the sector. And although some might say that India's life sciences sector has not fared so well when compared to some of the world's leading nations, it certainly has come a long way.

In line with the above, the following article covers how the innovation index of the sector has grown exponentially, the key trends in Indian patent filings during the past decade, and the challenges that lie ahead.

Percentage increase in number of patents filed in 2019 compared to numbers filed in 2011 - ~14.5% increase

Increase in number of patents filed in last 5 years (2016-2020) compared to patents filed from 2011-2015 - ~3% increase

Increase in number of patents filed in last 5 years (2016-2020) compared to patents filed between 2011-2015 (Patents with Indian Priority) - ~35% increase

Now before we begin, let us first understand the relationship between patents and the life sciences sector. The two share a critical bond as a significant portion of the sector's revenue comes from patents. Therefore, it is no wonder that life sciences has emerged as one of the leading sectors that have seen a sharp growth in global patent filings over the years. The situation of Indian patent filings is no different.

If we observe the general patent filing trend in India during the period (2011-2020), there has been a steady increase in the filings, with total filings standing at 1,93,327. Further, if we compare the cumulative patent filings in the past five years (2016-2020) with those in the five years before that (2011-2015), approximately over 93,000 patents were filed from 2011-2015, while over 95,000 patents were filed during 2016-2020. Overall, this comparison reflects a substantial increase in filings over the past five years.

It is important to note that not just Indian filings but patent applications with Indian priority have also grown significantly from 2011 to 2020. The total number of Indian priority applications recorded during this period are more than 50,000. Out of which, over 20,000 applications were filed during 2011-2015 while more than 30,000 applications were filed in the last five years (2016-2020).

To understand the recent patent filing scenario in India, let us now discuss the past five years' trend in terms of International Patent Classification (IPCs), assignees as well as geographical distribution of Indian patent filings overall.

IPCs, Assignees and Geographical Distribution of Indian Patent Filings

Figure 1: Graph representing top IPCs for Indian Patents (2016-2020)

When it comes to technology areas in the life sciences domain (using the IPCs), the most patent filings that occurred were during the last five years (graph above). The top areas include Diagnostics and Surgery, Medicinal Preparations, Devices for Medical Purposes, Drugs for Treating Different Disorders, Process for Separation or Isolation of Chemicals, Chemical Compounds, Protein Compositions and their Preparation, Microbiology and Genetic Engineering, and Testing processes such as immunoassays. Out of these, Medicinal Preparations has shown over 28,000 patent filings, the highest number recorded among the technology areas during 2016-2020. Based on the application years as well, a similar patent filing distribution has been observed for these top ten technology areas.

Figure 2: Graph representing top Applicants for Indian Patents (2016-2020)

In terms of assignees (Figure 2), overall, India has witnessed patent filings from foreign Companies, Indian Companies as well as Academia (research institutes and universities). Out of these, the maximum number of Indian patents have been filed by the foreign firms, indicating that India is considered a leading market destination. Among the top ten foreign contributors in Indian filings between 2016-2020 are Philips, BASF, Dow Global Technologies, Procter & Gamble (P&G), Compagnie de Saint-Gobain, Unilever, Novartis, and Ethicon with 4064, 3220, 1364, 1044, 1025, 1006, 980, and 974 filings, respectively.

Figure 3: Graph representing top Indian Companies filed for Indian Patents (2016-2020)

The top Indian firms who filed patents in India during the last five years (graph above) include ITC Ltd., Dr. Reddy's Laboratories, Tata Steel, Reliance Industries, and Cadila Healthcare with 597, 586, 560, 466, and 426 patents, respectively.

Figure 4: Graph representing top Academia filing for Indian Patents (2016-2020)

But what's even more interesting is the fact that the academia (graph above) is also aggressively filing for Indian patents including both Indian & Foreign Universities & Research Institutes. The top filers among the Indian research institutes and universities are Lovely Professional University (LPU), Amity University, Indian Council of Agricultural Research (ICAR), IIT Bombay, and IIT Madras with 569, 513, 458, 396, and 396 filings, respectively. These large number of patent filings from the Indian academia are reflective of their strong research capabilities. Top foreign research institutes that have filed patents in India in the life sciences sector are - Centre national de la recherche scientifique (France) and IFP School (France) - with over 400 patents filed by each in last 5 years.

When it comes to the geographical distribution of patents with Indian priority, a vast majority of Indian filers are applying for patents within the country itself, followed by the USA, Europe, China, and Japan. These foreign filings by Indian applicants are indicative of the high potential of these markets and the degree of research done by the Indian inventors in the life sciences sector. Furthermore, in terms of inventions with a foreign priority that are being filed in India, the USA leads the filing race with over 59000 patents, followed by Europe, Japan, Germany, Great Britain, France, China, Korea, and Australia.

Further, despite the ill-effects of COVID-19 on human lives and businesses around the world, the spirits of the inventors were not dampened. The top ten assignees that filed for patents in India in the Life Sciences sector during the pandemic include Ethicon, BASF, Philips, Lovely Professional University (LPU), Unilever, University of Chandigarh, Nippon Steel, Compagnie de Saint-Gobain, Dow Global Technologies, and LG Chem Ltd. Interestingly, LPU and University of Chandigarh - with a total of over 170 patents that are competing neck to neck with the top foreign assignees (graph below).

Figure 5: Graph representing top applicants filing for Indian Patents since January 2020

In terms of technology areas, the ones that received the maximum number of patent applications during COVID are - Diagnostics and Surgery, Medicinal Preparations, Devices For Medical Purposes, Drugs For Treating Different Disorders, Process for Separation or Isolation of Chemicals such as Chromatography and Distillation, Chemical Compounds, Protein Compositions and their Preparation, Microbiology and Genetic Engineering, Testing Processes such as Immunoassays, Catalysts and Colloid Chemistry, Treatment of Water/Sludge, Medical Implants/Prostheses, Disinfectants and Similar Chemicals, and Computational Models. Among these, Treatment of Water/Sludge, Catalysts and Colloid Chemistry, Medical implants/Prostheses, Disinfectants and Similar Chemicals, and Computational Models joined the list of top technology areas during the pandemic.

Besides technology areas, the priority regions also witnessed some changes. Before the pandemic, Germany held the fifth position in terms of priority-wise patent filings. However, Korea moved up four places to replace Germany and become the fifth highest filer of patents in India during COVID times. This signifies that Korean companies are showing interest in entering the Indian market and are contributing significantly.

While the life sciences sector is witnessing rapid growth, a host of challenges exist parallelly and some lie ahead. Currently, the pharmaceutical companies, which is a part of this sector, are facing hiccups in dealing with IP litigations and rising competition due to generic drugs. Besides these, two of the biggest challenges are related to development of approved drugs - prolonged hours spent on research and the substantial investments required for them.

Rampant self-medication due to increased digital connectivity and awareness, and shift in focus towards preventive healthcare and precision medicine are also significant constraints. Lastly but most importantly, low returns on generics and strict guidelines by governments across the globe are few other limiting factors to R&D within this sector.

The Way Forward

Despite these challenges that lie ahead, innovations in the life sciences sector in India are increasing rapidly. Factors such as establishment of small molecule development and manufacturing in India by foreign and native firms, increasing activity of companies in development of biosimilars for global market, recent changes in policies for advancing innovative medicines in India, rise in expenditure on healthcare, and active involvement of Indian companies in developing new precision medicines and their collaborations with foreign companies to provide access to unique treatments are anticipated to propel the sector to newer heights.

Sagacious IP is a leading IP solutions provider that has been instrumental in helping companies to protect and maximize their innovation. Our technically sound team of patent professionals cover diverse technological areas. Visit our website to know more.

Ankur Gupta (Life Sciences) and the Editorial Team

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Indian Patent Filings Trend in the Life Sciences Sector - Sagacious IP

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Over the years, the life sciences sector in India has grown significantly. The country's substantial expertise in formulations, emphasis on developing manufacturing and regulatory capabilities, as well as an inventor-friendly patent regime are just some of the factors driving the growth of the sector.

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How our Patent Portfolio Analysis Helped a Taiwanese MNC to Optimize its Resources & Increase Profit

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How our Patent Portfolio Analysis Helped a Taiwanese MNC to Optimize its Resources & Increase Profit

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Periodic evaluation of an organization’s patent portfolio is indispensable for better utilization of its resources. It results in higher returns on investment and a reduction in operational cost, so that the success graph of the organization always shows an upward trajectory. Our latest case study showcases how Sagacious IP’s patent portfolio management services contributed to an organization’s better functioning and ensured its long-term success. Read more about Patent Portfolio here: https://sagaciousresearch.com/blog/how-our-patent-portfolio-analysis-helped-a-taiwanese-mnc-to-optimize-its-resources-increase-profit/

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How our Patent Portfolio Analysis Helped a Taiwanese MNC to Optimize its Resources & Increase Profit

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eriodic evaluation of an organization’s patent portfolio is indispensable for better utilization of its resources. It results in higher

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How Presales Support Can Skyrocket Your Business

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How Presales Support Can Skyrocket Your Business

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With rising competition in the business world, companies are constantly looking for ways to outcompete their adversaries and boost their businesses. While marketing and sales teams are crucial for driving business growth, the role of presales departments cannot be overlooked. This is because these departments support the sales teams in various ways including simplifying the sales funnel and identifying areas of improvement for closing future deals. Read more about presales here: https://sagaciousresearch.com/blog/how-presales-support-can-skyrocket-your-business/

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With rising competition in the business world, companies are constantly looking for ways to outcompete their adversaries and boost their businesses. While marketing and sales teams are crucial for driving business growth, the role of presales departments cannot be overlooked. This is because these departments support the sales teams in various ways including simplifying the sales funnel and identifying areas of improvement for closing future deals.

In line with the above, the following article sheds light on the importance of presales support in driving the growth of companies.

Understanding Presales

Presales simply refers to the different activities that take place before sales, i.e., before deals are closed. This includes tasks such as identifying sales-qualified leads, conducting product and market research, performing customer analysis, preparing buyer personas, and at times preparing project proposals.

The teams tasked with presales activities support sales teams to achieve their targets, centralize the process and systems such that sales teams do not work in silos, and bridge the gap between sales and other teams. In essence, presales teams lay the groundwork for the success of sales oriented organizations.

How Presales Department Supports Sales Team

Improves Efficiency and Saves Time

Companies that intend to onboard new clients or close business deals need to ensure that their sales teams function effectively at all times. Presales departments can help sales teams by optimizing their efficiency and saving time. One way in which these departments can do this is by setting up tools such as: TextExpander for saving time, Paperflite for data centralization and analytics, Zoho CRM for setting up campaigns and managing leads and contacts, and Loom for recording and sharing videos with clients. For instance, a client named Kerry, who expanded 1160 snippets in a month, saved nearly 7 hours that month using TextExpander. This saved time was better utilized for connecting with new clients.

Bridges the Gap Between Sales and Other Teams

Presales departments can also help in bridging the gap between sales and other teams such as marketing, operations (Ops), and accounts. For instance, if sales team decides to create a new website for increasing sales, it can involve the presales team along with the marketing team. This is because a presales team has expertise in conducting market and competitor research that is required for the successful creation of websites.

When it comes to Ops teams, especially in the IP domain, a presales team can be extremely helpful in extracting patent data using credible search tools. If need be, this team can also collaborate with accounts team.

Analyzes Portfolios of Prospective Clients

Before closing a deal with a prospective client, the sales team must ensure that their portfolio has been analyzed. In the IP industry, it is crucial to evaluate the patent portfolios of prospects. A presales team can help in analyzing such portfolios using state-of-the-art tools such as PatSeer and Questel Orbit. Performing this analysis is critical for determining whether the prospect in question is a good fit for the company.

Maps Projects Using Centralized Repository

A Presales team can support the sales department by maintaining a centralized repository of all the projects undertaken by a company. So, when a prospect approaches the sales team with a project, a quick search can be run to determine if the company has worked on a project similar to that of the prospect. In case it has, the same methodology or service can be used for saving time.

Disseminates Relevant Information

Presales departments can help in disseminating industry-related information to companies or specific clients. One way of doing this is by creating client newsletters that can be distributed through various channels to keep the readers abreast of the latest happenings in their industries. For instance, in the IP industry, presales departments can help in preparing fortnightly or monthly newsletters for IP-related companies. The content of these newsletters can include IP-related topic of the fortnight/month, patent filing trends, IP news, articles, press releases, and other publications.

In addition to playing the aforementioned roles, presales teams can also be actively involved in promoting and advertising content to reach the target audience along with the marketing team. By doing so, these teams can boost the company's brand awareness, lead generation as well as conversions.

Conclusion

With an immense focus on the sales teams for closing deals and driving businesses, the presales departments are often left unnoticed. However, emphasizing on growing businesses without ensuring operational support for sales teams can eventually impact their ability to achieve sustainable growth. Since presales teams provide this support, it is imperative for both teams to work in collaboration for ensuring business growth.

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How Presales Support Can Skyrocket Your Business - Sagacious IP

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With rising competition in the business world, companies are constantly looking for ways to outcompete their adversaries and boost their businesses. While marketing and sales teams are crucial for driving business growth, the role of presales departments cannot be overlooked.

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Using Technology Landscape Analysis For Tech Credentialing

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Using Technology Landscape Analysis For Tech Credentialing

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Conducting a comprehensive analysis, such as a Technology Landscape Analysis, before entering a market ensures success to the greatest extent possible. The key insights derived from such an analysis supports sound decision making. It sheds light on the crucial elements, such as the current market scenario, level of competition, market standing of the organisation, the latest methods, techniques, and much more. Read more about technology landscape analysis here: https://sagaciousresearch.com/blog/using-technology-landscape-analysis-for-tech-credentialing/

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Using Technology Landscape Analysis For Tech Credentialing - Sagacious IP

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Conducting a comprehensive analysis, such as a Technology Landscape Analysis, before entering a market ensures success to the greatest extent

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Optimising Patent Expenses for Smaller Corporates – A Case Study

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Optimising Patent Expenses for Smaller Corporates – A Case Study

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The cost of building and maintaining a patent portfolio is a concern for corporates in general. The challenge is even more significant for smaller corporates as they have a limited budget. With the technicalities involved in filing a patent application in the right manner, it is only prudent that corporates seek assistance from companies specializing in patent drafting support. Read more about patent expenses here: https://sagaciousresearch.com/blog/optimising-patent-expenses-for-smaller-corporates-a-case-study/

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The cost of building and maintaining a patent portfolio is a concern for corporates in general. The challenge is even more significant for smaller corporates as they have a limited budget. With the technicalities involved in filing a patent application in the right manner, it is only prudent that corporates seek assistance from companies specializing in patent drafting support.

The following case study narrates how Sagacious IP helped a small corporate build and optimise their patent portfolio and align its technological design and development activities with its overall patent strategy.

The Challenge

Sagacious IP Solution

Result

The Challenge

A small corporate was struggling with its patent strategy and wanted to develop and maintain a patent portfolio without establishing an in-house patent department. It also wanted to manage costs and keep the patent expenses in check.

Sagacious IP Solution

Our team offered a 5-point method to address the above challenge:

Figure 1: The 5-point method shared with client for patent portfolio management

1) Segregation of product development cycle: By understanding and analyzing the product development cycle of the client, the team at Sagacious IP segregated it into three phases:

a) Design development phase, which included the developmental stage of design.

b) Testing phase, which focused on testing of the product. It also included understanding the ease of manufacturing.

c) Making modifications in the design based on the outcome of the testing phase.

2) Filing provisional application: Once a design was finalized (after the design phase), a proposition was made to file a provisional application in place of a regular one. It was done for two reasons. First, the client could secure a priority date for later use. Second, the unnecessary costs of regular patent applications could be saved.

3) Filing regular application: Based on the positive outcome in the testing phase, we proposed to file a regular application. And this was to be done within one year of the provisional application.

4) Abandoning provisional application: The team also propositioned abandoning the provisional application of the design if proved unsuccessful during the testing phase.

5) Filing complete non-provisional application: After the testing phase was successfully executed, the team suggested filing a non-provisional application.

Result

The client benefitted from this thoughtful approach to problem-solving. They were able to build a patent portfolio without incurring huge patent drafting and filing costs. It also managed to cut expenses of hiring an in-house patent attorney and saved infrastructural costs, insurance costs, etc. In addition, the client now has access to expertise on technology and has resources of varied capabilities.

The client was delighted with this meticulous approach to patent drafting. They were particularly impressed with Sagacious IP’s strategy of aligning the product with the patent process. Expressing admiration for the work, the client considered us for its future projects. We are in the process of filing several provisional and non-provisional applications for the client, and he is overall pleased with the deliverables.

As one of the global IP research and consulting leaders, Sagacious IP has successfully delivered many drafting projects. We have a team of over 300 researchers who specialize in various domains. The objective of our services is to offer our clients the best solution to help overcome challenges. Click here to explore more about this service.

-Yojit Bhugra (Engineering Drafting) and the Editorial Team

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Optimising Patent Expenses for Smaller Corporates - A Case Study - Sagacious IP

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Maintain a patent portfolio without establishing an in-house patent department. It also wanted to manage costs and keep the patent expenses

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IP Diligence: Factors European Innovation Companies Must Consider While Entering Indian Market

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IP Diligence: Factors European Innovation Companies Must Consider While Entering Indian Market

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The world is currently grappling with the after-effects of the pandemic. In this scenario, the main challenge for a company lies in exploring various new ways to keep the business going. Projected to have a high gross domestic product (GDP) and a strong start-up ecosystem, India is emerging as a lucrative market for companies that are eyeing expansion. Read more about IP Diligence here: https://sagaciousresearch.com/blog/ip-diligence-factors-european-innovation-companies-must-consider-while-entering-indian-market/

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Patent Filing Trends Associated with Power Dissipation in Blockchain

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Patent Filing Trends Associated with Power Dissipation in Blockchain

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The worldwide blockchain market is expected to increase from USD 4.9 billion in 2021 to USD 67.4 billion by 2026, indicating that blockchain technology is rapidly gaining traction. In this situation, it is critical to understand the specifics of this technology as well as the patent trends linked with it in order to assist organisations in maximising potential. The following article delves into blockchain technology, bitcoin mining, market trends, and blockchain energy consumption-related patents. Read more about patent filing here: https://sagaciousresearch.com/blog/patent-filing-trends-associated-with-power-dissipation-in-blockchain/

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Protecting Graphical User Interface (GUI) under Indian National Design Policy

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Protecting Graphical User Interface (GUI) under Indian National Design Policy

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Xerox Corporation invented the Graphical User Interface (GUI) in the late 1970s. It was Steve Jobs who was the first to see its commercial potential. The notion of GUI was included into Apple's operating system Lisa when it was recognised for its genuine usefulness. Microsoft later implemented the same approach in its Windows operating system. Microsoft was promptly sued by Apple, which was then sued by Xerox. All three parties eventually reached an amicable settlement.

GUI has become a vital and indispensable aspect of the software product industry as technology has advanced and electronic gadgets have grown more common in our daily lives. Read more about National Design Policy here: https://sagaciousresearch.com/blog/protecting-graphical-user-interface-gui-under-indian-national-design-policy/

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Patent Trends in Big Data Analytics: Dominating the Digital Era

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Patent Trends in Big Data Analytics: Dominating the Digital Era

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Traditional data that is structured in a way that makes it easier to manage and alter has been stored and processed by relational data management technologies for decades. People are generating an enormous amount of real-time data as a result of globalisation and the ease with which they can access the internet, which is spread across a variety of social media platforms and streaming services such as Facebook, Twitter, LinkedIn, Instagram, YouTube, Netflix, Hulu, Amazon Prime Video, and others. Big Data Analytics aids in the discovery of hidden patterns, unknown connections, industry trends, and client preferences in order to make informed business decisions. Companies are already experimenting with Big Data Analytics to obtain a competitive advantage. Read more about patent trends here: https://sagaciousresearch.com/blog/patent-trends-big-data-analytics-dominating-digital-era/

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Patent Trends in Big Data Analytics: Dominating the Digital Era - Sagacious IP

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Companies are already innovating in the Big Data Analytics space to gain an edge over their competition. Patent trends play a key role in

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Patent Mining: Unlocking the Latent Value of your Patent Portfolio

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Patent Mining: Unlocking the Latent Value of your Patent Portfolio

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Despite the disruption created by the COVID-19 epidemic, the number of patent applications has increased. In 2020, about 3.3 million patent applications were filed, representing a 1.6 percent increase over 2019. This vast patent database offers a once-in-a-lifetime opportunity to gain meaningful business insights. We have patent mining to make sense of patent data, which is similar to data mining. Patent mining is the process of extracting specific patents from a large database. To improve the portfolio's efficiency, it comprises identifying IP assets to licence, sell, abandon, or buy. Patent mining is done with business objectives in mind and can be done manually or automatically using cutting-edge software. Read more about patent mining here: https://sagaciousresearch.com/blog/patent-mining-unlocking-the-latent-value-of-your-patent-portfolio/

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Despite the disruption caused by the COVID-19 pandemic, the number of patent filings has been on an upswing. Almost 3.3 million patent applications were filed in 2020, recording an increase of 1.6% as compared to 2019. This extensive patent data presents an unprecedented opportunity to derive actionable business insights out of it. Similar to the concept of data mining, we also have patent mining to make sense of patent data. Simply put, patent mining is the act of mining specific patents from an extensive database. It entails identifying IP assets to license, sell, abandon, or acquire to enhance the portfolio's efficiency. Patent mining is done with business goals in mind and could be performed manually, or automatically with state-of-the-art tools.

This article will discuss the concept of patent mining, its need, several tasks involved, and more.

What is the Need for Patent Mining

The five basic needs for patent mining are shown in Figure 1.

Figure 1: Five Basic Needs for Patent Mining

1. Optimize Patent Portfolio: Optimizing a patent portfolio is a significant problem for organizations investing in a continuous stream of new patents. Identifying the patents of interest in a large patent pool requires specialized skills and experience. Patent mining has emerged as a tested tool to address this challenge. There could be several benefits of patent portfolio optimization, including pruning for high-value patents, finding technology-relevant patents, or discarding patents that seem to exhaust an organization's resources.

2. Competitor Analysis: Although there are new and old techniques for conducting competitor analysis, patent mining is more ingenious and reliable. Digging into a competitor's patents can reveal exciting insights into your adversaries' direction, technology, and consumer-friendly features. Besides, by analyzing the competitor's patents, a company can develop a strategy that may help it stay ahead of the curve in the future.

3. Understand New Technology Trends: The technology landscape has become steep in the last decade or so. Understanding the existing and emerging technologies is imperative to make a mark in a new market. The system of patent mining facilitates technology road mapping. The technique helps to compare the stage of technological maturity accomplished by the organization vis-à-vis its competitors dominating the technology. Moreover, an organization can leverage the information to explore new technical partnerships, technology transfers, or even the acquisition of a start-up.

4. Create Dynamic Patent Revenue Model: Patent mining enables a business to identify patents strategically essential for other players in the market. Thus, the exercise allows the monetization of old patents by selling or licensing them to create a dynamic patent revenue model. Since technology penetration is not always swift, patents related to relatively obsolete technology can also be valuable for some organizations in an industry.

5. Patent Infringement Analysis: Conducting infringement analysis on an exhaustive set of patents is both a time-consuming task and an out-of-date approach. Patent mining helps to narrow down the datasets based on their relevancy. Once the dataset is identified, patents are ranked and classified into different batches. The size of a single batch could range from one hundred to five hundred patent families. Patents with broad claim scope, low or negligible detectability issues, and a higher likelihood of infringement are marked as 'T1'. This step ensures that most of the effort is invested in patents with a higher possibility of infringement.

After discussing the basic needs for patent mining, it is crucial to understand how it is used for infringement analysis.

How Sagacious IP Uses Patent Mining for Infringement Analysis

There are five significant steps for a compelling infringement analysis in Patent Mining. These are shown in Figure 2.

Figure 2: Five Major Steps in Patent Mining for Infringement Analysis

1. Extracting Relevant Dataset

The first step in patent mining is to extract the relevant patent dataset as per the client's requirement. For instance, the need could be to identify patents relating to a specific market segment, technology segment, or a company. In certain cases, it could just be an exemplary market product.

An exhaustive list of relevant classes and keywords is identified, which is used to extract a broad set of data. Assignee and inventor-based search is also performed to extract the dataset.

Ensuring the usage of the correct database to extract data for jurisdiction-wise exhaustive coverage is also an essential factor.

Basis the size of the extracted dataset (and the client's budget), quick manual filtering is subsequently performed to remove the irrelevant data or the false positives. The step provides a much more relevant dataset to work with before moving to the next step, i.e., automated ranking.

2. Automated Ranking

After identifying the patent dataset, the next step is to perform an automated ranking of the overall dataset. Here, patents within the dataset are relatively ranked based on objective parameters. These parameters include the number of forward citations, number of backward citations, claim count, pending life, big assignee count, number of family members, independent claim length, prosecution time, etc. In addition, in case where the objective is to identify relevant patents against a particular target company (say, X), the factor "forward cited by X" is also considered for ranking the patents.

Though citation analysis helps identify high-impact patents, as raw citation counts tend to favor older patents, it is important to compare patents against all U.S. patents from the same patent classification and issue year, in terms of the number of citations received.

The automated ranking aims to segment the comprehensive list of patents into smaller batches and prioritize a set of patents that has a higher likelihood of infringement for analysis. The action helps deliver a better outcome in less time.

3. Triage/T-ranking

After the automated ranking is complete, patents ranked higher in the list are prioritized for analysis.

For each batch of patents (batch size could be 100-500 patent families), manual analysis is performed where we invest some time in quickly reviewing the title, abstract, and claims. Then, basis the claim scope, likelihood of infringement (for example, in general, or against a particular product category), and infringement detectability, patents are ranked as T1, T2, and T3. While performing such analysis on a patent family, claims of parent patent as well as continuation, and divisional applications are also considered to identify the broadest set of claims in the family. Patents with broad claim scope, low or negligible detectability issues and higher likelihood infringement are marked as T1.

4. Detailed Infringement Analysis

At this stage, a more deep-dive review of the patent specification and file wrapper is performed to understand the patent's novelty. The patent specification also provides cues on each patent's possible areas of application.

We select the broadest independent claim for each patent for performing the analysis.

Once the market areas or applicable product categories are identified for a patent, the top players by revenue/popularity are identified and analyzed for the concerned market segments/product categories. The intent is to identify companies with high revenues as the infringing targets.

For a given target or company, we try to analyze documentation (product manuals, datasheets, source code, research papers), demo videos, etc., as published by the company itself (as it is more credible) to assess the infringement potential. If required, we also rely on credible third-party sources to understand the product functionality/features, etc., to ascertain infringement.

In scenarios where reverse engineering is required to showcase mapping for one or more claim elements, we try to identify as much evidence from public documentation as possible, and advise clients on reverse engineering accordingly.

5. Claim charting

Once we have identified infringing targets, we prepare a claim chart for the specified targets.

Depending on the client's budget and on the end objective, we prepare charts with different levels of resolution. Suppose the aim is to merely conduct soft/high-level negotiations with a particular defendant for an out-of-court settlement, then we prepare one or two slider charts where concise/high-level mapping is presented to showcase infringement. However, for cases where litigation is to be initiated, we prepare in-depth or high-resolution charts where the features of the claim are broken to the nth level, and evidence for every claim clause is presented in a detailed manner.

Besides, corresponding excerpts from the specification are also presented to showcase how the patent specification supports the alleged infringement.

The analysis comments are also provided for each claim element to narrate how they correlate to the corresponding product functionality.

Color coding of claim elements is a preferred practice where each claimed feature is provided a unique color. The corresponding evidence is also highlighted with the same color for ease of product to claim correlation.

Now that we have discussed the need for patent mining and how Sagacious IP uses patent mining for infringement analysis, we will turn our focus towards patent mining tasks and techniques that produce the best results.

What are Patent Mining Tasks and Techniques

A patent document contains both structured and unstructured data. Structured data are consistent semantics and formats (patent number, filing date, inventor, issued date, and assignees). Unstructured items, however, contain text content that is different in length (such as claims, abstracts, and descriptions of the inventions). While this well-defined structure of patent documents aids in analysis, patent mining remains a challenge. This is where the patent mining tasks and techniques come in. While tasks are specific pieces of work that need to be carried out to complete the process of patent mining, techniques are ways in which a task can be completed. You can check out various patent mining tasks and techniques in Table 1 below.

1. Patent Retrieval: The two most critical techniques for patent retrieval are query generation and query expansion. A typical procedure for patent search and retrieval can be divided into four steps as shown in Figure 3.
Step 1
Construct the Retrieval Query: The initial task is to determine the kind of patent search depending upon the objective of patent retrieval. Afterward, the search scope is identified, and a search query is constructed.
Step 2
Execute the Query and Review the Results: In this stage,the query constructed in Step 1 is performed. First, the users receive the results with relevant documents. Then the user verifies the returned results to decide whether the documents are as desired or not. If the results are favorable, the user jumps to step 4. Otherwise, they move to step 3.
Step 3
Refine the Retrieval Query: If the user is not satisfied with the results of executed queries (i.e., there are very few results, too many documents, or unrelated documents), they must refine the search query to obtain better results. The user can put extra constraints in the query to trim unnecessary documents, remove additional restrictions to get more results, or replace the keywords for relevant results.
Step 4
Assess the Returned Results: Once the user has carefully reviewed the returned documents, they draft a search report depending on the task in compliance with the patent law and regulation. The search report usually contains - a synopsis of the invention, classification codes, retrieval tools and databases for search, pertinent documents, query logs, and retrieval conclusions.

Despite the progress in patent retrieval tools and techniques, the task is still challenging from many perspectives. Therefore, it is crucial to understand some common obstacles before proceeding with patent retrieval. These are mentioned in Table 2 below:

2. Patent Classification: The second task involved in the patent mining process is patent classification. There are numerous challenges to it. Three important ones have been listed below.

Patent documents contain complicated structures, loquacious pages, and rhetorical descriptions, adding to the difficulty in extracting valuable features. This makes automatic patent classification a challenging task.

The hierarchical structure of the patent classification outline is complicated, with an estimated 72,000 subgroups in the bottom level of IPC taxonomy.

The large volume of patent topics and their increasing variety aggravate the hardship of automatic patent classification.

Two effective techniques have been developed for better patent classification to overcome these challenges:

1. Using Different Resources: The bag-of-words (BOW) model is frequently used to represent unstructured text documents. This model selects terms and phrases based on structural information and frequency to represent patent documents. Afterward, the Vector Space Model, Naïve Bayes, and KNN (K-Nearest Neighbor) classification models are used to categorize patent documents. The performance of the KNN-based classifier is usually better than the Naïve Bayes in patent classification. The soaring popularity of the BOW-based representation stems from its simplicity. However, it is challenging to demonstrate the relationship among terms using the BOW-based model. But the issue can be addressed using sematic structural information that facilitates patent classification. The sematic structural information consists of six tags: technology field, claim, purpose, method, explanation, and example. First, a new representation is generated for a given patent document based on the semantic tags. Then the similarity is ascertained based on semantic tag and term frequency. Eventually, the KNN-based model is employed to classify patents automatically. Not surprisingly, the approach has achieved an improvement rate of 74% in Japanese Patent Classification.

2. Using Different Classifiers: The classification accuracy varies depending on the algorithm used and parts of a patent document (title, claim, and first three-hundred words of the description) utilized. For example, Support Vector Machine (SVM) produces the best result for class-level patent document categorization. It utilizes the first three-hundred words of the description for demonstrating patent documents.

3. Patent Visualization: It is the third task in the patent mining process. The complex structure of patent documents limits the capability of an analyst to comprehend the core idea of the patent. The solution to the problem is patent visualization, which helps quickly identify the correlation between different patent documents. The three ways of patent visualization are listed below:

Structured Data Visualization: In this way of patent visualization, structured data, including patent number, issued date, filing date, and assignees, is utilized to produce a patent graph. The primary resource used for graph generation is the citation information in different patents. The citation graph makes it easy to identify interesting patterns concerning specific patent documents. An example of structured data visualization is shown in Figure 4.

Here, the 20 nodes represent 20 prolific companies in terms of patents while each edge represents a citation between them. Each node's size is proportional to the number of citations received by it.

Unstructured Data Visualization: This helps in reducing domain knowledge dependence. Unlike citation analysis, the content-based patent map has significant benefits in extracting latent information and global technology visualization. We can generate several kinds of maps from the unstructured text in patent documents, including technology vacuum map, technology portfolio map, and claim point map. An example of unstructured patent data visualization is shown in Figure 5.

Hybrid Data Visualization: Structured and unstructured data are often combined for better visualization. Unlike the conventional technology vacuum map built entirely on patent content, the hybrid approach combines bibliographical information, such as file date and assignee information, to generate the patent maps. As a result, it facilitates better comprehension of technology trends in shaping R&D strategies.

4. Patent Valuation: This is the fourth task in the patent mining process. The practice and procedure of evaluating the relevance/quality of patent documents is defined as patent valuation. The aim is to aid internal decision-making pertaining to patent protection strategies. One example is the collection of related patents called patent portfolios to form a super patent pool. However, the pressing question is how to calculate the potential benefits of patents to select the most crucial ones. The solution to this issue is utilizing two patent evaluation techniques - Unsupervised Exploration and Supervised Evaluation.

5. Cross-Language Mining: The primary aim in cross-language patent mining is cross-language information retrieval with the query written in a familiar language. In general practice, a cross-language patent retrieval system is constructed using two techniques - semantic correspondence and machine learning.

Conclusion

We can conclude from the above-mentioned details that patent mining can unlock the tremendous potential of a large pool of patents. However, a desirable result is subject to the condition that the above-discussed tasks and techniques are well executed. Apart from infringement analysis, patent mining is also helpful for other types of search and analysis - prior art search & analysis, patentability search, invalidity search, legal status search, etc. All search and analysis results provide a competitive edge to a business. Although patent mining tasks and their techniques can be performed independently by an organization, it is advisable to avail the services of a reliable law firm with expertise in the field.

Sagacious IP has carved a name for itself through twelve years of distinguished service. It has delivered more than 25,000 projects globally with four delivery centers and offices in six countries. In addition, the company has acquired an enviable clientele by serving more than 5000 clients with next-generation IP solutions. Moreover, through our Patent Mining services, we help clients identify technology to license or sell marginal assets to generate revenue, donate or even abandon assets to reduce costs, and identify acquisitions to strengthen or expand an existing portfolio. Click here to know more about this service.

-Abhinav Mahajan (ICT Licensing) and the Editorial Team

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Patent Mining: Unlocking the Latent Value of your Patent Portfolio - Sagacious IP

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Despite the disruption caused by the COVID-19 pandemic, the number of patent filings has been on an upswing. Almost 3.3 million patent applications were filed in 2020, recording an increase of 1.6% as compared to 2019. This extensive patent data presents an unprecedented opportunity to derive actionable business insights out of it.

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FTO Search: A Cog in the Wheel of Patent Strategy

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FTO Search: A Cog in the Wheel of Patent Strategy

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In the twenty-first century, the contours of intellectual property rights are more complex than ever. As a result, it's not surprising to see businesses devote a significant portion of their money to its preservation and enforcement. In addition to safeguarding your patent rights, it is critical not to infringe on the rights of others, as this could jeopardise your company's smooth growth. As a result, doing clearance analysis (with the instruments at hand) to investigate any infringement possibility has become common procedure for enterprises. One such tool is Freedom-to-Operate (FTO) Search, which is used by companies all over the world at various phases of product development. Read more about FTO Search here: https://sagaciousresearch.com/blog/fto-search-a-cog-in-the-wheel-of-patent-strategy/

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The contours of Intellectual Property rights are more challenging than ever in the twenty-first century. Which is why, it is no surprise to see organizations investing a fair share of their revenue on its protection and due enforcement. Besides protecting your patent rights, it is also imperative not to infringe on someone else's rights, as it may be detrimental to the seamless growth of your organization. Therefore, it has become a standard practice for organizations to conduct clearance analysis (with the tools at disposal) to explore any infringement possibility. Freedom-to-Operate (FTO) Search is one such tool utilized by organizations across the globe at different stages of product development. Having said that, the question that often bogs an inexperienced professional is "what is FTO search and how to conduct it?".

FTO search, also known as clearance search or infringement analysis, examines whether a product or a process infringes on any claim of an active patent. Moreover, it helps to identify potential roadblocks that may need licensing or invalidation, guide product design decisions, and uncover design-around technologies.

This article is a comprehensive discussion on FTO search and how it has become a strategic tool for an organization to stay ahead of the curve.

How an FTO Search differs from Patentability (Novelty) Search

While a cursory observation reveals little difference between an FTO and patentability search, the difference (shown in Table 1) is understated and rather critical for organizations. A patentability search is conducted to check whether a new invention is unique over an existing prior art. On the other hand, an FTO search is focused on finding the risk (or the working method) of a product infringing over a third-party's patent. A patent right (being negative rights) in itself does not grant freedom to access the market. This means that a patent is not a guarantee on non-infringement of third-party rights - and is precisely the reason for performing a freedom to operate search/analysis.

* NPL: Non-patent literature (NPL) includes technical standards, scientific publications, clinical trials, conference proceedings, manuals, books, technical or research reports, or any other technical, scientific material that has already been published in the public domain.

Let us understand the difference with an example. Suppose a new invention encompasses features ( 1+2+3+4); this new combination is considered novel over prior art that reveals features ( 1+2+3). Moreover, the new feature " 4 " is novel, too, as it is not an obvious or routine modification of the prior art. Figure 1 illustrates a real-life example of prior art citation and patent getting granted as the prior art, on the whole, does not cover the core area of the research for which the patent is requested.

In an FTO search, if a new product feature encompasses ( 1+2+3+4) features, this combination will infringe on an earlier claim that only contains elements ( 1+2+3). Conducting an infringement analysis will consist of two essential steps:

The first step will be claim construction to determine the scope and meaning of each patent's claim limitation.

The second step will be proper claim construction for a suspected infringing product or a process.

Now that we have covered the difference between patentability and FTO searches, it is crucial to know the types of FTO searches and their applications.

Different Approaches Adopted by Organizations for FTO Analysis

Although there are many types of FTO analysis performed by organizations, it can be broadly categorized into three major segments (shown in Figure 2).

1. Competitor-Specific Analysis: Quite often, companies conduct competitor-specific searches to ensure that their products are not infringing on the intellectual property of their competitors. Competitor-specific analysis is the least that companies undertake when there is a high probability of competitors protecting similar inventions. The analysis also makes sense as the likelihood of receiving lawsuit notice from competitors is probable than from companies with similar patents but different core business.In this analysis, the search results reveal patents belonging only to the competitor. The outcome of the investigation is to determine whether the commercialization of the service or product may prove problematic given the patent rights of a competitor. Although this kind of FTO analysis provides a reasonable indication of the risk of entering a marketplace, there is still a probability of patent rights held by non-competitors posing a problem from an infringement perspective.

2. Feature-Specific Analysis: The second type of FTO analysis focuses on examining third-party patent rights related to specific features or aspects of a new product or service. Other features are not considered for analysis as a company's interest does nor overlap with them. For example, take the case of a new car engine with self-diagnostic capabilities. The feature-specific analysis for this case would be examining third-party patents in the domain of self-diagnostic engines. But, the other aspects, such as operating characteristics and engine design, are ignored. The result of this analysis indicates contentious patents related to single technical aspect, i.e., self-diagnostic capabilities of the new product. Although cost-effective, this type of FTO analysis has limitations as other features of a patent (not identified) could prove problematic.

3. Comprehensive FTO Analysis: This is a thorough FTO analysis as it covers all the patents (competitors and non-competitor) and its features that need to be commercialized. Comprehensive FTO analysis provides the most integrated information and thus the assurance of non-infringement while commercializing a product or service. Although effective, it is costly in terms of time and financial resources needed for investment.

Apart from understanding the types of FTO search, it is also imperative to know the suitable time to perform an FTO search and who should perform it.

When and Who Should perform an FTO Search

As in other aspects of life, timing is also critical in an FTO search. Often, organizations are confused about when to perform an FTO search. However, the FTO search yields the most productive results in three phases (Figure 3).

1. Early in the Product Development Cycle: Conducting an FTO search in the initial stages of the product or process development cycle is beneficial in the following ways:

It helps to decide the optimal allocation of resources and minimizes financial consequences during the early stages of product or process development.

Minimizes the risk of time-consuming and costly future litigation and also highlights strategic licensing opportunities in case of possible infringement.

Enables alteration in design around any enforceable patent early on in the product or process development lifecycle.

2. Before Launching a Product in the Market: If you are looking to reassure existing shareholders and investors, conducting an FTO search before launching or continuing a product is the right way to proceed. It ensures an extra degree of confidence to support the business decision to launch or continue the product line in the market. FTO search at this time might also highlight potential untapped markets that could be exploited by using, selling, or licensing the invention. Suppose the FTO result is unfavorable with a high probability of litigation, then the organization can resort to below-mentioned measures:

Approach the organization owning the patent for licensing or buying

Oppose or invalidate the relevant patent

Modify the product to eliminate the probability of possible infringement

Cancel the plan of launching or introducing the product in the market

3. After Receiving a Granted Patent: Conducting an FTO search after receiving a patent grant helps identify the changes in the existing technology landscape since its disclosure. Moreover, it helps to identify competitors and possible patent infringement cases that could be defended via the enforcement of granted patent rights. On the positive side, for a start-up, FTO report proves invaluable while pitching for investment. The result of the report helps investors grasp the potential of an idea and assess the possible infringement risk in the future.

Once you determine the optimal time to conduct an FTO search, it is equally important to understand who should perform it.

Who should conduct an FTO Search?

Any organization or an individual can perform an FTO search to determine whether it has the clearance to operate/use an invention/product in a specified jurisdiction. Besides, individuals or organizations can also conduct an FTO search when planning these activities:

Launch new products

Explore new licensing opportunities

Expand to new market

Before raising initial funding and investment (for start-ups)

Prior to making a hefty product development related investment

Having stated when to perform an FTO search and who should perform it, we will discuss the implications if you don't conduct an FTO Search.

What Happens if You Don't Perform an FTO Search?

An FTO search is a part of due diligence exercised by an organization before launching a product in the market. It is interesting to know what happens if an organization with a small investment and low ROI or high tolerance for risk does not perform the clearance/infringement analysis search. The risk associated with not performing the search is fraught with consequences, as shown in Figure 4.

1. Reputational Damage: When your organization's name is dragged in a lawsuit related to patent infringement, it causes immense reputational damage that can take years to restore. The infringement raises a question on the integrity and work ethics of an organization. Therefore, despite a stellar track record, it is crucial to protect your organizations' name by minimizing infringement lawsuits.

2. Development Cost: The development of a new product is a culmination of years of hard work and research. A patent infringement lawsuit and subsequent verdict in favor of the litigator forces you to cancel the product launch and commercialization of the invention. As a result, the development cost incurred in conceiving and developing the invention produces no results.

3. Product or Service Withdrawal: A patent infringement lawsuit limits your capacity to continue with the product or service launch in the market unless categorically permitted by a court of law. The resources (time, money, and personnel) utilized for product or service launch is squandered away. Moreover, the product or service withdrawal garners unwanted attention from the media and consumers.

4. Legal Costs: The legal cost associated with a disputable patent infringement can extend to millions of dollars. Such a large amount can cause a dent in your financial resources. Apart from that, the time and resources spent tackling litigations can cause an enormous burden on the growth of your organization.

To avoid the above-discussed risk, you must perform an FTO search based on your requirement and budget. However, there are pitfalls of not completing it or performing it inaccurately, increasing the risks.
Five Regular Pitfalls of Freedom to Operate Analysis
The five main regular pitfalls of freedom to operate analysis are shown in Figure 5.

1. Myopic Claim Setting: One of the mostcommon mistakes while performing an FTO search is focusing too much on existing threats and ignoring the possible future threats. Although granted patents present an immediate threat to the proposed product, the approach is rather short-sighted and overlooks the possible future threat. A complete FTO analysis should also include published patents (both within jurisdiction clearance and international applications) for examination. The underlying logic is that the published patent being examined may get granted with claims that you might end up infringing in the future.

2. Incorrect FTO Relevance Criterion: FTO search is often treated as just another patent search. The patent analyst uses the same selection criterion (novelty and non-obviousness) to FTO searches that filter the relevance of potential prior art. Although these are the correct factors for patentability or validity searching, they are unsuitable for conducting an FTO search. The change in search criterion from patentability to an FTO search is subtle but essential. The focus of the search should be on spotting claims that affirm that the product or a specific feature bears resemblance to the prior art.

3. Sole Focus on Claims: It is a standard practice to solely focus on the clearance search around the claim of an existing patent. However, it also opens up unavoidable risks. For example, a person filing the patent application for a grant is a subject matter expert and places more non-descriptive language throughout the specification while returning to generic language in the claim. As a result, a simple observation might not reveal any possible infringement with the claim. But, the interpretation of the claim through non-descriptive language definition in the specifications will establish the case of infringement. The solution to this problem is reviewing the entire specification and not limit to just claim search.

4. FTO Wanted (Dead or Alive): Patent analysts love the functionality that modern search system offers by filtering out patents as per the legal status. The modern search system can filter the results to include only unexpired, enforceable (alive) patents or expired, unenforceable and lapsed (dead) patents. On paper, this functionality appears excellent as it reduces the noise by eliminating redundant patents. However, a more profound insight reveals an entirely different story. The lapsed patents that are currently unenforceable are not truly dead as it can be revived after payment of maintenance fees. Most jurisdictions across the globe provide a grace period for the revival after payment of penalties and fees. Unfortunately, the search system does not indicate patents that could be revived and enforced in the future for infringement.

5. Ignoring Non-Patent Literature (NPL): This point might come as a surprise to you as NPL is not under estimation while checking the possibility of a product infringing a patent's claim. However, NPL may appear in the future when you are least expecting it. NPL forms a vital source to recognize future threats. Fortunately, you can mitigate the risk by shortlisting organizations and companies working on technology related to your product under clearance. Investigation of NPL is critical thanks to the grace period provided to the applicants during which they can publish blogs, papers, podcasts and videos.

To counter the above-discussed pitfalls, our next section covers how Sagacious IP offers a unique approach to FTO search when compared to its competitors.

Adopting Unconventional Approach to Deliver Quality Results

Sagacious IP has an unconventional and comprehensive approach to FTO analysis with multiple language search options. We conduct an in-depth search to pick out patents with claims that could pose a challenge to selling or manufacturing a product or practicing a process in a particular jurisdiction. Our search results have actionable insights to assist in making impactful business decisions. Our comprehensive FTO searches include the below-mentioned results:

Patent categorization with relevance to indicate the threat level

Claim chart mapping against the product information

Accurate legal status of the identified documents

Claim restriction of the related patents

Native language capabilities in 16+ languages, including CN, JP, KR, FR, and DE

Legal opinion on demand

FTO Search Report Format:

MS PPT Report: The report includes a visual technical analysis based on the identified references. It also provides claim chart mapping of the relevant identified references.

Excel report: An excel file that includes keywords, IPC classes, search strings, project methodology, patents mapping as per the provided product's essential features, and many other details related to the project.

Why Choose Sagacious IP

Product review - comprehensive identification of features - both state of the art & protected. We cover every component from all perspectives - method, system, individual parts of the product, and combination thereof.

Understanding of laws from different countries - considering broadest claim scope - infringement possibility.

Also, the claim construction is taken to be broadest possible - keeping prosecution history & specification support in mind.

Comprehensive searches covering broadest possible claims - multiple iterations.

80+ countries covered - even some obscure countries are covered - including different rights, utility patents, utility models & design rights.

Accurate legal status analysis.

Analysis based on latest claim sets.

Detailed mapping reporting with expert comments on each result - visual mapping also available to show how claims are relevant for the product.

Quarterly updates available for FTO search reports - covering legal status changes, claim changes in previously identified results, and new results.

Liability Insurance is also applicable and covers our reporting.

We design the communication to cover the FTO search reporting under attorney-client privilege.

We can also conduct structure & sequence-based searches, including expertise in Markush structure searches.

To know more about our FTO searches, check our samples.

In this section, we understood the capability and expertise of Sagacious IP. The next point of our discussion is to address the FTO search issues by sticking to best practices for conducting an FTO search.

Best Practices for Performing an FTO Search

The nine best practices for conducting a FTO search are shown in Figure 6.

1. Focus on Key Features: Performing an effective FTO search becomes easy if you select the key features correctly. Ideally, they should be unique and self-explanatory. One of the potent ways of finalizing the key features is the comparison method, where all the special features are analyzed against each other, and the best ones are selected. Besides, the client and the searching firm should also devote time in identifying and finalizing the main key features for the search.

2. Jurisdiction Coverage: An FTO search is generally conducted considering the jurisdictions in which the client is planning to launch a product. A good search must cover all the mediums related to particular jurisdictions to provide the best quality search. For example, applicants can file a patent in Germany (DE) through various mediums, such as the German patent office, World Intellectual Property Office (WIPO), or EPO with DE as a designating state.

3. Date Restriction: This is another critical factor while conducting an FTO search. Usually, the patent filed in the last 20 years is considered significant in jurisdictions of interest. In addition, for WO/PCT applications, a period of the previous 31 months is relevant within jurisdictions of interest. Apart from that, the concept of patent term extension plays a crucial role in domains of food additives, color additives, human and veterinary pharmaceuticals, medical devices, etc. The term extension is intended to restore a section of the patent term awaiting regulatory approval for the safety and efficacy of the product. However, the patent term cannot be extended beyond five years. For example, if a product is under clinical trial and regulatory review, the patent term can be extended for some time. Hence, it is crucial to change the date restriction to cover the domain with patent term extension.

4. Targeting Important Players: While performing an FTO search, customize your search strategy to include the leading players of your domain with an impressive array of patent portfolios. The searching efforts should be focused on evaluating such patent portfolios. Moreover, search strings that capture essential patents assigned to any patent troll has to be separately analyzed and mentioned independently.

5. Segregating Patents into Different Sets: The efficacy of an FTO search can be significantly improved by classifying the entire patent result set into different subsets based on claim length and legal status.

6. Citation Search: The forwards and backward citations in patents are the closest results in that domain. It is a healthy practice to conduct a citation search of the shortlisted patents. The exercise helps identify missing patents while searching due to a combination of factors such as missing keywords, missing classifications, translation mistakes, etc. Therefore, citation search is crucial to bolster the FTO patent search and offer full-proof coverage.

7. Similarity Search: Many existingsearching database offers similarity search features, a vital aspect of FTO search analysis. In many instances, the feature helps recognize the close prior arts that are missed. Assuming every related patent is significant from an FTO perspective, it is wise not to miss such a standard searching process to capture all the patents that disclose similar inventions.

8. Dynamically Updating Keywords & Classifications: To spot new and diversified keywords used to disclose the invention, use dynamically updated keywords and classifications. Moreover, classification should also be tracked through the entire search process to understand classes with most patents of interest. You should develop the habit of updating keywords to ensure that no obvious patents are missed and a quality search is performed.

9. Report the Findings: Thejob of an FTO search is a high stake one. Therefore the findings of the report should be structured to avoid any ambiguity. Moreover, the findings have to be easy to comprehend for the reader. Therefore, a well-drafted FTO report should include the following points, categorization of results, order of results, updated legal status, and latest claims. For more information, click here.

One can reap many benefits by following the best practices for performing an FTO search as explained in the next section.

Advantages of Performing an FTO Search

The advantages of an FTO Search are shown in Figure 7.

1. Save Development Cost: FTO searches can be carried out at the initial stages of product development to save substantial development costs incurred while preparing products that are bound to infringe and avoid related infringement charges.

2. Explore Expired Patent Technology: While conducting an FTO search, you will come across interesting expired patent technology that might be similar to yours. Taking inspiration from older patents, you can rework your plan to go with a better invention than initially thought.

3. Assess the Possibility of Buying Relevant Patent: In the midst of performing an FTO search, the result might throw up unexpected surprises with similar patent technology. It is a good idea to weigh the pros and cons of acquiring such a patent for enriching your portfolio and cutting out any scope for future infringement.

4. License the Patent: If the patent owner is unwilling to sell the patent, licensing is another option that could be explored. Licensing eliminates the risk of litigation if two patents and its claim seem similar to each other. You can always avail the service of a third party to walk you through the details of licensing.

5. Redesign the Product: If the result of an FTO search is negative, you can get back to the drawing board and redesign the product in a way that does not infringe any existing patent technology and claims.

6. Understand Competition and Market Strategy: While meticulously performing an FTO search, you also get business insight on your competitors and relevant market strategies that are critical in acquiring or retaining new/old customers.

Despite its many benefits, the FTO search results may not always be favorable. Therefore, understanding what happens if you have a negative clearance result from an FTO search is also crucial.

What to do in case of a Negative FTO Search Result

Suppose you don't have the freedom to operate from the result of the clearance search. In this scenario, there are four viable options (shown in Figure 8) available.

1. Invalidate Rival Patent: This is the first option on the table. However, you should explore the alternatives only when you are reasonably confident about finding prior art related to the rival patent. Sometimes, the patent examiner overlooks significant items of prior art alone or in combination with other prior art that could invalidate or limit the claim of the patent. Moreover, the patent examiner pays greater attention to patents and scientific publications than prior arts such as blogs, forums, and commercial websites. The action opens up avenues of invalidating the patent by highlighting the related prior art.

2. Obtain License for Technology: If yourpatent seems to be infringing on another's patent, obtaining a license for a specific duration is the way to proceed. Licensing the technology makes you impervious to the future threat of infringement.

3. Cross-Licensing: This has become very popular in modern organizations. It takes place when two parties are interested in each other's technology intending to reap significant benefits from it. Cross-licensing is mutually beneficial for parties in agreement.

4. Redesign the patent: If licensing or buying the patent is out of the discussion, you can always redesign the patent so that it is not infringing on the claims (subtle and evident) of the infringed patent earlier.

Now that we understand the options available when the result of the FTO search is negative, let us cover an impact story in which Sagacious IP was involved.
Custom Patentability & FTO Search for a Leading US-based Food Company
A renowned US-based food company approached Sagacious IP with a unique patentability & FTO search requirement. As part of the project, the client wanted to iteratively work with it to refine their products with quick patentability searches followed by a comprehensive FTO search. The final reports helped the client file robust patent applications and achieve infringement-free products. Click here to know more.

Conclusion

An FTO search is a vital tool in an impeccable business strategy. Based on the results of an FTO search (positive or negative), you can execute your plan with full conviction. Furthermore, the search can be performed in-house (with capable resources) or outsourced to a reliable third party such as Sagacious IP.

Intellectual property has emerged as a vital strategic tool for organizations in the last few decades. Sagacious IP was founded with the goal of offering cutting-edge IP solutions to provide a competitive edge to organizations. The company's focus on creating personalized IP solutions has won appreciation from industry stalwarts. In 12 years, it has delivered more than 25,000 projects in 16+ languages covering multiple jurisdictions. In addition, through its FTO search service (32,000 hours of FTO search and 400+ FTO projects completed), it helps clients identify roadblocks and guide businesses in making sound decisions. Click here to know more about this service.

Nitin Sharma (Engineering Searching) and the Editorial Team

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FTO Search: A Cog in the Wheel of Patent Strategy - Sagacious IP

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The contours of Intellectual Property rights are more challenging than ever in the twenty-first century. Which is why, it is no surprise to see organizations investing a fair share of their revenue on its protection and due enforcement.

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All About Design Patents & Its Impact on Industries

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All About Design Patents & Its Impact on Industries

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Smartphones have become so pervasive in our daily lives that it's difficult to picture a day without one (for most of us). It defined our generation by bringing computing technology into our fingertips. The Great Patent War erupted as a result of this shift in lifestyle, with technological behemoths vying for control. The war for market supremacy has been waged as much in the marketplace as it has in the courts, with technology companies like Apple entangled in some of the most well-publicized legal battles. Read more about design patents here: https://sagaciousresearch.com/blog/all-about-design-patents-its-impact-on-industries/

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Smartphones have become ubiquitous in our daily lives in such a demanding way that it is unfathomable to imagine even a day without it (for most of us). It defined our generation, bringing technology from computers to our hands. This change in lifestyle saw the advent of the Great Patent War between technological giants fighting a fierce battle for dominance. The battle for market supremacy has been fought as much in the marketplace as in the courts, in a clash that has seen technology businesses such as Apple get embroiled in some of the most publicized lawsuits- starting with Nokia vs. Apple in a series of cases in 2009 and 2010. Later on, the first Apple vs. Samsung trial, which took place in 2012, enthralled Silicon Valley and the I.T. industry as it revealed the inner workings of the two private businesses.

The main point of contention between Apple and Samsung was their patents, which covered components of their products via design patents. The dispute highlighted the importance of protecting design through patents in order to save millions of dollars in lost revenue and brand uniqueness.

In this article, we will discuss the various design patent wars fought over the years and how they have shaped various industries.

Design Patents and their Significance

Design patents are issued on the decorative or ornamental design of an item. There are numerous industries where design patent protection is an effective strategy to safeguard your intellectual property. The design of a product is usually what people want to protect because it is something that is visual - it is what draws a person to a product.

Design patents can restrict your competitors from using your designs. In addition, they can fetch hefty settlement payments for the owner of the design and successfully prohibit further knock-offs. Design patents are awarded far more swiftly than utility patents - often in around 9 to 18 months, as opposed to an average of 2.5 to 3 years for utility patents in various industry sectors. And they are granted for a period of 14 years without any additional maintenance fees.

In infringement litigation, design patents can be extremely beneficial. When a competitor duplicates a product directly, it is relatively simple for a jury to compare the photos and determine infringement. It does not necessitate a thorough understanding of technological difficulties. On the other hand, utility patents frequently entail complex technology that can be difficult for a jury to appreciate. It is, therefore, imperative that one's portfolio consists of design patents that can be extremely beneficial in the future.

Now that we understand the design patents and their importance, let us discuss design patent searches and why they are crucial to secure a patent grant.

Design Patent Searches and their importance

A design patent search is all about analyzing existing patents to ensure that a similar or identical design has been previously patented. A design patent is granted if the design is unique, novel, or authentic. It is valid for 14 years from the date of filing. Additionally, it enables an innovator to develop a novel method of designing an existing product. The design patent protects one-of-a-kind design without invalidating an existing patent.

Although design patents are filed for nearly every industry, they are more commonly applied across domains such as furniture, hardware, tools, food preparation, sporting items, toys and games, and communication equipment.

A design patent is often confusing for inventors who are unsure if they require this or a utility patent. The primary distinction between the two is that a utility patent protects the complete product, whereas a design patent protects simply the design. An example is a fresh embossed design on a tissue. Although the tissue is unlikely to be patented due to its long history, however a designer may construct a unique embossed design in the tissue and qualify for a design patent.

A design patent search is critical since it will keep you from replicating an existing patent. Numerous websites allow you to do a search for existing design patents. However, exercise caution when conducting your own search. Certain websites have limitations and will not list all existing design patents.

You can do a search at the United States Patent and Trademark Office (USPTO) library that is closest to you. If you do not have access to a physical library, you can also search for patents using Google Patent Search or the USPTO website, etc. Paid search services for design patents, such as Simple Patents and Quick Patents, may yield more results. The cost of using one of these search tools ranges from $175 to $300 (approx.), depending on the intricacy and services offered.

With a sound understanding of design patent searches and their importance, it is crucial to be aware of the history of design patents.

Brief History of Design Patents

Most people think of utility patents when they think of patents, which are granted for an equipment, a process, a product, or a composition of matter. A utility patent includes a thorough technical description, illustrations (if applicable), and one or more claims. A utility patent's claims outline the components of the invention and define the scope of the patent. In contrast, the design patent relies heavily on the drawings to describe what is protected. A design patent has only one claim. Rather than naming any structures or explaining the design in words, this claim simply refers to the drawings as a standard for what is protected. While utility patents are granted for new, useful, and unobvious ideas, a design patent is granted for an ornamental design of a commercial item. The design of an object is defined by the United States Patent and Trademark Office as the visual qualities or elements shown by the object.

A design patent is an exclusive legal protection for an item's distinct visual attributes. It protects the decorative aspect of something that has some utilitarian purpose. While a design patent may be granted for an utilitarian item, such a patent can only be obtained if the decorative features outnumber the practical features. In the United States, a design patent is not available to protect a design that is primarily utilitarian in character.

Despite the fact that the first Patent Act was passed in 1790, it took another 52 years for the US patent laws to be changed to allow for the patenting of ornamental designs. Patents were granted for any novel and original design for a manufacture; design for printing on fabrics; bust or statue; imprint to be placed on an article of manufacture; or shape or configuration of any article of manufacture in 1842. The design patent statute was then updated in 1902 to merely describe acceptable subject matter as "any new, unique, and ornamental design for an article of production."

While the first design patent was issued to George Bruce in the United States on November 9, 1842, it is quite surprising to note that it did not include any drawings whatsoever. This is quite strange in today's norm since the design process heavily relies on illustrations to cover every aspect of the design in detail. Mr. Bruce's design patent was explained in words rather than claiming the ornamental design, as you would today.

In 2008, the U.S. Federal Circuit altered the design patent infringement test to one of substantial resemblance, making it easier to prove design patent infringement.

Earlier Patent Wars in History

Patent battles are not a new occurrence. They have probably been a part and parcel ever since the invention of an airplane. The Wright brothers, accredited with inventing the airplane, used lawsuits to prohibit competitors from producing airplanes, impeding the growth of the American airline industry. Alexander Graham Bell, the inventor of telephone, was drawn into a patent dispute with his competitors that lasted 11 years and resulted in 600 lawsuits. A well-known example is Bell's lawsuit against Western Union. Initially, Western Union had expressed little interest in Bell's patent when he desired to sell it. The company was more interested in Elisha Gray Patent, another established inventor in the telegraphy field. Eventually the lawsuit was settled in favor of Graham Bell's company.

The digital age has shaped the occurrence of patent battles. In the 1980s, technology firms in the United States and Japan waged a patent war, forcing businesses to " fight patent with patent." By the mid-1990s, this bilateral patent battle had faded, albeit somewhat dramatized by the media. The emergence of patent trolling exacerbated the frequency of patent warfare. This phrase "patent troll", was coined in the 1990s by Intel employees and popularized by Peter Detkin, an Intel executive. Throughout the 1990s, federal courts began reversing earlier patent office judgments. In late nineties, antivirus software companies Trend Micro, Integralis, McAffee, and Symantec were engaged in a patent war. Two years later, there was a tussle between Amazon and Barnes & Noble over patenting " one-click ordering technology." Adding to the list were Sony and Kodak, who began a patent war in 2004 over digital cameras, which lasted until 2007.

Over the last 15 years, patent litigation trends have been dynamic, frequently responsive to legislative, administrative, and judicial developments.

From 2005 until a high in 2011-2012, total patent litigation more than doubled, but has since decreased. The majority of the long-term tendency is due to NPE activities.

Timeline of Apple Samsung Patent Wars

The tale of Apple-Samsung patent war has become a part of boardroom discussion. But do you know that the origin of the story dates back to January 4, 2007, four days before the stellar iPhone was introduced to the world? Apple had filed a suite of four design patents related to the basic shape of the iPhone. Subsequently, in June of the same year, a massive number of color design patents covering 193 screenshots of various iPhone's graphical user interfaces were also filed. ( Source)

The four design patents that were initially filed are discussed below:

D558757: This design patent covered the basic shape of the iPhone, i.e., a flat box with rounded edges. Eight different views (shown in Figure 1 below) of the article were covered in the design patent including front perspective view, rear perspective view, front view, rear view, top view, bottom view, left view, and the right view.

D558756: The design patent included other parts and features of the article, such as connectors, screens, buttons, etc. Eight different views (shown in Figure 2) of the article were covered in the design patent including, front and rear perspective view, front view, rear view, top view, bottom view, left view, and the right view.

D580387: This design patent covered the article's surface finish (glass-like). Eight different views (shown in Figure 3) of the article were covered in the design patent including, front and rear perspective view, front view, rear view, top view, bottom view, left view, and the right view.

D558758: The design patent covered the article's color aspect, i.e. black, silver, etc. Eight different views (shown in Figure 4) of the article were covered in the design patent including, front and rear perspective view, front view, rear view, top view, bottom view, left view, and the right view.

The legal dispute between Apple and Samsung began when Samsung started distributing Android handsets. This led to Steve Jobs, the then CEO of Apple to famously refer to it as a "stolen" product - aka a knockoff of the iPhone. Here's how the tussle between the two unfolded:

Figure 5: Timeline of Apple versus Samsung Patent War

So who won the battle? Both Apple and Samsung were found guilty of infringing on each other's patents during the patent trial. While Samsung was not required to pay the initial $1 billion in damages, it did suffer a humiliating setback. And Apple, which was also found guilty of duplicating several of Samsung's patents, was adamant that the penalty was excessive. The case highlights the significance of protecting and enforcing your design patents to save millions of dollars in lost revenue and brand dilution.
The outcome of smartphone patent war placed the onus on electronics and communication industry to rethink their strategy of designing a product. The litigation cost and the punitive action of court to award whooping amount to plaintiff accelerated a change in design strategy. Unlike previous years, where an existing design could be tweaked and launched in the market was no longer feasible. Consequently, the design patent registration count has been on the rise after the year 2011, as shown in the below-mentioned charts.

How Patent Wars Impacted Annual Patent Trends

As seen from Figure 6 above, the count of design registration increased from 9023 in 2011 to 19530 by 2019, (more than 100% growth) in the backdrop of the smartphone patent war. Two of the design patent in litigation, D504889, D618677, falls under the 14-02 Locarno Classification. The upward trend has been for this classification only, indicating that a lot of development and innovation has taken place in the data processing devices.

Figure 7 clearly shows the rising upward trends from the year 2011 (12315) to 2019 (24595) - a growth of almost 100%. One of the design patents in litigation, D593087 falls under the 14-03 Locarno Classification. The upward trend has been for this classification only, indicating that a lot of development and innovation has taken place in telecommunications devices.

From Figure 8, we can see that design patent registration count indicates an upward trend from 2011 to 2016 and then a downward trend, giving up what it has gained in the growth period by 2020.

Now that we have discussed the design patent trade under Locarno classification, let us move to US- based design classification patent trends.

From Figure 9, it is evident that the count of design patent records (US Class D14/341, for design patent number, D504889) showed an upward trend from the year 2002 to 2013, with record count increasing from twenty-seven to two hundred and four. However, from the year 2013 onwards, the count has been on a constant decline with the figure reaching a low of eleven records in 2020.

From Figure 10, it is evident that the count of design patent records (US Class D14/138G, for design patent number, D593087) showed an upward trend from the year 2006 to 2010 with record count increasing from three to sixty-seven. After a dip in the year 2011, the count again increased and reached a maximum of 127 in 2013. However, since the year 2013, the count of design patent records has been sliding down consistently.

From the Figure 11, we can observe that the count of design patent record (US Class D14/203.7, for design patent number, D593087) showed an upward trend from the year 2002 to 2005 with record count increasing from three to thirty-five. After a dip in the year 2006, the count again increased and reached a maximum of 58 in 2009. Since then, there has been inconsistency in the count of design patent records.

From Figure 12, we can see that the count of design patent records (U.S. Class D14/248, for design patent number, D618677) showed an upward trend from the year 2010 to 2012 with record count increasing from twenty-three to one forty-six. The count increased again from 2017 to 2019, increasing from eighty-two to one hundred and thirty-four.

Having understood the design patent trends (Locarno and US class), let us discuss the role design searches in core business strategy.

Why Design Searches Should Be At The Core Of Your Business Strategy?

Industrial design contributes to a product's commercial worth and marketability by making it more attractive and appealing to consumers. Protecting an industrial design enables a reasonable return on investment in the design's creation.

Industrial designs enhance the aesthetics and attractiveness of a product. Consumer choice is influenced by design as the appearance of a product can be a significant element in a consumer's purchase decision. This purchase decision can be determined, at least in part, by its appearance. Industrial design can thus be critical for both small and medium-sized businesses (SMEs) and larger corporations, independent of their industry.

Industrial design is critical for developing products that meet user demands and aspirations, while also standing out from the competitors. However, the majority of businesses do not realize the full benefits of design. This is frequently due to lack of technical knowledge, as well as hurdles to the integration of industrial design into the development process of new products. Those who do, reap the full benefits by including design search into their management strategy. To know more about design patents service, click here.

Nitin Sharma, Mani Singhal (Engineering Searching) and the Editorial Team

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All About Design Patents & Its Impact on Industries - Sagacious IP

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Smartphones have become ubiquitous in our daily lives in such a demanding way that it is unfathomable to imagine even a day without it (for most of us). It defined our generation, bringing technology from computers to our hands. This change in lifestyle saw the advent of the Great Patent War between technological giants fighting a fierce battle for dominance.

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Market & IP Analysis of Eco-Friendly Paints – A Step Closer To A Non-Toxic Home

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Market & IP Analysis of Eco-Friendly Paints – A Step Closer To A Non-Toxic Home

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Have you ever walked into a freshly painted room and noticed a unique odour? That distinct odour is most likely the result of poisonous paint vapours that can persist for days, weeks, or even years. The majority of traditional paints include poisonous vapours, such as Volatile Organic Compounds (VOCs), which can be harmful to one's health and the environment, especially when used inside. This is especially concerning because indoor VOC levels are typically 10 times greater than outside levels, and can be up to a thousand times higher shortly after painting, according to research. After the paint dries, these toxic VOCs are disseminated into the air at high quantities, which can have both acute and long-term negative health impacts. Read more about IP Analysis.

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Have you ever experienced a distinct odour when entering a freshly painted room? That characteristic smell is most likely the result of toxic paint fumes that linger on for days and at times, even weeks or years. A majority of conventional paints contain toxic fumes such as Volatile Organic Compounds (VOCs) - exposure to which pose health and environmental risks, especially when used indoors. This is particularly alarming since studies have found that indoor VOC levels are routinely ten times higher than outdoor levels and are up to a thousand times higher right after painting. These harmful VOCs get dispersed into the air at high levels after the paint dries and may have both short and long-term adverse health effects.

Although VOC levels are the most extreme during and after painting, they continue to get released from painted walls for several years. In fact, only half of the initial VOCs may be released in the first year. This prolonged release of toxic contaminants has led to the emergence of eco-friendly paints that are made up of natural materials.

Natural paints or eco-friendly paints are specifically designed to have zero or lower levels of VOCs. As a result, such paints improve the interior air quality, are beneficial to the environment, and eliminate the discomfort caused by the harmful chemicals present in traditional chemical paints. This article discusses the need for eco-friendly paints, its types, benefits, market penetration, challenges, and IP analysis.

The Severe Impact of Conventional Paints on Human Health & Environment

1. Effect on Human Health

Traditional chemical-based paints contribute to volatile pollutants and reduce indoor air quality. Moreover, as per the Environmental Protection Agency, VOCs may have adverse effects on health which may be caused by short-term and longer-term exposure to VOCs. Unless and until people use products containing safe ingredients, they can expose themselves and their loved ones to very high pollutant levels, and elevated concentrations can persist in the air long after whitewashing is completed.

These chemicals can cause various adverse effects on people (Shown in Figure 1), depending on the exposure time.

2. Effect on Environment

Apart from the adverse impact on human health, traditional paints are also harmful to the environment. Consider this fact, conventional paints are a product of the non-sustainable petrochemical industry, and their production can generate a massive quantity of toxic waste. The toxic waste may contain metals such as lead, chromium, silver, cadmium, mercury, barium, arsenic and selenium. These metals cause severe ecological degradation, including a lasting impact on aquatic life, underground water, and soil.

Therefore, the health and environmental safety concerns while selecting high VOC paints are critical. An eco-friendly paint or natural paint helps in eliminating such risk.

Once you realize the need for eco-friendly paints, it is natural to understand the types of eco-friendly paints available in the market.

Are All Eco-Friendly Paints the Same?

To be eco-friendly, a paint must not contain chemicals such as formaldehyde, phthalates, isoaliphates, 1, 3 butadiene, bisphenol A, toluene and toluene compounds, crystalline quartz silica, alkyl phenolic compounds, heavy metals or biocides, etc. Eco-friendly paints do not contain toxic chemicals, and in case it does contain any VOC, it is in the lowest possible amount that does not pose severe health or environmental impact.

Eco-friendly paints can be classified into three types, as shown in Figure 2 below.

1. Natural Paints: These paints are made of natural compounds such as tree resins, water, plant oil, milk casein, natural latex, bees wax, plant, earth, mineral dyes, essential oils, and natural minerals. They do not contain any VOCs. Water-based paints are odour-free, while oil-based paints have a smell.

2. Zero VOC Paints: The level of VOCs in these paints is relatively low so that they can be termed as 'zero-VOC paints.' Such paints contain a minimal VOC percentage, i.e., less than five g/litre of VOC.

3. Low VOC Paints: These paints contain five g/litre to 50 g/litre of VOC. In addition, they use water as a solvent.

The positives of using eco-friendly paints are enormous irrespective of their type. The following section will discuss the advantages of using eco-friendly paints.

Benefits of Eco-Friendly Paints

Since eco-friendly paints are low in VOCs, they're much safer to use in homes, hospitals, or schools. Additionally, there are set specific standards, such as the one mentioned here, that paints must meet to qualify as 'eco-friendly'.

With advanced manufacturing techniques, eco-friendly paints are durable and greener than the conventional options. These paints are designed in a large selection of hues to supplement any style while offering better performance, improving the overall atmosphere of your household, and safeguarding the environment.

Eco-friendly paint also offers a variety of other benefits, as shown in Figure 3 below:

1. Low VOC Content: As discussed initially, VOCs are present in most commercial chemical paints. These VOCs not only leave behind a characteristic odour and floating pollutants that affect indoor atmosphere, but are also non-biodegradable and non-recyclable. On the other hand, eco-friendly paints have no or low VOCs, producing much less waste and damage.

2. Cost-Effective Options: Superficially, environment-friendly paints may seem more expensive than traditional paints. However, along with their eco-friendly benefit, these paints may also feature superior quality than chemical-based products, justifying the associated cost. Besides, they have better color retention, improved coverage, viscosity, abrasion resistance, paint coverage, and rare chances of yellowing.

3. Natural Raw Materials: Eco-friendly paints are manufactured only from natural ingredients such as lemon peel extract, seed oil, bees wax, milk protein, etc. These natural raw materials do not produce harmful emissions and adverse effects on the environment during manufacturing and upon product application.

4. Minimal Environmental Impact: Eco-friendly paints help reduce carbon footprint and are biodegradable since they utilize water or alternative environment-friendly materials as a base. The use of water or other eco-friendly material as a solvent cuts the risk of harmful VOCs emission that is generated from the conventional paints containing harmful chemicals such as: Bisphenol A (BPA), N-methyl pyrrolidone (NMP) solvent, Isothiazolinone preservatives, and Nonyl phenol-based surfactants.

5. Healthier Alternative: The VOCs found in chemical paints are active up to five years after the initial application. Hence, individuals continuously exposed to VOCs are at a higher risk of developing respiratory illness, sensitivity, and lung cancer. On the other hand, eco-friendly paints manufactured from natural and environment-friendly ingredients are entirely safe for humans and the environment.

6. Superior Coverage: Besides reducing the impact of harmful emissions on the environment, eco-friendly paints are also qualitatively better than their chemical counterparts. Eco-friendly paints will give your walls superior coverage, improved colour retention capacity, viscosity, offer wide range of colors, minimal abrasion, and avoid issues such as yellowing of paint.

7. Reduced wastage: While analyzing the reduced waste production, eco-friendly paints are far better than conventional chemical-based paints. Chemical paints emit toxic VOCs when manufactured and even years after their application. But, natural ones are without any such by-products.

Despite its many benefits, consumers are still lagging in making the transition towards eco-friendly paints. A common misconception among consumers is that they will be compromising on quality and finishing upon switching to eco-friendly paints. However, in reality, the fact remains that eco-friendly paints offer a wide range of color palette, are durable, and are long lasting. So, consumers do not have to strike a balance with the elegance while choosing eco-friendly paints. Although eco-friendly paints are relatively costlier than conventional paints, the range of benefits offered is worth every penny spent.

So, is there a trade-off between eco-friendliness and aesthetics?

The benefits that low VOC paint offers makes it attractive for the buyers, provided they know how to identify a low-VOC or a no-VOC paint.

How to Spot a Low-VOC or No-VOC Paint?

There are three ways to spot a low-VOC or no-VOC paint, as shown in Figure 4 below:

1. 50 g/L or Below: VOC levels are generally expressed in grams per litre (g/l) or pounds per gallon (lbs/gal). Most low VOC paints sold by reputed brands contain levels of 50 g/L or below. However, the numbers mentioned on the paint container are the measurements that are taken before pigment or any additives are added.

2. The Green Seal: Paints containing the green seal are guaranteed to fulfil high environmental standards and performance requirements. Paints with a green seal also confirm that they meet the requisite compliance and are free from a wide range of toxic chemicals including, reproductive toxins, carcinogens, heavy metals, hazardous air pollutants, and formaldehyde-donors.

3. Natural Paints: These paints use naturally occurring materials, such as, lime, clay, linseed oil, and chalk. Natural paints do not utilize any synthetic oil products. As a result, they naturally contain low VOCs with regulation by the Environmental Protection Agency (EPA) for air quality. Buyers should always check the composition on the label since some natural paints may contain unchecked VOCs.

Having stated how to pick out low-VOC or no-VOC paint, let us now discuss the present and future market penetration of low VOC paint.

Market Analysis

The low VOC paint market is anticipated to grow at a CAGR of 6.92% during 2020-25 and reach around $12.8 billion by 2025.

Asia-Pacific dominated the low VOC paint market in the last few years with a share of more than 47.2%, followed by North America and Europe. India, China, Japan, and Korea are some of the key markets in the Asia-Pacific region.

It is expected that the supply of affordable housing in India will increase by about 70% by 2024. In addition, the growing demand for infrastructural projects provide continuous impetus to the construction and building industry in APAC, propelling the demand for low VOC paints in the architectural industry. Besides India, China is also one of the attractive markets for low VOC paints. One of the many reasons for that is the legislation by Chinese government that mandates the stoppage of emission of VOCs from manufacturing plants in recent years.

Challenges to Low VOC Paints Market

High Cost: Low VOC paints are costlier than conventional paints because of advanced solvents. Major manufacturers have struggled with three roadblocks, i.e., enhanced usability, stable pricing, and green chemistry in low VOC layers.

Consumer Product Awareness: Despite a sustained marketing campaign by the companies, awareness about the product is still not as desired. Many retailers, contractors, representatives from environmental agencies lack the necessary knowledge about eco-friendly paints. That is why awareness remains one of the critical challenges for marketers to address.

Longer drying time: Some low-VOC paints use solvents with a longer drying time and are harder to apply. The longer drying time is because of the use of solvents that are not so volatile. Therefore, the drying time can take up to 12-16 hours in many cases.

Popular Eco-Friendly Paints in the Market

Some of the leading companies in the world who are manufacturing eco-friendly products are - AkzoNobel NV, American Formulating & Manufacturing, Asian Paints Ltd, Auro Pflanzenchemie AG, Axalta Coating Systems LLC, BASF SE, Benjamin Moore & Co., Berger Paints India Limited, Bioshield Paint - Eco Design Co., etc.

AkzoNobel NV is the premier global paints and performance coating company, supplying essential protection, essential ingredients, and colors to consumers and industries worldwide. The company's operation is divided into two segments: Decorative Paints and Performance Coatings. In addition, it's brand - Dulux Trade offers low VOCs coatings. Along with Dulux, other famous brands are also discussed below:

Asian Paints: Its eco-friendly paint Nilaya claims to be environment safe and formulated with around 95% natural ingredients such as soya bean extract, casein, calcium carbonate, castor seeds, and neem oil with the benefits such as breathability, clean and fresh smell, perfect finishing, and ten long years of performance warranty.

Berger: The Silk Breath Easy from Berger is a luxury interior paint formulated with acrylic emulsions and pigments having low VOC and formaldehyde reducing abilities.

Dulux: The Ultra Zero VOC by Dulux line is an interior latex paint used for painting interior surfaces such as a dry wall, concrete, wood, and plasters. It delivers a great finish with ease of application and excellent touch-up.

Nerolac: Their impressions eco clean product is a water-based emulsion with a low VOC content of less than 5g/L and almost no odour. Its key benefits include its anti-bacterial properties with a smooth finish, stain resistance, and excellent washability.

Key Takeaways

The initiative by World Health Organization in cooperation with United Nations Environment Program to eliminate lead paint will fuel the growth of low VOC paint across the globe.

The industry's growth for low VOC paint will also be driven by factors such as ease of use, technological advancement, product development, and higher consumer spending.

Robust growth in manufacturing, house equipment, and architecture applications is also expected to drive the market demand for low VOC paint.

The automotive industry is on the cusp of a significant transformation with an upward production rate in the future. The growth will also create a favourable environment for an upsurge of the low VOC paint industry.

This section discussed the market analysis for low VOC paints and how it is anticipated to grow forward. Now let us discuss the foremost innovators in the next section.

IP Analysis and Innovation in Eco-Friendly Paints

To protect the time, money, and effort that has been spent on the research to develop more eco-friendly paints, the innovators tend to defend their innovation as a patent. The filing trends, applications, and jurisdiction of the patent can give a better understanding of the development and future predictions of the technology. The same can help make critical business decisions.

Figure 5 below represents the top companies, filing trends of the technology, and jurisdictions with most patent filings.

Figure 5: Top Patent Assignee with Most Number of Patent Families (Source: Questel Orbit)

A country of first filing is considered a research country for a patent family, representing the origin of research of the invention covered in a particular country. Figure 6 below depicts the research countries. Most of the study is seen in China, followed by South Korea & USA.

Figure 7 below represents countries in which the patent technology is expected to be utilized or identifies the potential markets for the technology. Most of the filing is seen in China, followed by South Korea & USA. We can observe that Asia is the biggest potential market for eco-friendly paints followed by the US and Europe.

Patent data suggests that the Asia Pacific region would emerge as a big market for eco-friendly paints. There is a lot of research and patenting activity to find new compositions or preparation methods for water or oil-based paint. Besides, new natural components are continuously being discovered, which could be a potential component in the eco-friendly paint composition. Following are a few patents that focus on different types of eco-friendly paints, primarily based on natural ingredients or the concentration of VOC in the paints.

Different Patents Filed for Eco-friendly Paints*

The patent application KR'189A discloses a method of preparing eco-friendly natural paint using halloysite nanotubes and inorganic additives such as zeolite, diatomite earth, bentonite limestone, nano clay, etc. The paint manufactured from halloysite offers air cleaning functionality and high-quality performance.

The patent KR'574B1 discloses an eco-friendly paint made from natural raw materials comprising natural resin, oil, inorganic components such as titanium dioxide, china clay, calcium carbonate, and aluminum silicate; distilled water; and a few additives. The paint composition is harmless to the human body and has a high eco-friendly characteristic in addition to excellent concealment, washability, and salt resistance.

The patent IN'188 B discloses the process of preparing natural paint composition comprising clay and distilled water. The benefit of the composition is to minimize environmental pollution and dependency on chemical paint.

The patent CN'034 B discloses a bi-component diatom ooze water-based paint with zero VOC emission. Component A comprises potassium persulfate, diatom ooze powder, rutile titanium dioxide, ceramic powder, water, and additives. However, component B comprises a cross-linkable monomer, anti-bacterial monomer, catalyst, water-based stearate, and water. The crosslinking monomer is at least one of N-hydroxyethyl acrylamide, N-hydroxypropyl acrylamide, N- (2-hydroxypropyl) methacrylamide and N- (1, 1-dimethyl-3-oxobutyl) acrylamide. The diatom ooze water-based paint has excellent anti-bacterial and air purification effects and broad application prospects.

IN'8557 by Asian paints discloses a water-basedcomposition comprising slaked lime and calcium caseinate. The paint composition includes 95% natural components and is characterized by a 3 gm/lit VOC per ASTM D 6886-18. In addition, the paint composition exhibits longer shelf life, low VOC, high breathability, and anti-bacterial activity.

The patent application CN'045A discloses a super environment-friendly zero VOC emulsion paint prepared from sodium polyacrylate "5040", hydroxyethyl cellulose "250HBR", mineral oil modified silicone BYK-003, titanium white powder, water about 5-20% and additives. The paint has the advantages of high stiffness and adhesion, resistance to dirt, and zero VOC.

The patent US'002B2 discloses tertiary amino alcohols as low VOC additives for the paints. The paint comprises a neutralizing agent, tertiary amino alcohol, a binder, water, a pigment, and tertiary amino alcohol. The neutralizing agent of the invention can have a VOC contribution below 20% compared to the conventional neutralizing agents.

*(data derived from Questel Orbit)

The Way Forward

We can conclude from the above-discussed points that low or no VOC paints has gained acceptance in the present day compared to conventional paints. Besides the higher cost factor of zero or low VOC paints, it still offers advantages that cannot be overlooked, such as, minimal hazardous effects on human health and reduced environmental damage. Water-based paints and natural latex development have significantly contributed to this field. The next step would be to lower the manufacturing cost of such low or zero VOC paints so that even an ordinary consumer can afford them and avoid the health risks associated with conventional paints. The message to customers must be to take your time and consider whether they have chosen the correct paint that checks health and environmental boxes. In addition, they must verify any marketing claims associated with the product contents for accuracy, especially regarding the impact on the environment and health.

Conceiving and developing an idea into innovation is just the beginning of the long road ahead. It is also vital to patent the innovation for safeguarding the larger interest. Although it is possible to file the patent on your own, it is recommended to hire the services of a reliable third party considering the operational challenges encountered while filing for a patent. Click here to know more.

Kamlesh Kashniyal, Pooja Chhikara (Life Sciences & Chemistry) and the Editorial Team

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Market & IP Analysis of Eco-Friendly Paints - A Step Closer To A Non-Toxic Home - Sagacious IP

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Have you ever experienced a distinct odour when entering a freshly painted room? That characteristic smell is most likely the result of toxic paint fumes that linger on for days and at times, even weeks or years.

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A 5-Step Guide Towards Selling Your Patent

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A 5-Step Guide Towards Selling Your Patent

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A patent grant is one of the most crucial parts of the innovation process as it opens up quite a few opportunities for an innovator. First, it confers the ownership of the invention onto the innovator – thereby protecting the idea from theft. Next, it bestows exclusive rights on the inventor for its utilization. And subsequently, it recognizes the consistent hard work for months or even years that an innovator has put in to create something that never existed before.

However, owning a patent is just the beginning – how one is able to utilize this protected innovation is paramount. While the utilization aspect may vary from one innovator to another (depending upon individual choice), one can either sell or license it to others or market a product based on the underlying invention.

This guide explores the options of selling a patent in detail. It categorizes the whole process in five simple steps and systematically suggests ways to execute it, along with expert tips. Read more about selling your patents here: https://sagaciousresearch.com/blog/a-5-step-guide-towards-selling-your-patent/

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A patent grant is one of the most crucial parts of the innovation process as it opens up quite a few opportunities for an innovator. First, it confers the ownership of the invention onto the innovator - thereby protecting the idea from theft. Next, it bestows exclusive rights on the inventor for its utilization. And subsequently, it recognizes the consistent hard work for months or even years that an innovator has put in to create something that never existed before.

However, owning a patent is just the beginning - how one is able to utilize this protected innovation is paramount. While the utilization aspect may vary from one innovator to another (depending upon individual choice), one can either sell or license it to others or market a product based on the underlying invention.

This guide explores the options of selling a patent in detail. It categorizes the whole process in five simple steps and systematically suggests ways to execute it, along with expert tips.

The five steps are:

Figure 1: Five simple steps to sell a patent

Step 1: Assessment of market applicability

The easier it is to materialize the invention as a product, the higher are the chances of selling the patent. Which is why the first step towards successfully selling a patent or a patent portfolio is to identify the patented invention's market applicability. Here, we have to gauge two things:

First, how easy is it to create a product based on the patented invention.

Second, how commercially viable the whole process of production is? For example, whether the product has a demand in the market or not.

One of the best methods to gauge these two factors is by identifying any existing product or business process that infringes on the patent in any manner. It acts as a clear proof of the high market applicability of the patent or patents in the portfolio. At Sagacious IP, we perform Infringement Analysis to assess the same. This analysis helps identify the market players infringing the patent in hand. It implies that they are executing a process that overlaps with the patent's domain. Thus, the patent is highly relevant to the market.

Once we have identified the infringement and its type, we can create our selling narrative around it and place our offer in a better light.

At times, when the portfolio comprises a wide variety of patents, it becomes important to keep focus on the most important patents in the set. At Sagacious IP, we identify the deal drivers using a multi-phase curated process - patents that have any existing infringement or solve a critical problem currently prevalent in the related market areas. Such patents are capable of driving a successful patent-selling deal.

In addition to the above, we also identify enabling patents or the enablers in the patent portfolio. These patents are based on the same underlying concept as the deal-driving patents. However, they disclose some extra features of the inventions that deal drivers do not. These features may have a strong potential for infringement in the future. Therefore, the enablers can be put together strategically with deal-driving patents to offer an undeniable proposition to the potential buyer.

Moreover, understanding the underlying technology and its features also helps chart out all the possible market areas where a patent or patent portfolio may pose applicability. This way, they open new unexplored avenues for the utilization of the patent.

Step 2: Evaluation of the fair market value

Once we have established the high market applicability of the patent, the second step is to evaluate the patent and determine its fair market value. The evaluation is an essential part of the process as it keeps the innovator/seller well-informed on their patent's worth. Hence, it results in better decision-making and keeps the seller well-positioned during negotiations. There are various approaches to realizing it; but the prominent strategies are described below:

Figure 2: Four Prominent Strategies for Evaluating a Patent's Fair Market Value

1. Market-based Approach - Under this approach, the data for transactions of similar patents are analyzed to reach an estimated value. Although it is a straightforward approach, solely relying on this method is not the right strategy to chalk out a fair value. The reason being that the final value of the patent in a particular transaction depends on many variables, such as the dynamics between the involved parties, the patent's infringement worth, etc. These factors are pretty distinct to a deal, and their effect on the patent value varies with every instance. Moreover, such transaction data is not readily available as well. So, the information is hard to find and does not serve the purpose entirely.

2. Cost-based Approach - Another possible method is when the value of a patent is determined by estimating the total cost of reproducing a similar patent. This approach considers the R&D cost, the patent filing and maintenance costs, and other related expenses. However, this is again not a reliable valuation on its own; it only considers cost-related aspects of evaluation, while several factors related to market and IP get overlooked. As a result, it does not consider the factors such as the infringement strength of the portfolio, the expected revenue it can generate, novelty and the relevance of the underlying technology.

3. Income-based Approach - In this approach, we calculate the worth of a patent, or a patent portfolio based on their potential for income generation. This approach considers the elements that gain income from the patent users. It considers the factors such as the remaining life of the patent or the portfolio, the revenue it can generate when productized, etc. However, this approach is also not very comprehensive. That is why, at Sagacious IP, we essentially follow a Hybrid Approach to determine a fair market value of the patent.

4. Hybrid Approach: This approach combines different methodologies and is the most comprehensive of all the above approaches. It helps the seller reach a well-calculated and reasonable patent value and is divided into two parts - Quantitative and Qualitative.

The first part of this hybrid approach is the Quantitative Analysis. It involves a market analysis of the technology under study, estimating how much revenue would be generated by the subject technology utilization, whether the technology is fresh or obsolete in the market, discount rate, etc.

In addition, many other factors capable of influencing the market are also considered to arrive at an expected value. These are listed below:

1. Total Addressable Market (TAM): This is the complete market coverage available to a product or service if they achieve 100% market share with no competition.

2. Market Coverage: This factor considers whether the subject technology already exists in the market. If yes, where the patented technology stands in the market, its competitors, etc., are also ascertained.

3. Market/Industry Size: This examines the market size or the industry size relevant to the patented technology. Moreover, it also factors in the industry's future growth prospects to determine a more realistic patent value.

The second part of the Hybrid Approach is the Qualitative Analysis, and is the most important one. It involves rigorous analysis of the Intellectual Property understudy.

Although we get an expected value from the Quantitative Analysis, the second part of Qualitative Analysis makes the evaluation even more reliable. Furthermore, since the applicability of the patent depends on numerous factors, it would be prudent to analyze these factors to understand the actual worth of the Intellectual Property.

There are over 15 factors considered under this part. Each of these is assigned a different weightage based on their importance.

A few of such critical factors with a higher weightage is discussed below:

1. Market Applicability: It covers the aspect of the patent's applicability to the market and directly impacts/drives the overall valuation of the patent. As mentioned above, we execute Infringement Analysis to assess the same.

2. Competition: This factor assesses the competition level that the patented technology may face. It covers two phases: the first is Competitiveness, i.e., the quality of competition, and the second is Crowdedness, i.e., the quantity of competition. Crowdedness is a measure of market penetration. Considering the existing products that the new idea/product/invention will compete with, the barriers to market entry are likely to be low, high, or moderate. Competitiveness is a measure of quality, bearing in mind the existing products that the new invention/idea/product will compete with (including price, quality, etc.); the invention/idea/product will likely be perceived as inferior or superior with added advantages.

3. Life of the patent: This factor takes account of the remaining life of the patent from the time the deal is reached. Through this information, the buyer gets to know about the time period under which they can utilize the patent. For example, if someone is buying a patent, they would need to know how long he would be able to protect the idea from others using/copying it. A patent about to expire soon might be less valued as compared to a patent with ten years of remaining life. Therefore, the patent life is a vital determinant in the buying strategy.

4. Reason for Allowance: This factor covers whether the reason for allowance was based on a broader or narrower technical concept. For example, if the patent was granted on a broader concept, such as making a group video call, it would be more valued than a patent that was granted on a narrower concept such as muting/unmuting a participant in a group video call. And the same would be valued differently to a patent claiming a procedure to schedule a group video call between participants.

Reason for Allowance is the basis on which the patent has been granted. It implies that the claims made in the patent should have ample coverage for the successful utilization of the patent. For this, the analysis of the patent prosecution history is made to determine the coverage. The broader the concept covered under the patent, the higher its value. Besides, it can drastically reduce or increase the value of the portfolio.

5. Buyer's need: This factor considers the buyer's nature or needs. The value of a patent/portfolio actually varies from buyer-to-buyer, depending on what their end objective is. As a seller, it becomes important to define the current value of the patents in the context of the specific situation with the buyers. One must evaluate how a buyer would use these patents in the future and gauge the worth of these patents today and in the future.

For example, if someone is buying a patent/portfolio to prepare defence against their competitors, and these competitors are already encumbered, then the value of the patent/portfolio would drastically decrease for that buyer as they would not be able to protect themselves using these patents against their competitors. The effect could be so much that the buyer might not want to buy these patents at all.

6. Encumbrances: Here, it is checked whether there are any existing encumbrances on the subject patent portfolio. For example, a patent licensing agreement is an encumbrance because it prevents a company (buying a patent) from obtaining royalties from a company that has already licensed the patent. This can limit the applicability of the patent and, thereby, reduce its value.

Step 3: Identifying the potential buyers

After evaluating the best possible value for our patent, now is the time to identify the potential buyers. In the third step, we search for the players that might be interested in the subject technology of the patent and there are several ways to do so, as outlined below.

The easiest way is when you have identified a potential infringement - to locate the market players who are infringing on the patent in any manner. Such infringers become our primary target to pitch the offer and can be given two options. Either they can buy/license the patent or alter their process to avoid infringement. If the infringer is not ready to accept any of the two, they can be cautioned with litigation.

However, if there are no infringements, the other way is to look for the players facing the same problems. These are the players operating in the related domain and can benefit from the patent's subject technology. This is done by searching around companies in the related field to understand the nature of their business and the challenges they face. Once they are found, they can be apprised of the solution to their problem using the patented technology. This will enhance the chances of selling the patent at a reasonable value; eventually creating a win-win scenario for the seller and the buyer.

Another way is to locate the players filing patents in the same domain. Identifying such players would mean that they are interested in the respective technical field and may buy the patent. The reason is that the addition of such patents will bolster their patent portfolio, and, hence, they can be the prospective buyers.

One can also search for the players looking for opportunities to enter the market. Such players would need an edge to compete with the market leaders, and a patent related to that particular field can be of great use to them. Hence, purchasing a patent that gives them the required edge over others is likely. Reason being - taking licenses from market leaders could be very expensive or even not feasible; doing in-house R&D can also prove to be costly. Therefore, buying the patent inorganically becomes the best choice for them.

Therefore, while searching for such players, the seller should check whether the company has in-house R&D practice or a history of patent/company acquisitions (inorganic growth). An in-house R&D practice indicates that the company is into organic growth for its patent portfolio and may not be very keen on buying them. However, if it has a history of acquisitions, it is more inclined towards organic growth, and it may readily purchase the patent.

Hence, companies opting for patent or company acquisitions to grow their patent/product portfolios could be good candidates for selling the subject patent portfolio.

Step 4: Approaching the identified prospects

In order to finalize the identified prospects, it is crucial to take the initial steps of reaching out to the prospects properly. While a proper strategy can lead to the desired outcome, a wrong one can close the deal before it starts.

Therefore, for an apposite execution, the preliminary step is to package the list of patents properly. And this should reflect in the insights offered by an Infringement Analysis. This way, it keeps the pitch more aligned to the needs of the market and the client. At Sagacious IP, this is made easy by including inputs from Infringement Analysis, wherein the deal drivers and the enabling patents are identified and appropriately packaged, as explained above.

A Pitchbook is prepared to reach out to prospective companies and negotiate the price in this step. It includes all the information that helps a potential licensee/buyer understand how a particular invention can benefit them. For example, it contains facts about the patent, the relevance of technology, the problem it addresses, market study, other benefits, etc.

To summarize, we execute the given set of activities to keep the process of patent selling organized and aligned to the seller's goals by:

Preparing an exhaustive list of potential licensees/buyers for the patent. In addition to this, the relevant contacts in these companies are identified to discuss the deal in detail.

Secondly, a teaser of one or two slides is created based on the pitch book as a flyer. And it is sent to the identified contacts in the companies.

Next, upon the client's approval, the profile is broadcasted to the potential companies facing the same problem that is being solved by the patent.

Lastly, periodic email follow-ups are done with the potential buyers to seek their interest.

Moreover, the following points should be duly considered while performing the above activities:

First, it is imperative to choose the right contact at those companies. This depends on the strategy with which we had identified the companies in the first place. For example, if we have identified the company because they file patents in a similar domain, we need to reach out to the portfolio managers, patent acquisition people, etc. However, if we have identified the companies facing a technical problem, of which the subject patent provides a solution, then the right people to reach out to will be the product VP.

Further, it is very tough to convey all your research over an email and expect the prospective buyer to show interest. Hence, we must explain the corresponding strategy of how companies are mined and filter the patents that could be vital for them. It is done by explaining the prospects on why a particular patent could be of interest to them and why they should buy it or at least assess it.

Next, it is critical to plan who is reaching out to whom. If you don't have a prior relationship with the company, the chances of cracking a deal are low. It stands even more true in the case of big companies. They may not even entertain such emails. For instance, companies such as Google don't get involved in such deals directly. Instead, they prefer to buy it through aggregators.

Lastly, maintaining secrecy is essential for both sides i.e., the seller and the buyer.

Step 5: Negotiating with prospects and deal closure

After approaching the buyer in a suitable manner, the next course is to execute the deal systematically. It is also done in two parts:

In the first part, the seller and all the interested buyers enter a Confidential Disclosure Agreement (CDA) or Non-disclosure Agreement (NDA). These agreements are crucial to safeguard the patented information and other critical insights from being leaked into the public domain.

Once the CDA is in place, the seller can supply further details with certainty. Here, IP service providers can significantly facilitate coordination among the parties. For example, at Sagacious IP, we conduct various conference calls to ensure that all the participants are on the same page before the negotiations start. In addition to this, we also attempt to reach a mutually acceptable deal by offering our support in structuring it.

Besides the above, it is essential to ensure that these dialogues result in a win-win situation for both parties. For this, the buyer must be clearly informed of all the details, including the encumbrances on the patent.

Additionally, the seller has to keep in mind that the buyer will evaluate the patent and present reasons to lower the asking price. Here, referring to the points and facts from the pitchbook would help better negotiate the deal.

And once the negotiations are over, the deal closure would involve reassigning the patents to the buyer.

A Systematic Approach to Attain Goals

As conversed in the initial phase of this article, the ultimate goal of an invention is not to gain a patent. Instead, it is to utilize the patent to its full potential. The inventor's purpose can be any, but if they decide to sell the patent, the above-mentioned five-step process should be diligently followed.

To sum it up, a systematic approach that starts from assessing the patent's market applicability is the key. This helps the inventor make well-informed decisions related to the patent selling process, including whether to sell the patent at all! It also weighs on the various methods of patent evaluation so that the seller knows the fair price of a patent. And it also ensures that the buyers do not undervalue the patent.

Further, it also informs ways to identify the right buyer for the patent. Thus, combining the last two, the patent is sold to the right buyer at the right price - resulting in a win-win scenario.

Merely identifying the right buyer is not enough, and the seller should approach them in the appropriate manner as well. Towards this end, the guide also shares tips and tricks to reach out to the buyer with the best possible chances of cracking a deal.

And lastly, it prompts ways to hammer out the best possible patent deal during the negotiation phase. It includes highlighting the deal drivers and the enablers to put forward the best patent package during the deal.

It is important to ensure that the complicated processes are more straightforward in the best way to achieve high returns on investment. The investment can be monetary, or perhaps even the time invested in innovating something new. A patent is not just a document but a representation of the hard work by an innovator. At Sagacious IP, we offer services from consultation and analysis to the execution of all-encompassing searches that help you make the best out of your invention. Click here to know more.

- Abhinav Mahajan (ICT Licensing) and the Editorial Team

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A 5-Step Guide Towards Selling Your Patent - Sagacious IP

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A patent grant is one of the most crucial parts of the innovation process as it opens up quite a few opportunities for an innovator. First, it confers the ownership of the invention onto the innovator - thereby protecting the idea from theft. Next, it bestows exclusive rights on the inventor for its utilization.

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Understanding Industrial Design in a Global Context

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Understanding Industrial Design in a Global Context

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The design of a product remains one of the critical aspects in offering a unique identity. It is vital towards brand communication, which is why brands spend immensely in creating eye-catching designs to represent their product. As brand communication gets intrinsically linked to the design of a product, design strategy needs to play a crucial part in the overall business strategy for modern businesses. Read the entire article about design patents.

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Understanding Industrial Design in a Global Context - Sagacious IP

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From the above-discussed points, we can positively conclude that the registration of design patents is paramount for sustaining

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Trademark Disclaimer: Why It’s Needed and How to Use It

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Trademark Disclaimer: Why It’s Needed and How to Use It

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A trademark serves as a brand identifier for a product or service. It is used by companies with a unique product or service offering to ensure legal protection against imitation and potential revenue loss. However, while trademark is a sign capable of differentiating goods or services and enjoys legal security, its descriptive statement may contain some common/generic words that cannot be owned by an individual for their exclusive use. To avoid confusion with the generic words and to allow its usage, a trademark disclaimer is used.

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A trademark serves as a brand identifier for a product or service. It is used by companies with a unique product or service offering to ensure legal protection against imitation and potential revenue loss. However, while trademark is a sign capable of differentiating goods or services and enjoys legal security, its descriptive statement may contain some common/generic words that cannot be owned by an individual for their exclusive use. To avoid confusion with the generic words and to allow its usage, a trademark disclaimer is used.

The following article is a comprehensive discussion about trademark disclaimers, why it's needed, the different ways to use it, along with a few real-life examples related to disclaimer as required by the USPTO office.

A disclaimer statement indicates that the applicant does not have the exclusive right to use a specific word of a trademark by itself. For example, if you have any descriptive terms in your trademark, the trademark office may ask you to "disclaim" those. It means that apart from how the term is used in your trademark, you agree that you don't have the exclusive right to use it. It is crucial because the whole point of a trademark is to allow people to distinguish their goods and services from other goods & services, not to prevent others from reasonably describing their goods & services.

The real purpose of the disclaimer requirement is to define the owner's right under the trademark registration to reduce the possibility of extravagant and unauthorized claims made on the score of registration of the trademark, even if it may not be completely eliminated.

It is a fact that certain categories such as generic, descriptive, geographic, well-known symbols such as the dollar sign ($) are commonly used and not eligible for registration. The underlying logic for disclaimers is that other businesses and individuals need these words and symbols to describe their goods or services. In general, parts of a mark that are not registrable and require a disclaimer are shown in Figure 1.

Figure 1: Portions of a mark that are not registrable and require a disclaimer (Source)

A disclaimer in registration makes it amply clear that anyone can use the disclaimed terms without attracting any legal attention. Some of the common disclaimed terms are discussed below.

Merely Descriptive: Simple descriptive words for describing goods and services do not qualify for protection under trademark. Some of the finest examples are - creamy for yogurt, hot for soup, cold and refreshing for soft drinks, a cue stick and eight balls for billiard parlor service.

Laudatory Words: Complimentary and appreciative words that explain a product/service's apparent superior quality also need a disclaimer. A few noteworthy examples are "Greatest of all Time" for a beer brand, "Coolest Place" on the planet for a holiday destination, "Incredible" for a service, "The Ultimate" for beauty salon service.

Generic Words/Designs: Words/designs with a common name of goods/services also require a disclaimer. A few common examples are "ASPIRIN" for pain relief medication or a realistic picture of a yo-yo for toys.

Geographic Words/Designs: It is common knowledge that words/designs describing the origin of goods or the location of the services do not enjoy protection under trademark and need a disclaimer. Some of the finest examples are authentic Italian leather, Glassware from Venice, Map of Germany for air charter services originating from Germany.

Business Type Designations: The type and structure of the business can vary in the modern world. Depending upon the size and complexity of ownership, the last name differs. However, the type and structure of the businesses can be the same and hence cannot be protected under trademark registration. A few examples of business type designations that need disclaimer are "Corporation", "Inc.", "Company", "Ltd.", and "Bros".

Informational Words: Words that only provide general information about goods/services, such as, net volume, net weight, lists of contents, addresses and contact information, year of establishment, etc., requires disclaimer for use by other party in the business.

Well-known Symbols: Common Symbols (shown in Table 1) provide information about your goods and services, such as, the biohazard symbol for medical waste containers, the prescription symbol for medical goods, the dollar symbol for financial services, the tree symbol for a green product, etc. These well-known symbols convey a political, social, religious, or similar kind of message and mandatorily need a disclaimer for use by other interested individuals and organizations.

Table 1: Common symbols for communicating specific messages

Deceptively Misdescriptive Words/Designs: Words/designs that explain a good/service in a way that is both incorrect and credible but will not affect the consumers purchasing decision as it is not intrinsically linked to the quality of the product/service. Such deceptively incorrect descriptive words/designs need a disclaimer for use by other businesses and individuals. Some examples are a riverfront restaurant for a restaurant not located alongside a river, mark SAL'S GLASS WAX for a glass cleaner without any wax, etc.

All the above-discussed disclaimed terms are essential for many businesses to communicate the brand message effectively (in the advertisement, on the web, etc.). Hence, the terms cannot be the proprietary domain of one party and must be disclaimed for free use by other keen businesses and individuals.

After understanding the portions of trademark that need a disclaimer, it is crucial to know how to disclaim misspelled, foreign, compound and unitary wording or matter.

Misspelled Wording: Misspelled variations of a word that are generic, geographic, descriptive or otherwise unregistrable need to be disclaimed. The misspelling may result from telescoped words where two words share a single letter. For example, the word "SUPERINSE" consisting of two words "super" and "rinse". Both the words share the common letter "R" in the telescoped word. Such words require disclaimer as two separate words. Another example is of phonetic misspelling like "JAY'S QUIK PRINT" where "QUICK" is misspelled as "QUIK". The disclaimed term will be "QUICK PRINT". The disclaimed term must be spelled correctly.

Compressed compound Wording: Compressed compound word in a mark consists of a union of two or more words that are generic, geographic, descriptive, or otherwise unregistrable. The compound words need to be disclaimed. While registering the trademark, a compressed compound word has to be separated in the disclaimer. For example, in the mark "KATE'S COOLPACK.COM" related to insulated containers, the disclaimed terms would be "COOLPACK.COM". This is so as it contains a compressed compound word and a generic domain name ".COM" (does not indicate source).

Foreign Wording: The use of a foreign word in a mark that is generic, descriptive, geographic, or otherwise unregistrable needs to be disclaimed as the English version of such wording is subject to a disclaimer. For example, GALA ROUGE for wine; here "ROUGE" is a French term that means "red" and would be disclaimed as only descriptive of red wine. It is important to note that the disclaimer must consist of the non-English wording and not the English translation.

If the foreign wording consists of non-Latin characters such as Japanese or Hebrew, then the disclaimer needs to be of the non-Latin characters and their transliteration (conversion of text from one script to another) in Latin characters i.e., the phonetic spelling, in analogous Latin characters, or the words in the mark with non-Latin characters. One fine example is the use of Japanese characters for the word "optical" in a mark used with optical goods such as lenses. The disclaimer for this example would be for the non-Latin characters that transliterate to "Kogaku."

Unitary matter: Unitary matter in a trademark creates a grammatically or otherwise unitary expression. Such expression that is generic, descriptive, geographic, or otherwise unregistrable must be disclaimed as a whole. The cue to finding unitariness is when different parts of a mark are so integrated that they are inseparable and are read together as a single unit. Portions of a mark are considered unitary if they create a single commercial impression or distinct commercial image that is independent of the separate parts. For example, in the mark "PETE'S PIZZA PARLOUR" for a pizza restaurant, the portion "PIZZA PARLOURE" is unitary and unregistrable. The term must be disclaimed as a unit instead of "PIZZA" and "PARLOUR" separately.

Now that we understand portions that need to be disclaimed and how to proceed with the misspelled, foreign, unitary and compound word, let us look closely at some real-life examples for disclaimer terms.

STARBUCKS COFFEE: A popular multinational chain of coffee and roastery reserves that is headquartered in the United States, Starbucks Coffee is the world's largest coffeehouse chain. The word coffee is generic in the term "STARBUCKS COFFEE". Therefore, no claim is made to the exclusive right to use "coffee" apart from the mark as shown. The word "coffee" can be used by any business without legal ramifications.

KIA MOTORS: An automobile manufacturer based in Seoul, South Korea, Kia Motors is a multinational automobile manufacturer. In the term "KIA MOTORS", the word motor is a general term. Hence, no claim is made to the exclusive right to use "motors" apart from the mark as shown. Any business or individual can use the word to describe their businesses without any legal attention.

BURGER KING: An American chain of hamburger fast-food restaurants, Burger King is also a multinational company with outlets in over 100 countries. In the term "BURGER KING", the word burger is a generic term. So, no claim is made to the exclusive right to use "burger" apart from the mark as shown. Any individual or business looking to use the word burger to describe their businesses can do so without legal consequences.

CRAZY ED'S FURNITURE: A chain of furniture store in the United States. In the term "CRAZY ED'S FURNITURE", the word furniture is a common term used everywhere. Therefore, no claim is made to the exclusive right to use "furniture" apart from the mark as shown. Any business or individual is free to employ the term without worrying about the legal aspect.

DOMINO'S PIZZA: An American pizza restaurant chain, Domino's Pizza is a multinational chain and is recognized as a leader in pizza delivery. The word pizza in the term" "DOMINO'S PIZZA" is generic and other businesses have unrestricted access to it. Hence, no claim is made to the exclusive right to use "pizza" apart from the mark as shown.

MICROSOFT CORPORATION: Founded by Bill Gates and Paul Allen, Microsoft is a multinational technology corporation headquartered in Redmond, Washington, United States. The word corporation in the term "MICROSOFT CORPORATION" is generic as it describes the type and structure of a business. As a result, no claim is made to the exclusive right to use "Corporation" apart from the mark as shown. Any business willing to use the word based on its applicability is free to do so without worrying about any legal consequences.

The below tips can serve to be useful during your trademark registration process.

1. For example, if you are trying to register a beer named " Legalese IPA" then you would have to disclaim the exclusive rights to "IPA". The IPA element in the term is descriptive and un-registerable on its own. While you can stop other breweries from naming their beers Legalese Stout, you cannot stop other businesses from calling a beer an IPA.

2. Another example is if you are trying for a trademark registration of the word "CADBURY GEMS". In this case, the word "Gems" must be disclaimed. Again, there is fair reasoning behind it. The word gems is a generic term that cannot be registered independently. However, when used with the brand name "Cadbury", it is considered to be distinctive in nature. Therefore, the logic for disclaiming the term gems is that the owner/proprietor of the trademark is restricted from claiming compelling rights over the use of the generic term 'Gems'.

The disclaimed words/terms in no way affect the overall strength, appearance or use of your mark but only leaves the unregistrable components of the trademark to be used freely by other businesses. However, the absence of disclaimer in a trademark application may result in refusal of trademark and an office action for corrective measures.

An examiner can refuse a trademark registration if an applicant does not comply with a requirement for a disclaimer made by the examining attorney. For example, if an applicant fails to comply with the examining attorney's requirement for a disclaimer, the examining attorney should make the requirement final (if the application is otherwise in condition for final action). A few real-life examples related to disclaimer required or not required by the USPTO office are discussed below:

1. In re Box Solutions Corp. (TTAB 2006): Applicant Box Solution Corp. had won a decision in its appeal for USPTO's refusal to register the mark "Box SOLUTIONS & Design" for computer hardware mainly communication servers. The Trademark and Trial Appeal Board (TTAB) ruled in favor of the applicant affirming that the mark in question did not create confusion with a registered trademark Box & Designs. However, the board also affirmed the PTO's requirement of a disclaimer of the word "SOLUTIONS" as it did not prove distinct feature of the business. Source

2. In re Oppedahl & Larsen LLP: On May 3, 2001, the appellant Oppedahl & Larsen LLP had filed an application to register the mark 'patent.com' under 15 U.S.C. § 1051(b) (1). The PTO had refused to register the mark because the mark was a mere description of applicant's goods, which was a dedicated software for tracing patent applications and issued patents. The TTAB also affirmed the decision of PTO in refusing the application for the same reason. The use of generic top-level domain ".com" was another reason for the refusal. The domain name only indicates an internet address for use by commercial and for-profit organizations. The domain name does not act as a source identifier and provides a distinctive feature unless it is a part of unitary expression. Hence, it cannot be registered. Source

3. Anheuser-Busch, Inc. v. Kelly J. Holt (TTAB 2009): The Trademark and Trial Appeal Board (TTAB) had dismissed the opposition to the registration of the marks "BEER 1" with "BEER" disclaimer. The board found the mark to be neither only descriptive nor deceptively misdescriptive under 2(e) (1). The challenger Anheuser-Busch had relied mainly on the testimony of a linguistic expert with the opinion that the term "BEER 1" would be perceived by consumer as top-ranking beer. Holt in its defense has argued that the number "1" could have different interpretation. Hence, BEER 1 is open to many meanings. Source

4. In re Piano Factory Group, Inc., 85 USPQ2d 1522 (TTAB 2006): The Trademark and Trial Appeal Board (TTAB) had refused to register the mark "VOSE & SONS" as only a surname. The decision placed the onus on the examining attorney to establish a case that the main significance of the mark to the purchasing customers was that of a surname. The board had concluded that inclusion of the wording "&SONS" did not distinguish or relate to anything other than emphasizing that "VOSE" is the surname of the sons parents. Source

Now that we are familiar with most of the concepts of disclaimer and the refusal to register trademark because of a disclaimer, it is crucial to understand the process of submitting a disclaimer.

Applicants can respond to a disclaimer requirement in a non-final Office Action using the Response to Office Action form (shown in Figure 2) by Trademark Electronic Application System (TEAS). It includes any required statement and supporting declaration language mentioned in the Office Action. Applicants should also respond to a disclaimer requirement in a final Office Action using the TEAS Request for Reconsideration after Final Action form.

TEAS online form instructions: Applicants cananswer "Yes" to form wizard question number 3. In the "Additional Statements" section, enter the wording or design description that needs disclaimer in the text entry box for a disclaimer. For satisfying the trademark examining attorney's disclaimer need, the entry in this box should exactly match with what was specified in the Office action. Applicant should not enter the design description or wording in the standardized format referenced above since the additional text in that disclaimer statement is already included in the TEAS form. For additional technical assistance, contact TEAS@uspto.gov.

Figure 2: Response to Office Action Form

In a trademark, it is vital to understand the portions that can be registered and ones that cannot be registered. Hence, it gets critical for applicants to develop a strategy of coining a trademark that must be formulated keeping in mind the need to specify the disclaimer parts. The correct planning with trademark disclaimer can achieve the dual objective of registering a great trademark without a trade-off with its distinctiveness. Which is why, before filing a trademark application, it is prudent to take the advice of subject matter experts. However, if you are still unsure about the process and its nuances, it is best to seek assistance of experts and avail the services of a third-party service provider such as Sagacious IP.

Sagacious IP is a leading value-driven and technology-focused IP research company that provides reliable support services to the global IP community. Its presence across three continents offers service to Fortune 500 companies, law firms, start-ups, and R&D organizations. In addition, through our trademark services, we help clients in coining attractive trademark with relevant disclaimer. Click here to know more about this service.

- Gopal Singh Rawat (Trademark) and the Editorial Team

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Trademark Disclaimer: Why It's Needed and How to Use It - Sagacious IP

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A trademark serves as a brand identifier for a product or service. It is used by companies with a unique product or service offering to ensure legal protection against imitation and potential revenue loss.

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Conflict Management and Its Relevance in IP Sector

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Conflict Management and Its Relevance in IP Sector

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When done tactfully, conflict can be an opportunity for embracing new ideas and introducing changes with the evolving times. Conflict between people is an inevitable part of any society, particularly the way it can impact work dynamics in the modern era. While a difference of opinion does not mean a clash of personality, however, when ignored or unaddressed for long, a simple conflict can harm an organization in unimaginable ways. Realizing its importance, a lot of effort went into studying the concept of Conflict Management.

This article presents types of conflict, benefits and detriments of conflict and the causes of it. We also discuss the strategies to prevent and manage conflict effectively and its relevance in IP sector.

Read the original article about conflict management here.

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It is said that "effective teams don't avoid conflict; they learn how to manage it". When done tactfully, conflict can be an opportunity for embracing new ideas and introducing changes with the evolving times. Conflict between people is an inevitable part of any society, particularly the way it can impact work dynamics in the modern era. While a difference of opinion does not mean a clash of personality, however, when ignored or unaddressed for long, a simple conflict can harm an organization in unimaginable ways. Realizing its importance, a lot of effort went into studying the concept of Conflict Management.

This article presents types of conflict, benefits and detriments of conflict and the causes of it. We also discuss the strategies to prevent and manage conflict effectively and its relevance in IP sector.

What is a Conflict?

Conflict could be defined as a struggle or contest between people with opposing beliefs, principles, ideas, needs, values, or goals. In other words, a conflict is referred to as a clash of interests or an escalation of disinterest. The basis of conflict could be personal, racial, class, creed, gender, caste, political and international. But it can also be intellectual and theoretical, in which case, academic recognition may, or may not be, a significant motive. Conflict within teams is inevitable; however, the outcome of conflict cannot be predicted. Left unresolved, it might escalate and lead to non-productive results. Timely resolution of the conflict, however, can produce surprisingly positive results.

Conflict Management in IP Sector

Conflict exists in each and every part of our lives, whether professional or personal. Similarly, conflicts exist in the management of Intellectual Property Rights (IPR) also.

A conflict in Intellectual Property domain typically arises in a situation where one person's work results in a total disregard for another person's work. Intellectual property is the result of one's hard work. A conflict on intellectual property can be avoided by declaring the intent. At times, a person cannot accurately determine if there is a conflict with a body of work or if any other person is going to stake a claim. However, it's better to be safe than sorry and to declare the intent behind the work.

For example, a company named 'JP Private Limited' provides global IP solutions to its clients. A man named 'Mr. A', an ex-employee of the JP Private Limited, decides to independently practice in the same domain after leaving the company, and establishes a firm named 'JayPee Private Limited'. In addition to this, Mr. A also maliciously creates a logo which is remarkably similar to JP Private Limited, with an intent to deceive and redirect public towards its firm using the market value and goodwill of JP Private Limited. The representatives of JP Private Limited get to know that Mr. A has applied for trademark registration similar to their company's logo.

Now, any conflict can be resolved by using the five styles of conflict management (mentioned under the sub-section - Five Styles of Conflict Management). The company's legal representative shall first evaluate the situation and decide what conflict resolution process they should opt for in order to resolve the issue.

As the company's legal representative cannot avoid or collaborate in this situation, they may initially choose to accommodate and compromise by contacting Mr. A to resolve the conflict out of court. For example, the representatives may issue a letter to Mr. A informing him about this infringement and sort a solution by gently directing him to take down his trademark application, cease and desist the use of infringing trademark, and resolve the conflict out of court. This style of conflict resolution involves lesser financial risks and legal engagement of both the parties.

Suppose this style of conflict resolution results in an ineffective solution and Mr. A does not cease the usage of the infringing trademark. In that case, the representatives shall opt for a more rigorous conflict resolution process of competing with the other party. They may then sue Mr. A under intellectual property rights infringement and file for compensation and damages that the company may have to bear during the time period. In such a conflict situation, the probability of winning the case against the infringer is very high.

For a better understanding of conflict, it is crucial to know its features.

Features of Conflict:

Conflict can never be eliminated; it can only be minimized as it is an inevitable part of work within teams.

A high degree of conflict management can lead to increased productivity and a transparent team.

Conflicts can be regarded as an opportunity in a veil which needs to be uncovered.

Conflicts are an integral part of the modern global work force and need new solutions for different situations and geography.

Based on its origin, a conflict is either constructive or destructive.

Constructive and Destructive Conflict

Categorizing a conflict as constructive or destructive requires appropriate skills, experience and practice; however, some general characteristics can help determine the type of conflict.

Conflict is constructive/positive when it:

Encourages people to embrace different ideas and alternatives.

Leads to increased participation and a firm commitment to the group's decisions, objectives and goals.

Helps in clarifying the underlying issues or reassessing them for a start.

Develops coordination and collaboration among the team members.

Conflict is destructive/negative when it:

Causes bullying, discrimination or harassment among team members.

Diverts energy from the shared goals and objectives of the team in work.

Polarizes groups on a perceived difference of opinion that might not be true actually.

Destroys the morale of team members and reinforces poor self-esteem.

Types of Conflict

Three types of conflict commonly found across organizations are listed below:

Task Conflict

Task Conflict is the first type that is caused by work assignments, resource division and allocation, varying opinions on policy and procedures, interpretation of facts and expectation of managing the work. Fortunately, this conflict can be resolved quickly with the timely intervention of leaders. Offering solutions as a de facto mediator, managers can also identify the underlying interest of the concerned parties.

Relationship Conflict

Relationship Conflict is typically caused by differences of opinions, tastes and preferences, experiences, personality, beliefs, etc. The conflict generally takes place between friends, partners, siblings and co-workers. Relationship conflict is quite common in modern organizations as people from different backgrounds and cultures are put together at work.

Value Conflict

Value Conflict arises because of differences in the social and cultural values of two different people. It encompasses differences of opinion about politics, ethics, religion, norms and other deeply held beliefs. Although extreme forms of discussion related to politics and religion are prohibited, disputes can arise in real-time decision-making. An example would be an organization's decision to implement a positive action program or accept a client with a corrupt background.

Can a conflict be good for an organization? The answer is a surprising yes! There are certain positives from a conflict based on how it is handled.

Benefits of Conflict

In the fast-paced office culture of a modern organization, institutional and interpersonal conflicts are pretty standard. But, unfortunately, the magnitude of time and effort spent in resolving the conflict leaves very little time to understand its benefits.

The five most important benefits that can be identified from a workplace conflict are:

Early problem identification

Better problem solving

A healthy relationship, morale and commitment

Improved productivity

Personal growth and insight

Apart from its benefits, there is also a flip side of conflicts, if left unresolved.

Detriments of Conflict

Conflicts can cause far-reaching problems that can damage any business, relationship or commitment and not resolving them in a timely fashion can be dangerous.

The most important disadvantages of conflict are:

1. Inter-team tension

2. The winner-loser issue

3. Time and energy spent

4. Toll on emotions

Causes of Conflict

Several factors are known to facilitate conflict under certain circumstances. Some of them are as follows:

Task interdependencies

Status inconsistencies

Jurisdictional ambiguities

Communication problem

Dependence on a common resource pool

Lack of expected performance standards

Individual differences

Now that we know the types, advantages, disadvantages and causes of conflict, let us move our focus on managing the conflict.

What is Conflict Management?

Conflict Management is the art of managing the present and impending conflict by acquiring and cultivating appropriate conflict resolution skills. The skills can be self-awareness about conflict modes, conflict communication methods and a clearly defined management structure for resolving conflicts. Conflict management aims to minimize the negative impact and maximize the positive effects resulting from a conflict.

The practice of conflict management involves identifying and handling a conflict fairly, sensibly and efficiently. Differences in thoughts and opinions are expected in a modern organization. Hence, there must be people adept at handling conflicts arising from a situation through subtle conflict management skills.

The finest way to manage conflict is to stop it from happening in the first place.

Preventing Conflicts

Conflicts are a part and parcel of the modern work environment. A conflict can be prevented by just avoiding it. However, it does not address the primary issue. Preventing conflict means resolving the core issue before it assumes a more extensive form. Conflict arising from each situation is unique and may also require a unique solution. One of the most effective and time-tested ways of preventing organizational conflict is open communication between employees. An environment of open communication enables people to express their ideas and opinions freely. Individual mannerisms speak a lot about the root cause of the problem. Some of the pragmatic steps for preventing conflict within an organization are listed below:

Exercise restraint and patience

Be flexible in attitude and approach

Show respect

Speak with clarity/conciseness

Occasionally introduce diplomacy in your speech

Be non-confrontational and non-judgemental

Openness

Develop perceptive mannerism

Develop the art of mindful listening

Positive body language and voice tone

Notwithstanding the above effective steps to conflict prevention, the problem cannot be rooted out entirely. The only solution is to minimize it by building relationship between the team members. All the members of the team ought to be on the same page while addressing the problem.

Emotional intelligence can be a key factor here. It is essentially regulating and controlling your emotional outburst as per different situations. A lot of research has been taken to develop concrete and definite ways of conflict management. Broadly, it can be categorized into five different styles.

Five Styles of Conflict Management

Figure 1: 5 Styles of Conflict Management

Avoiding: This happens when the level of cooperation and assertiveness between people is low as shown by the bottom left quadrant in Figure 1. This style of conflict management is distinguished by the following points:

People in conflict choose to side-step an issue diplomatically or simply withdraw from a threatening situation.

The conflict situation is emotionally charged. Person in conflict decides that continuing to stay engaged in the conflict will not result in a good outcome.

There is a lack of information, influence and resources to achieve a favorable outcome. A person may decide to wait for more information before actually engaging in a conflict.

The conflict situation is not worth the effort to waste time and energy on it. Therefore, people in conflict decide to avoid it altogether.

2. Accommodation: This is when the cooperation between the conflicting parties is high but assertiveness is low, as shown in the bottom right quadrant in Figure 1. This style of conflict management is distinguished by the following points:

Preserving a relationship occupies a higher priority than coming out on top. Therefore, there is a degree of self-sacrifice involved while accommodating to satisfy the other party.

One party has very little to lose while supporting the other conflicting party with a higher stake.

One party lacks the necessary experience while the other party has much greater experience and expertise.

Competing is going to cost more than accommodating for one conflicting party. This is usually the case when one party in the conflict has greater authority compared to other.

The emotional volatility of a situation forces one party in the conflict to accommodate other for diffusing the situation.

3. Competing: This is the situation when the conflicting parties are high on assertiveness and low on cooperation as shown in top left quadrant of Figure 1. This style of conflict management is distinguished by the following points:

People in conflict are willing to pursue one's concerns at another person's expense.

One party in conflict has more significant expertise or better flow of information than other.

When the outcome is critical, and the right decision may be unconventional.

Time is of essence. A decision needs to be taken promptly without being overly concerned about the alignment of different views. This is usually an emergency case or safety issue.

One party in the conflict has a higher stake relative to other.

The authority or rights of one party in the conflict is being challenged.

4. Compromising: This style of conflict management follows the middle path. The level of assertiveness and cooperation between the conflicting parties is neither low nor high, as shown by the rectangle (center) in the Figure 1. This style of conflict management is distinguished by the following points.

People in conflict aim to find a win-win situation that is mutually acceptable to everyone while maintaining a moderate amount of both assertiveness and cooperation.

A quick situation is required and the competing/collaboration style of conflict management has failed to produce the desired outcome.

Each team member is willing to sacrifice something because getting all needs fulfilled is unrealistic.

Maintaining the relationship with a middle-ground solution is more valuable.

The issue is of lower importance to team members and it doesn't warrant the time and energy required to collaborate.

5. Collaborating: This is theideal way of conflict management although practically challenging to implement. The conflicting parties have a high degree of both assertiveness and cooperation, resulting in a perfect collaboration as shown in the top right quadrant of Figure 1. This style of conflict management is distinguished by the following points:

The conflict situation is vital for both parties.

Everyone in conflict attempts to work with others to identify a solution that fully satisfies everyone's concerns.

Relationship is important for persons in conflict; as such all the parties are willing to work to address everyone's concern.

There is sufficient time for conflicting parties to engage and arrive at a positive outcome. Strong trust and engagement is present for team members.

In addition to the above five conflict management styles, some common suggestions for managing the conflicts are discussed below. Although not very hard to comprehend, it can be highly effective.

Suggestions on Managing Conflicts

Accept conflict: Accepting conflict is the first step towards its management. Unless we acknowledge the fact that conflict is in existence, a solution can never be found. Conflict is an indication that there is a need for change, opportunity for new growth and improved communication between the team members. A conflict can be resolved smoothly if addressed with a suitable individual.

Be a calming agent: A calm demeanour has always been encouraged for conflict management. Conflict arising from emotional outburst can be easily tackled if at least one person plays the role of a calming agent. The calming effect of one rubs onto another and the tension is diffused in no time.

Listen actively: Being a good listener is vital in this fast-paced work environment. It is essential to listen to other's point of view with empathy and address the concern fairly. Listening allows judging a conflict objectively and arriving at the right decision.

Analyse the conflict: This helps in clarifying the specific problem. Some of the questions that may be asked are listed below:

1. What was the trigger for the conflict?

2. What was the problem area?

3. What is there to lose in the conflict?

4. Is the conflict/anger fair or over-exaggerated?

5. How can the conflict be resolved?

Model neutral language: Refraining from using harsh language (name-calling, profanity, hand gestures, loud and aggressive words) makes the conflict seem less emotional and helps manage the conflict much faster. Therefore, while resolving the conflict, the aim should be to model neutral language for negotiation and arriving at a settlement.

Separate the person from the problem: Detachment of person and the problem is vital for resolving the conflict. The issue of associating a problem with the person is a mistake that is made often. The separation of problem and person allows objective treatment of the conflict and better management.

Work together: Nothing can beat the age-old solution of coming together onboard, taking ownership for the conflict and finding a resolution.

Agree to disagree: If a conflict seems unmanageable and the conflicting party cannot arrive at a common ground, the best solution is to agree to disagree. This leaves room for managing the conflict in the future rather than escalating in the present.

Share your interests: Sharing your interest and position is necessary to manage the current and future conflict. Conflicting parties get to know the overlapping interests when it is shared clearly. Expressing individual interest eliminates any chance of ambiguity creeping in. The conflicting parties will move back from the position of others interests and try to find a middle ground for shared interests.

Be creative: Creativity in managing conflict is paramount in a modern office environment. There may be unique problems associated with the conflict and it requires thinking out of the box. Care should be taken not to reach an agreement in haste. Think over the problem for a creative and long-lasting solution to the conflict.

Be specific: Beating around the bush does not help in managing a conflict. While solving the problem associated with a conflict - conceive and implement a precise solution to a specific problem. Defining the core problem of the conflict at the start is a good idea. Then, whether finding the problem or solution, stick to specification and don't move around.

Maintain confidentiality: Maintaining confidentiality helps in building trust while managing a conflict. Try to avoid venting out to others which can act as fodder for the rumour mill. The conflicting parties should sit down and try to resolve the issue without feeding unnecessary information to third parties which are not privy to the conflict. If the news about the conflict is already out, stop further flow of private conflict information.

Conclusion

From the above article we can conclude that conflict is an inescapable part of a modern office. Understanding the type and category of conflict is the first step towards its management. Ideally, conflict should be prevented in the first place by imparting and cultivating necessary skills in employees. Practically, however, preventing every conflict is not possible. That is where the five styles of conflict management concepts can prove to be useful. Depending upon the type of conflict and the time available to manage it; any of the five styles (Avoiding, Accommodating, Competing, Compromising and Collaborating) can be used. Conflict management is best when the parties are committed to each other and the process of doing so will ensure that the parties move closer to a resolution that is great for all involved. Practicing effective conflict management will ensure that conflicts within an organization or relationship are dealt with efficiency and will build credibility and trust between the parties.

Sagacious IP is one of the leading research and consulting companies in India, as well as abroad. Our IP Filing services help clients to take care of their cumbersome and complicated patent, trademark and design filing tasks in a professional manner. Through this service, we have helped many prestigious clients, irrespective of their size, to manage the conflict arising out of intellectual property infringement successfully. Click here to know more about our services.

-Sameeksha Shukla (India Filing & Prosecution) and the Editorial Team

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Conflict Management and Its Relevance in IP Sector - Sagacious IP

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It is said that "effective teams don't avoid conflict; they learn how to manage it" . When done tactfully, conflict can be an opportunity for embracing new ideas and introducing changes with the evolving times. Conflict between people is an inevitable part of any society, particularly the way it can impact work dynamics in the modern era.

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Top Landmark Cases that have led to a Robust Patent Prosecution System in the U.S.

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Top Landmark Cases that have led to a Robust Patent Prosecution System in the U.S.

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U.S. patent laws and systems are certainly recognized as one of the world’s leading and most efficient systems. A few landmark cases have led to the evolutionary journey of the U.S. patenting system to attain perfection, thereby resulting in a robust and reliable method for granting high-valued patents. Read more about Patent Prosecution here.

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U.S. patent laws and systems are certainly recognized as one of the world's leading and most efficient systems. A few landmark cases have led to the evolutionary journey of the U.S. patenting system to attain perfection, thereby resulting in a robust and reliable method for granting high-valued patents.

In our latest article, we focus on an in-depth and comprehensive analysis of the current market and patenting scenario in the United States, along with the patentable subject matter under 35 U.S.C. 101 of the U.S. Patent Law and its exceptions. Read on to know more about the landmark cases that led to the creation and development of the great subject matter eligibility test that is critical to the understanding of the U.S. patenting system.

Innovation - the Driving Force, Patenting - the Strong Foundation

Innovation has played a constructive role in the American economy all along. All innovative organizations operating in the United States have now recognized the need to protect their technical interests with strict patent laws. The precision and accuracy of the United States Patent and Trademark Office (USPTO) have laid a strong foundation for businesses to thrive and provide a strong foundation for innovation protection. Over the past decades, the number of patent applications filed within the USPTO has increased significantly. Multinational companies consider the U.S. to be a true pioneer in the patenting system - based on the proven fact that U.S. patents are most valued and why every company considers filing in the U.S. as their primary geographical destination. The U.S. market not only targets established billion-dollar enterprises, but also provides a good starting point and framework for SMEs and start-ups.

The United States is a potential place for some of the world's largest and most iconic companies. These enterprises have also had a large chunk of share in the American as well as the global patenting activity. Companies such as Google, Apple, Microsoft, IBM, and Amazon continue to apply for patents related to software domains. This is because software patents currently cover a wide range of technologies, such as Artificial Intelligence, BlockChain, Edge Computing, Virtual Reality, and Augmented Reality. In line with the latest technological trends, SMEs are also applying for more and more software patents. The result is an increased number of software-related patent applications filed with the United States Patent Office.

For a patent to be granted, the invention must constitute patentable subject matter under 35 U.S.C. 101, along with being useful, novel and non-obvious. Still, there has been a lot of variability in the IP world regarding the definition of such judicial exceptions for patentable and non-patentable subject matter. This is primarily specific to inventions related to the software field, or inventions mostly associated with computers. Consequently, there has been considerable uncertainty as to what type of claim or specific claim language the USPTO could accept for the subject matter to be eligible for a patent. Hence, it's crucial to understand U.S. Patent Laws defining the innovation to be eligible for a patent. Let us familiarize ourselves with Sections 101 or 35 U.S.C. 101 of the U.S. Patents Act.

Defining 35 U.S.C. 101 of the US Patent Law

The USPTO has clearly defined (under the US Patent Law) what is patentable and what is not. Section 101 or 35 U.S.C. 101 of the U.S. Patent Act deals with subject matter eligibility for patenting. It states that a patent may be obtained for new and useful processes, machines, manufacturers, and compositions of matter. In addition, 35 U.S.C. 101 prohibits granting claims related to inventions that are judicial exceptions such as laws of nature, natural phenomena, and abstract ideas.

Software patents have come under a lot of scrutiny in the past few decades in the United States and hence the road to patenting software innovations in the United States has not been smooth. This is because there have been several groundbreaking cases in the past few decades that have changed U.S. patent laws related to software patents. Meanwhile, these breakthroughs paved the way for innovation and encouraged companies to file more and more software applications in the United States. It can be tentatively said that some of the Supreme Court or Federal Circuit decisions in these cases put a hold over some of the claims that could be granted.

Today, software-based innovations are highly patentable in the United States. According to the recent decisions in some landmark patent infringement cases, software can be safeguarded in the U.S. if it is distinct and tied to a machine. The uniqueness of the software is determined based on whether it is novel and non-obvious, which are core patentability requirements for any idea or invention. More precisely, the software should essentially provide some sort of a technological improvement over the prior art and shouldn't be something that can be done on a conventional computer.

It is important to note that the invention or idea that the applicant is trying to protect should not be an abstract idea. As per 35 U.S.C. 101, a claim constitutes patent-eligible subject matter if the claim is a process, machine, article of manufacture or compound. However, there are three judicial exceptions to the otherwise statutorily patent-eligible subject matter - laws of nature, natural phenomena, and abstract ideas. The abstract idea exception applies to computer-implemented methods (i.e., software). Other than the concept of abstract ideas, the U.S. patent office prohibits inventions falling under categories of laws of nature and natural phenomena to be patented.

Top Landmark Cases and their Impact on U.S. Patenting World

Let us know review the critical landmark cases that have had a significant impact on the U.S. patenting system. It is to be noted that at least 10 Supreme Court cases have directly addressed the issue of patentable subject matter. The decisions related to these cases led to an evolution of the patentable subject matter requirements of the 35 U.S.C. 101 law. Some landmark cases that had the maximum impact on the U.S. patent system regarding U.S.C. 101 were - State Street Bank vs. Signature Financial, Bilski vs. Kappos, Mayo vs. Prometheus and Alice vs. CLS Bank. The decisions taken in these cases by the Federal Circuit and the Supreme Court have been monumental. These decisions aimed at limiting the number of patents that the USPTO shall grant and at the same time led to a surge in some specific types of patent applications, such as the business method applications after the State Street Verdict.

Landmark Case 1: State Street Bank vs. Signature Financial

The State Street Bank vs. Signature Financial in 1998 was a landmark case that gave decision of the United States Court of Appeals for the Federal Circuit concerning the patentability of business methods. The federal circuit stated that the invention is patentable under section 101 as it explains that the transformation of data, representing discrete dollar amounts, by a machine through a series of mathematical calculations into a final share price, constitutes a practical application of a mathematical algorithm, formula, or calculation, because it produces "a useful, concrete and tangible result"- a final share price momentarily fixed for recording and reporting purposes and even accepted and relied upon by regulatory authorities and in subsequent trades. So, the federal circuit relied on the earlier precedent and stated that as long as the claim has a practical utility or which produces "a useful, concrete and tangible result" is not vulnerable under Section 101. In addition, the Federal Circuit determined that software programs that transform data are patentable subject matter under Section 101 of the Patent Act, even when there is no physical transformation of an article. The court emphasized that software or other processes yielding useful, concrete and tangible results should be considered patentable. Further, the court decision in the State Street Bank case made it clear to the masses that business method patents are patentable. This accompanied a massive increase in the number of business method patent applications in the United States.

Landmark Case 2: Bilski vs. Kappos

The United States Supreme Court ruled that Bernard Bilski's patent application for hedging the seasonal risks of buying energy is an abstract idea and is therefore unpatentable. Initially, the Supreme Court had rejected the Federal Circuit's holding in Bilski that the machine-or-transformation test is an absolute test for concluding the patent eligibility of a process. Rather, the Supreme Court held that the machine-or-transformation test is "a useful and important clue, an investigative tool, for determining whether some claimed inventions are processes under § 101 and not the sole test".

The Supreme Court further said that the claims were directed to a basic process of hedging and hence termed it as an abstract idea and something fundamental in the world of financing; hence denying monopoly over an entire process. However, the decision did not clarify the basis for judging whether a particular process is abstract or not. In addition, it raised uncertainty about the patentability of business methods in the United States. Also, the computer-implemented software claims too came under scrutiny after the Bilski decision since the machine-or-transformation test was no longer considered to be the sole test for checking patentability under U.S.C. 101.

Landmark Case 3: Mayo vs. Prometheus

The next landmark decision of the Supreme Court of the United States came in the year 2012. This was the much talked about Mayo vs. Prometheus case. It specifically dealt with the use of natural laws and their implementation. The case set a precedent for future cases where natural laws are in play and implemented or utilized in some way or the other. In the Mayo vs. Prometheus case, the Supreme Court of the United States unanimously held that - claims were directed to a method of giving a drug to a patient, measuring metabolites of that drug, and with a known threshold for efficacy in mind, deciding whether to increase or decrease the dosage of the drug - were not patent-eligible subject matter. According to the Supreme Court, the act of administering drugs to a patient and measuring metabolites to determine whether the dosage of the drugs should be increased or decreased corresponds to a fundamental principle and granting monopoly over the fundamental principles is against the patent law.

As per the Supreme Court, the correlation between naturally produced metabolites and therapeutic efficacy and toxicity is directed to an unpatentable "natural law". In addition, the first two steps of the claims were found to be not "genuine applications of those laws". According to the Court, making such determinations was well known in the art and that the current process steps simply tell medical practitioners to perform a routine and conventional activity. The Supreme Court made clear about the use of natural laws and said that the claims that contain a law of nature can be patentable as long as the claim applies the law of nature rather than simply preempting it. This means that additional elements should be added to the claims beyond the natural law such that the entire process does not merely involve steps that are - well understood, routine and conventional. In conclusion, one can say that a newly discovered law of nature is unpatentable in itself and the application of newly discovered law is also unpatentable, if the application merely relies upon elements already known in the art.

Landmark Case 4: Alice vs. CLS Bank

The Supreme Court relied upon its decisions in the Mayo vs. Prometheus and Bilski vs. Kappos cases to pass another landmark judgment in the Alice vs. CLS Bank case in 2014. In this case, the patent at issue disclosed a computer-implemented scheme for mitigating "settlement risk", i.e., the risk that only one party to a financial transaction will pay what it owes by using a third-party intermediary. In addition, the issue, in that case was whether certain claims about a computer-implemented, electronic escrow service for facilitating financial transactions covered abstract ideas ineligible for patent protection. Until this point, the software could not be patented unless it formed an element within hardware or a system. However, the software patents went for a toss after the Supreme Court ruling in the Alice vs. CLS Bank case.

The court observed that an abstract idea does not become patent-eligible by being implemented on a generic computer. The court used Mayo as a precedent and stated that an abstract idea could not be patented because it is implemented on a computer. The Alice vs. CLS Bank case verdict formed a suitable precedent for invalidating some of the more egregious software that seeks patent protection. The Alice Case had a great effect on patents for computer-related inventions, particularly software patents. Some important questions were left unanswered after the Alice case, such as - what test should the examiners adopt to determine whether a computer-implemented invention is a patent-ineligible abstract idea? Could a patent-ineligible subject matter be made patentable by the presence of a computer-related invention in a claim?

The Alice vs. CLS Bank, along with the Mayo vs. Prometheus case paved way for examining subject matter eligibility under U.S.C. 101. It also considered different approaches to conclude about patentability or non-patentability. As a result, the Supreme Court adopted a decisional approach under the Alice/Mayo framework, which provides a series of steps (Figure 1) in which the patent examiner, administrative tribunal or reviewing court has to answer a set of questions to determine whether the patent claim in question constitutes patent eligible subject matter.

The Alice/Mayo framework includes step 1, step 2A and step 2B. Step 1 requires the concerned reviewing authority to answer the first question. The first question is whether the patent claim covers an invention from one of the four statutory categories of inventions defined in 35 U.S.C. §101 (a machine, process, composition of matter, or article of manufacture). The Alice/Mayo framework is a simple yet complicated series of yes or no questions. The reviewing authority must move forward to the next step or the next question depending on the answer to the previous question. For example, at step 1, if the answer is yes, the reviewing authority must move on the next step (step 2A). Else, if the answer is no (i.e., meaning that the invention does not lie with the four statutory categories of invention), the reviewing authority must declare the claims to cover patent ineligible subject matter.

The Alice/Mayo framework truly initiate at step 2A where the reviewing authority is required to answer whether the patent claims cover one of the three specifically identified judicial exceptions to patent ineligibility. Currently, there are three judicial exceptions, namely, laws of nature, natural phenomena and abstract ideas. If the patent claim does not fall under any of the three judicial exceptions, the patent claim is said to cover patent eligible subject matter. Else, the reviewing authority must move on to the next inquiry if the patent claim covers any of the three judicial exceptions.

The third and final question which ultimately decides whether the patent claim will be rejected under 35 U.S.C. 101 falls under step 2B. Step 2B states that the reviewing authority must answer if the inventive concept that is covered in the claimed invention was "significantly more" than the judicial exception, or whether the claimed invention did not have "significantly more" and, therefore, was seeking to merely cover the judicial exception. If additional elements other than the judicial exception is not found in the claimed invention, then the reviewing authority moves forward with the 35 U.S.C. 101 rejections. Else, if the claimed invention adds significantly more and does not merely cover the judicial exception, the claimed invention covers patent eligible subject matter. The abstract idea exception occurs when the judicial exception is at play when computer implemented inventions are claimed. Until the end of 2019, the Supreme Court or the USPTO did not define "abstract idea". As a result, U.S. Patent attorneys and professionals in the IP world were still not clearly aware of what invention is an "abstract idea" and what is not.

Figure 1: §101 Subject Matter Eligibility Test

Final Thoughts

From the above discussed points, we can conclude that some inventions can surpass the abstract idea test and not all software inventions are necessarily abstract. It cannot be broadly held that all improvements in computer-related technology are inherently abstract and, therefore, must be considered at step two. There have been some improvements in computer-related technology which, when appropriately claimed, are undoubtedly not abstract. The Supreme Court of the United States has recognized the importance of software and its innovation potential. This has encouraged innovators to file more and more patent applications related to the software domain.

Therefore, it is of paramount importance for the patentees to clearly define and explain how an invention improves over the prior-art. This is crucial in the case of improvement in computer related technology. Therefore, years of patent prosecution in the U.S. have paved the way for greater clarity on patentability and have given birth to a credible and comprehensive patenting system.

Sagacious IP's Patent Filing and Prosecution service enables enterprises to protect their inventions. Our highly skilled patent attorneys assist clients in preparing a strong patent draft that build their application for a smoother review process. Hence, it is wise to outsource the task of patent prosecution to an expert that has the desired skill set. Our team of registered Indian patent agents are adept in guiding businesses by offering them end-to-end support. Moreover, our collaboration with patent attorneys worldwide offers a technical finesse that can help companies and individuals make the right decisions. Click here to know more about our Patent Filing and Prosecution service.

-Dhruv Kaushik (Intellectual Property Prosecution) and the Editorial Team

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Top Landmark Cases that have led to a Robust Patent Prosecution System in the U.S. - Sagacious IP

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U.S. patent laws and systems are certainly recognized as one of the world's leading and most efficient systems. A few landmark cases have led to the evolutionary journey of the U.S. patenting system to attain perfection, thereby resulting in a robust and reliable method for granting high-valued patents.

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Understanding Artificial Intelligence (AI) And The Need To Patent AI Inventions

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Understanding Artificial Intelligence (AI) And The Need To Patent AI Inventions

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Artificial Intelligence has changed the world in ways unimaginable. From reducing human labor and time – to making hazardous tasks seem like a piece of cake; AI has surely disrupted the general scheme of things. Today, there is probably no sphere wherein AI does not find any application. Be it Amazon’s Alexa or Google’s Siri, AI has transformed how things get done. With the growth in applications of AI, IP system encourages innovations in the area of AI that are created by humans. The future holds potential for Artificial Intelligence, and it is definitely going to scale new heights. Which is why, one must grab every chance to patent AI inventions. Read more about AI Inventions.

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Artificial Intelligence has changed the world in ways unimaginable. From reducing human labor and time - to making hazardous tasks seem like a piece of cake; AI has surely disrupted the general scheme of things. Today, there is probably no sphere wherein AI does not find any application. Be it Amazon's Alexa or Google's Siri, AI has transformed how things get done. With the growth in applications of AI, IP system encourages innovations in the area of AI that are created by humans. The future holds potential for Artificial Intelligence, and it is definitely going to scale new heights. Which is why, one must grab every chance to patent AI inventions.

This article discusses the underlying technology behind the workings of Artificial Intelligence, its algorithms, and different types. It also discusses the need to patent AI technologies, the AI trend and how describing technical effects of the AI invention can lead to AI patent grant.

Types of AI

Artificial Intelligence can be broadly categorized into two types - based on capabilities and the other based on functionality.

Artificial Intelligence type 1 - Based on Capabilities

Based on Capabilities, AI can be further subdivided into:

1. Narrow or weak AI: Narrow or Weak Artificial Intelligence encompasses almost all the existing AIs. It refers to such AI machines that perform a specific task autonomously. Such AI systems have limited or narrow competencies. Narrow or Weak AIs find application in a number of fields. Many smartphone applications include features such as face recognition, voice-based personal assistants, a search tool, etc. Other applications include vision recognition in self-driving vehicles, recommendation engines suggesting products based on purchase history, or the like. These features are goal-oriented and singular tasks that have narrow parameters and contexts. The narrow AI does not mimic or replicate human intelligence and merely simulates human behaviour on a narrow range of parameters and contexts.

2. General or strong AI: It is a concept of a machine with general intelligence that mimics human intelligence and/or human behaviour, with the ability to learn and apply its intelligence to solve any problem. This strong AI uses a theory of mind AI framework, which refers to the ability to discern needs, emotions, beliefs, and thought processes of other intelligent entitles. The theory of mind-level AI is not about replication or simulation but about training machines to truly understand humans.

One of the most notable attempts at achieving strong AI is Fujitsu-built "K-computer." However, considering it took 40 minutes to simulate a single second of a neural activity, it is difficult to determine whether or not the strong AI will be achieved in the foreseeable future. As image and facial recognition technology advances, there may be an improvement in the ability of machines to learn and see.

3. Artificial superintelligence: Artificial superintelligence is a hypothetical AI that does not just mimic or understand human intelligence and behaviour. It is where machines become self-aware and surpass the capacity of human intelligence and ability. Artificial superintelligence, while able to replicate the capabilities of human beings, would be exceedingly better because of its overwhelmingly greater memory.

Artificial Intelligence type 2 - Based on Functionality

1. Reactive Machines: Mostly basic and rather primitive, these AI systems have limited capabilities. These machines do not have memory storage, and they try to react to the present stimuli as per possible best action. This also means that they do not have the capability to learn. They cannot "learn" from their past experiences and therefore cannot use them to better their present actions. These machines can only be trusted for responding to a limited set of instructions. They cannot 'improve' their operations based on their memory. One famous example of such an AI machine is IBM's Deep Blue, the one that beat Grandmaster Garry Kasparov in Chess.

2. Limited Memory: Limited memory machines are capable of learning from past experiences and storing data but for a very short duration of time. These can be thought of as improvements over reactive AI machines. In addition to functioning as a reactive machine, it is also capable of learning from its past. It uses its past memory and volumes of data to train itself for solving future problems.

3. Theory of Mind: Although researchers are still engaged in innovating, this new type of machine is believed to have "human-like" emotions, beliefs and would be able to behave just like humans in society. While the previous-mentioned machines are a reality, this type of AI system is still a concept. It is the next level of AI system that is still a 'work under progress.'

4. Self-Aware: These types of machines exist only hypothetically. Believed to be the future of Artificial Intelligence, these super-intelligent machines will have their own consciousness and would be extremely "self-aware," just like Human Beings or even better.

Agents and environments

Agent and Environment are two significant portions of any AI. Before we begin to understand how an AI works, it is crucial to grasp an understanding of "an agent and an environment." An agent is something that can perceive while an environment is what it perceives. An agent perceives the environment through sensors and acts upon it through effectors. Examples of the agent include a program, a chatbot, a robot, etc. A 'human agent' has its sensory organs as 'sensors' and organs such as legs and hands as effectors. Similarly, a 'robotic agent' has cameras and infrared sensors that are parallel to sensors, while it has motors and actuators for effectors.

The agent and environment vary depending on application areas. For instance, in the case of a robot in a room, the robot is the agent while the room is the environment. Similarly, in the case of a vehicle on the road, the vehicle is the agent while the latter is the environment. Likewise, in the case of a software program, the program is the agent while the data and rules are the environment.

Thus, the agent is basically a solution for solving a problem, i.e., the environment. In order to work in the environment, the agent needs intelligence, which is where the AI comes into the picture. The AI helps in designing an "agent program" for the agent. The agent program runs on a computation device that is equipped with sensors and actuators. This agent program with the architecture that comprises the sensors and the actuators contributes a structure to the agent. Architecture is the machinery on which execution is done by the agent, while an agent program is an implementation of an agent function.

That is,

Agent = Architecture + agent program

An example of the agent program is the "autonomous driving" program for "autonomous vehicle" equipped with computers, sensors, or the like, which is the architecture. The sensors in the architecture perceive 'sensor data' from the environment. The sensor data is inputted to the agent program for returning "actions" that are performed via the actuators.

Based on the interaction between the agent and the environment and its applicability, agents can be categorized into different types:

1. Simple-reflex agent

2. Model-based reflex agent

3. Goal-based agent

4. Utility-based agent

5. Learning agent

1. The simple-reflex agent works on the condition-action rule. It receives percepts from the environment via the sensors and performs actions in a fully observable environment based on the said rule. "Percepts" are inputs that an intelligent agent is receiving at any moment. The condition-action rule refers to the fulfillment of action in response to a condition. For example, a room cleaner agent works only where there is dirt in a room. In other words, for a room-cleaner to perform its 'action,' there should be dirt in the room, which is the necessary 'condition.'

The simple-reflex agent is rather simplistic in nature. It has limited intelligence with no capability to adapt to changes in the environment. This inefficiency may be overcome by the model-based reflex agent.

2. The model-based reflex agent uses a model (knowledge about the environment) to perform actions in a partially observable environment. This model is the information about "how are things in the world right now." It also maintains an internal state that represents the current situation or current state based on a percept history. The percept history is a history of all that the agent has perceived to date. The state is updated based on information of how the world evolves and how the agent's actions affect the world.

There may be a time when the knowledge of the current state of the environment may not always be sufficient for the agent to decide what actions are to be performed unless there is a goal to achieve. The capabilities of the model-based agent can be further expanded to the goal-based agent.

3. A goal-based agent is comparatively more flexible than reflex-based agents or model-based agents: the reason being an explicit modeling of the knowledge supporting a decision. A goal describes a set of desirous situations. The goal-based agent knows its goal that describes desirable situations and has the capability to select an action for achieving the goal. For this, the goal-based agent performs searching and planning to select the action from a long sequence of possible actions. The selected action that the goal-based agent performs is intended to reduce its distance from the goal, which makes the agent proactive.

Sometimes, the goal achieved by the goal-based agent may not be the best as the world is uncertain. So, a measure of success for achieving the goal may be helpful to determine the best way to achieve a goal.

4. The utility-based agent is similar to that of the goal-based agent with a capability for utility measurement. The utility measurement gives a measure of success at a given state for achieving the goal. That is, the utility-based agent has the capability to select actions based on the utility for each state such that the expected utility is maximized. In particular, the utility describes how "happy" the agent is that may be determined using a utility function. The utility function maps a state onto a real number which describes the associated degree of happiness.

The environment is not only uncertain, but it can be dynamic too. As the environment expands, amount of tasks to be performed by the agent may also increase. This may require the agent to learn new actions so as to work in environments that are unknown, which results in another type of agent, i.e., the learning agent.

5. The learning agent has learning capabilities to learn from past experiences and act with basic knowledge. Eventually, the learning agent builds the ability to act and adapt automatically through learning. In particular, the learning agent has a learning element to learn from the environment, a critic component to take feedback from critics that describes how well the agent is performing based on a predefined performance standard, a performance element to select an action and a problem generator to suggest actions that will lead to new and informative experiences.

The learning agent, therefore, learns, analyzes performance, and looks for new ways to improve.

The Algorithm

In order to fully understand what runs an AI machine, it is imperative to know an AI's algorithm. Simply put, algorithms are step-by-step instructions that a machine or system needs in order to perform the desired function. One should think of it as an instruction manual that lets a machine know exactly what to do and when to do it. Artificial intelligence is powered by algorithms, using techniques such as machine learning, deep learning and data science.

Machine learning (ML) algorithms feed data to an AI system using statistical techniques. The statistical techniques enable the AI system to learn and progressively improve at performing tasks without having to be specifically programmed to do so. Programming concepts, such as functional programming, attribute-based programming, and object-oriented programming may be used to program an application to react to every input and output, which has downsides. In a real-world scenario, there are too many inputs and outputs that may not be predictable. The predictability may be achieved through machine learning algorithms.

A large amount of data is fed to machine learning algorithms as input data. Initially, the input data is pre-processed, i.e., cleaned to remove unwanted or redundant data and achieve an accurate outcome. The Machine learning algorithms crunch the input data and produce a model that has "rules" created based on the input data. Further, the validity of the model may be tested. For instance, if there is 100% of the input data, then the data is split into, say 70% of data for creating the model and 30% of test data for testing that evaluating the model. A model based on the 70% data is created. The 30% of test data is then played against the model, predicting values and determining how accurate the predictions are. Furthermore, the data may be randomized to a new subset of data for improving the results. All these steps of pre-processing data (structured or semi-structured), selecting appropriate machine learning algorithms, and creating right parameters for creating the most accurate set of data, are achieved through data science techniques.

The input data fed to the ML algorithms may be of different modalities, such as: image, video, audio, etc. The different modality of data may be unstructured and unlabelled that are processed and analysed using deep learning techniques, without the need for human labelling. This can be achieved using neural networks, such as artificial neural networks that mimic how human brain works. The neural networks help in finding patterns in data, recognizing the relationship between variables, clustering, and classification.

Nowadays, deep learning and neural networks are at the forefront of AI research and may hold the key to a future where AI can function at levels that are unheard of today. With the rise in AI applications, patenting AI-related applications has also increased.

Patenting AI inventions

AI invention patents are needed to:

protect technical innovations and technical solutions to problems

Prevent others from exploiting an inventor's AI invention

help the inventor mark out legal exclusivity around a patented product

earn a good return on investment through licensing of the patented product

Challenges in protecting AI inventions

Most of the AI-related applications, such as the core AI involve advanced mathematics and mathematical models. This challenges eligibility for patent protection of the AI inventions.

In AI inventions that are related to the trained AI models, claiming variations and ranges may be challenging. There may be objections if buzzwords and marketing terms are used for the trained AI models in claims.

Lack of technical information or insufficient of technical information to define or describe technical effects of the AI invention

Strategy to overcome the challenges

Most of the AI inventions face a patentability issue due to use of computer systems and algorithms. Also, law surrounding subject matter eligibility rapidly evolves which adds the factor of patentability issue.

In January 2019, the USPTO issued " Revised Patent Subject Matter Eligibility Guidance" to address the changes in law and stem the many patent application rejections. In October 2019, an updated of the revised subject matter eligibility guidance " Patent Eligibility Guidance Update" was released. In the updated revised subject matter eligibility guidance, " examples" are included that help in formulating a strategy for overcoming the challenges. Since the release of January 2019 guidelines, rejections of AI related patent applications have dropped from 60% to about 32%.

Making AI invention functionality practical

The AI invention directed to method should have technical means, like a machine, such as a computer or a device to add a technical character to its subject matter as a whole and prevent the AI invention from being an "abstract" that may exclude from patentability.

For example: if the AI invention is to improve a technique for analysing data such as, improves K-nearest neighbours (kNN) classification with no advantage to a technical field, then the AI invention may face rejection. However, if the AI invention applies kNN classification to achieve a specific improvement to a specific technical system then chances of obtaining a patent protecting the AI invention increases.

Thus, a complete description of technical features describing technical effects of the AI invention frames the AI invention in a way to convince patent offices to grant a patent.

Rising Trend for patenting AI inventions

In a U.S. Patent and Trademark Office (USPTO) report titled " Inventing AI: Tracing the diffusion of AI with U.S patents ", it is mentioned that AI technologies and systems as defined by the U.S. National Institute of Standards and Technology (NIST) "comprise software and/or hardware that can learn to solve complex problems, make predictions or undertake tasks that require human-like sensing (such as vision, speech, and touch), perception, cognition, planning, learning, communication, or physical action."

There is a shift in the patenting behaviour from theoretical to practical applications. The trend of AI related inventions shifting from theory to practical implementation can be seen from the WIPO Technology Trends 2019 - Artificial Intelligence report. The report states that

40% of AI-related patents correspond to machine learning technique

49% of AI-related patents correspond to computer vision

42% of AI-related patents correspond are used in telecom, transportation or life sciences.

Conclusion

Intelligence is perceived as the "capacity to think and solve problems." This capacity, which used to be the sole prerogative of humans is not limited to us - as intelligence can also be demonstrated by machines or computers, also popularly known as "Artificial Intelligence" or "AI". With advanced development in technology, AI is increasingly driving important developments across many fields and industries. In most of the applications, AI is used to assist, reduce, or eliminate human involvement in existing processes. Some of the popular applications of AI are autonomous vehicles, advanced manufacturing processes, medical diagnostic tools, e-commerce, etc. It is making an impact on the scale and speed of innovation in almost all areas.

Sagacious IP, a leader in global IP research and consulting, has helped multiple clients secure AI patents. We have an adept team of over 300 professionals who specialize in various domains. Click here to know more. At Sagacious, IP professionals have expert skills for drafting computer-implemented inventions involving AI-related application. We ensure that the drafts for such computer-implemented inventions involving AI-related application include:

Technical solution to a technical problem

Clear identification of technical advantageous features and why they are advantageous.

A disclosure of at least one set of training data and details of how it has been trained

Illustration through examples or use cases that describe how the technical problem is solved.

- Oinam Binarani Devi (ICT Drafting) and the Editorial Team

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Understanding Artificial Intelligence (AI) And The Need To Patent AI Inventions - Sagacious IP

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Artificial Intelligence has changed the world in ways unimaginable. From reducing human labor and time - to making hazardous tasks seem like a piece of cake; AI has surely disrupted the general scheme of things. Today, there is probably no sphere wherein AI does not find any application.

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Wi-Fi 6, Wi-Fi 6E & its Patent Filing Trends: Indications of the Next Evolution in WLAN Technology

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Wi-Fi 6, Wi-Fi 6E & its Patent Filing Trends: Indications of the Next Evolution in WLAN Technology

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Wi-Fi 6, also known as 802.11ax, is likely to be the next evolution in wireless local area network (WLAN) technology. The term Wi-Fi 6 is part of a new naming convention. It was imposed by the Wi-Fi Alliance on Wi-Fi standards in order to make them more easily understood by users. This standard increases the strengths of Wi-Fi 5 (or 802.11ac) and adds flexibility, efficiency and scalability which allows new and existing networks to increase speed and capacity with next-generation applications.

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Wi-Fi 6, also known as 802.11ax, is likely to be the next evolution in wireless local area network (WLAN) technology. The term Wi-Fi 6 is part of a new naming convention. It was imposed by the Wi-Fi Alliance on Wi-Fi standards in order to make them more easily understood by users. This standard increases the strengths of Wi-Fi 5 (or 802.11ac) and adds flexibility, efficiency and scalability which allows new and existing networks to increase speed and capacity with next-generation applications.

The following article talks about Wi-Fi 6 and Wi-Fi 6E technology and the patent filing trends associated with it.

Understanding Wi-Fi 6 and Wi-Fi 6E

Wi-Fi 6 can be defined as the next-generation standard for Wi-Fi technology developed in response to a demand for a faster internet connection. It is wise to select a Wi-Fi 6 or Wi-Fi 6E router for indulging in high bandwidth instruments like VR device, multiple smart home devices or simply a range of devices in home or office. Wi-Fi 6 facilitates stutter-free VR and breath-taking crystal clear 4K or even 8K streaming.

Wi-Fi 6E is very similar to Wi-Fi 6 with an additional E which stands for "Extended". While the Wi-Fi 6 and the previous generation utilized the 2.4GHz and 5GHz radio bands, Wi-Fi 6E opens up new frequency band of 6GHz for transmission. It means the consumer experience of surfing and browsing internet applications will get significantly improved. New channels will enable seamless and faster transmission for users, exploiting the tremendous opportunity that the network-connected devices offer.

Now let us discuss the benefits and features of both Wi-Fi 6 and Wi-Fi 6E in detail and understand the underlying changes in the technology. We will also take a look at the patent filing trends for both Wi-Fi 6 and Wi-Fi 6E standards.

Key Benefits of Wi-Fi 6 Technology
1. Better Efficiency
Orthogonal frequency division multiple access (OFDMA) is developed in the earlier version of orthogonal frequency-division multiplexing (OFDM) used for Wi-Fi networks. As seen in figure 1, in OFDMA, Wi-Fi channels are further subdivided to achieve simultaneous data transmission to many users. Uplink OFDMA enables the communication of data frames simultaneously by multiple stations. Similarly, numerous data frames can be transmitted in a single data unit to multiple stations via downlink OFDMA. In OFDMA, one can assign resources based on a per-time and per-frequency basis, increasing spectral efficiency.
2. Increased Bandwidth
MU-MIMO (Multi-User MIMO) feature uses 8 streams in Wi-Fi 6. For downlink communication, IEEE 802.11ac has introduced MU-MIMO; however, it has been enhanced in Wi-Fi 6. Being a major innovation over previous standards, Wi-Fi 6 also supports UL MU-MIMO technology. In this, the data is transmitted on multiple spatial streams via multi-antenna technology of the transmitter and the receiver. This function significantly improves the transmission efficiency in multi-user concurrent scenarios as well as reduces application delay considerably. It means that a user can stream, download and play V.R. games without compromising on bandwidth.
3. Reduced Power Consumption
Target Wake Time (TWT) allows devices to plan out communications with a router. It ultimately reduces the time they need to keep their antennas powered to transmit and search for signals, resulting in minor drainage of batteries and thus improved battery life. With the introduction of this technology, consumers can look forward to a better battery life - without worrying about charging on a short notice.

Wi-Fi 6 Technology with all its benefits is expected to change the face of the telecommunication and internet industry. Industry stakeholders have already identified the great scope of the technology and are competing for early patent filing. The utility of the technology is evident with numerous patents filed by some of the industry's leading names.

Top Patent Filers in the Wi-Fi 6 Technology

In Wi-Fi 6 standard-essential patent (SEP) families, the filing trend shows that Qualcomm, Huawei and Intel are among the top contributors to the Wi-Fi 6 technology standard. As shown in figure 3, Qualcomm holds about 120 Wi-Fi 6 SEP families and Huawei has more than 110. Thus, both are leading players in patents for the Wi-Fi 6 technology. The two companies are followed by Intel, LG Electronics, Newracom, Marvell/NXP and others.

Furthermore, Sagacious IP analysed and aggregated the patents related to key technologies of Wi-Fi 6 such as OFDMA and MU-MIMO regarding the patent portfolio of various companies. Considering the two main technologies, i.e. OFDMA and MU-MIMO in Wi-Fi 6, the companies with their respective total number of patent families are shown below. Figure 4 shows the top patent-holders in this domain.

As seen in figure 4, companies having a larger number of patent families in OFDMA and MU-MIMO include Intel, Qualcomm, LG Electronics, followed by Huawei, Newracom, Interdigital, Ericsson and others.

One can observe that the top 4 players are common in fig.3 and fig.4 which also reflect their market readiness for the Wi-Fi 6 technology. Hence, companies like Huawei and Qualcomm launched their Wi-Fi 6 products, such as AP7060DN devices and IPP 8074 SOC, respectively, as early as 2017 when Wi-Fi 6 standardization process was moving into the mature state in terms of Wi-Fi 6 proposal submission filing trend (see fig.5)

While observing the highest number of proposals being submitted in the ax group of Wi-Fi 6, one can derive a similar analysis wherein Huawei and Qualcomm are leading the race (see fig. 6).

The patent filings in India related to Wi-Fi 6, reveal some interesting development. Sagacious IP observed that Qualcomm is winning the race by a big margin here as well (see fig. 7).

Any company willing to cater to the Wi-Fi 6 market in India needs to perform proper due diligence if they are implementing essential features like OFDMA and MU-MIMO in their products, considering related patents are already filed in Indian geography.

Now that we understand the Wi-Fi 6 technology, let's move on to discuss Wi-Fi 6E, which is an improvement to the existing Wi-Fi 6 (802.11ax) standard technology.

Introduction to Wi-Fi 6E Technology

The Wi-Fi 6E technology allows access to a new 6 GHz band. Whenever users face trouble connecting to their Wi-Fi network, there is a good chance that spectrum congestion is the problem. 6GHz Wi-Fi can effectively resolve this issue. It leaves enough room for up to seven maximum-capacity Wi-Fi streams to be broadcasted simultaneously without interfering with each other. Furthermore, it does so without using any of the previously available spectrums.

Benefits of Using Wi-Fi 6E

Under the Wi-Fi 6E technology, the 6GHz band provides internet speeds of over 1Gbps. Furthermore, an increase in spectrum results in lower latency (less than one millisecond) for online games, video calls, or virtual computing sessions requiring an instantaneous response to keyboard commands, voices, or mouse clicks.

Similarly, the increased spectrum also quadruples the amount of airwaves (14 additional 80MHz channels, and seven additional 160MHz channels) available for routers and smart devices, resulting in lesser signal interference.

Key Features of Wi-Fi 6E Technologies

Wi-Fi 6E delivers the following advanced capabilities of Wi-Fi CERTIFIED 6:

1. Multi-User Multiple Input Multiple Output (MU-MIMO): It facilitates the transfer of more downlink data at once. Furthermore, it enables an access point to transmit data to a larger number of devices concurrently. MU-MIMO evolved from single-user MIMO (SU-MIMO), commonly known as MIMO. The purpose behind the creation of MIMO technology was to increase the number of simultaneous users that an access point can support. Initially, it was achieved by increasing the antenna counts on a wireless router. MU-MIMO is also known as Next-Gen A.C. or A.C. Wave 2. The A.C. part refers to the 802.11ac protocol.

Until the advancement of MU-MIMO, every associated station had to wait for its turn through a normal contention process subjected to vendor class and quality of service. Moreover, high mobile clients like tablets and handsets are typically limited to one and at most two streams. As a result, the client usually has a demand for throughput well below that can be provisioned in a single transmit cycle from a given A.P. With MU-MIMO, three or four MIMO streams could be implemented with additional network bandwidth overall system capacity.

2. Orthogonal Frequency Division Multiple Access (OFDMA): It effectively increases channels to augment network efficiency and reduce latency for uplink and downlink traffic in environments with high demand. OFDMA is an improved version of frequency-division multiplexing (FDM) technology used for dividing packets of information into independent bands carried by separate signals. This mode of transmission and communication is an improvement over traditional phone carriers and a switch to 4G and 5G LTE. OFDMA uses carrier signal waves, also known as subcarriers, to move small information in a more streamlined fashion.

Some of the main benefits of OFDMA are listed below:

Allows flexibility as channels and sub-channels may be toggled on and off.

Allows lower interference between cells.

It facilitates better coverage over a network.

Greater diversity and efficiency of frequency.

3. Transmit beamforming: It facilitates greater network capacity by enabling higher data rates at a given range. Beamforming uses the science of electromagnetic interference to make the Wi-Fi 6E connection more accurate. A beamforming transmission focuses a wire signal towards a specific receiving device. As a result, the signal is not spread in all directions from a broadcast antenna (which is the case in standard transmission). The resulting connection because of beamforming is direct, faster and more reliable.

4. 160 MHz Channels: Increases bandwidth to deliver incredible performance with low latency. Wi-Fi 6E is expected to become popular across the globe, unlocking a new era of connectivity with an improved experience. Wi-Fi 6E supports up to seven 160 MHZ channels for supporting numerous bandwidth-driven user cases. This increase in spectrum bandwidth enables Wi-Fi 6E devices to achieve low latency, faster speed, and higher capacity.

From figure 9, we can see that for 6GHZband (Wi-Fi 6E), 1200 MHz of spectrum & 60 channels are available, which is way higher than the previous 5 GHz and 2.4 GHz. Looking closely, we can see that Wi-Fi 6E can access 14 channels of 80 MHz, 29 MHz, 40 MHz, or 60 channels of 20 MHz.

5. Target Wake Time (TWT): TWT considerably increases battery life in Wi-Fi devices, specifically the Internet of Things (IoT) devices. Target wake time improves spectral efficiency of the connected device. The device can determine when to wake up for sending and receiving data. The technology facilitates the delivery of high-quality and consistent service for numerous devices with minimal overlap or contention. Essentially because of resource scheduling, the battery life of the connected device is better.

Impact of Covid-19 on the Wi-Fi 6 and Wi-Fi 6E Technology

For improving operational efficiency, manufacturing factories have been evolving significantly with the adoption of new technology and procedures. Augmented Reality/Virtual Reality (AR/VR), collaborative robots, Wireless IP cameras have wide applications in the manufacturing industry. Seamless operation of all these devices require enhanced wireless network connectivity. The onset of the Covid-19 pandemic accelerated the pace of digital adoption, promoting Wi-Fi 6 and Wi-Fi 6E Technology.

Overall, the Covid-19 had a detrimental effect on the Wi-Fi 6 and Wi-Fi 6E chipset demand and production across the globe. The virus's rapid spread forced the US, China, Japan, and German governments to enforce a strict lockdown. As a result, numerous manufacturing units had to shut down. The closure resulted in a decline of overall chipset production as well as the supply.

However, as the cases in the major economies began to decline, the production picked up again to the pre-Covid-19 level. By the start of this year, the manufacturing facilities had resumed, albeit with reduced labour capacity to minimize the spread of the virus. In the long run, the demand for Wi-Fi 6 and Wi-Fi 6E devices are expected to grow with work from home becoming a regular event.

Let us explore some of the top players in the global Wi-Fi 6 and Wi-Fi 6E Market.

Top Players in the Global Wi-Fi 6 and Wi-Fi 6E Market

Based on the market share and revenue, the major and emerging players of the global Wi-Fi 6E market include Cisco, Broadcom Inc., Wi-Fi Alliance, Qualcomm, Intel, Samsung, ALE international, Lenovo, Asus, TP-Link, Extreme Networks, Juniper Networks, etc.The total no. of public Wi-Fi hotspots is expected to reach 628 million by 2023. Wi-Fi 6 and Wi-Fi 6E will account for nearly 11% of all public Wi-Fi hotspots by the year 2023. Major applications of Wi-Fi 6 and Wi-Fi 6E hotspots include public transportation, airports, healthcare, retail, stadiums and intelligent cities. Chipsets over 60 million are expected to be shipped for the automobile by 2026. Wi-Fi 6 and Wi-Fi 6E will offer an augmented seamless wireless experience for an ever-growing number of vehicles. The sensors used in autonomous vehicles generate a massive amount of data (4 TB per day) which needs to be uploaded for analysis and progress.

Device Type Insight

WLAN infrastructure devices captured a major portion of market with almost 41% share in 2020. The high market is due to the increasing demand for WiFi-6 and Wi-Fi 6E chipsets used in next-generation routers, repeaters, gateways and extenders. With an appetite for higher bandwidth, global deployment of access points, as well as routers is expected to soar. Moreover, the desire to provide superior customer service will see massive investment in WLAN infrastructure and devices.

With the introduction of new wireless standards, the demand to integrate new consumer devices like laptops, smartphones and AR/VR headsets will advance rapidly. The breakthrough Wi-Fi 6 and Wi-Fi 6E technology enables the use of several new cases for consumer devices. The new use of the devices include cloud-based gaming, seamless video conferencing and 4K/Ultra-High Definition (UHD) videos. Hence, increased spending by consumers for new experiences will push the demand for Wi-Fi 6 and Wi-Fi 6E chipsets.

Application Insight

The commercial segment accounts for a major market share of 38.2% in 2020. By volume, the corporates/enterprise segment is expected to reach more than 1 billion units Wi-Fi 6 and Wi-Fi 6E chipsets by 2028. Credit for high growth can be attributed to the rapidly increasing demand for high-quality wireless connectivity across corporate offices. With acceleration in digital technology, employees collaborate with end clients via video meetings underscoring the importance of seamless connectivity. Hosting cloud applications and e-learning via streaming videos are other applications requiring high-speed and uninterrupted connectivity. Such new applications increase the demand for Wi-Fi 6 and Wi-Fi 6E enabled routers and devices.

Embracing the Internet of Things (IoT) has further accelerated the adoption of Wi-Fi 6 and Wi-Fi 6E enabled routers and devices across industry verticals. Verticals showing positive growth include manufacturing, healthcare, smart city, public sector, etc. As per the analysis, the number of IoT connections is expected to reach more than 30 Billion by 2028. This massive rise in IoT connections will need Wi-Fi 6 and Wi-Fi 6E devices as the backbone.

Regional Insight

Asia Pacific is expected to lead the race with approximately 50% share of the Wi-Fi 6 and Wi-Fi 6E in 2026. The market size in the region is estimated to reach a figure of USD 8,559 million by 2026 with an impressive CAGR of 25.6% between 2020 and 2026. Consumer devices like tablets, smartphones, laptops & P.C.s are going to be the major contributor to this growth. All these devices support next-generation wireless frequency bands to deliver a seamless network experience. China, Japan, South Korea and India are expected to be the key players in the Asia-Pacific region.

North America is estimated to be the 2 nd largest market with a 25% share by 2026. The U.S. is expected to be the major contributor to the North American market. Wi-Fi supporting Customer Premises Equipment will witness a high adoption rate in the U.S., followed by Europe. The U.S. is demonstrating marked investment in implementing smart homes, smart cities and smart industries. Apart from this, the desire for high graphics cloud gaming, self-driving cars and smart transportation infrastructure is predicted to fuel the demand for Wi-Fi 6 and Wi-Fi 6E devices in the coming decades. The onset of Covid-19 accelerated the adoption of online healthcare technology. For smooth implementation of online healthcare services, unified network connectivity becomes paramount. This again highlights the importance of delivering quality services via next-generation Wi-Fi 6 and Wi-Fi 6E technology. ( Source)

Conclusion

To summarize, Wi-Fi 6 enables users to experience high-performance Wi-Fi technology. It is likely to bring more capabilities to support smart homes, IoT and environments with large-scale deployments. Wi-Fi 6 can achieve speeds up to 4 times faster than previous Wi-Fi standards, thereby enhancing the user experience and performance of bandwidth-hungry applications like voice, video, and collaboration software.

On the other hand, W-Fi 6E provides a higher performance and lower latency Wi-Fi technology to its users. OFDMA, 1024-QAM and MU-MIMO are some of the features of Wi-Fi 6E that will provide an enhanced performance experience than the previous Wi-Fi technologies. In addition, Wi-Fi 6E facilitates additional channels to its users, hence providing less interference and higher speed. Spectral congestion leading to intermittent network connectivity will be a thing of the past now.

Wi-Fi will get its most relevant upgrade since the past 20 years with the introduction of 6 GHz Wi-Fi soon. With the upgrade, there will be more open airwaves for routers and other transmitting devices for broadcasting Wi-Fi signals. If you ever had a problem connecting your device to a network, it was probably due to spectral congestion. With Wi-Fi 6E spectral congestion will be a thing of the past. The upgrade will open new avenues for new and old entrepreneurs. Conceiving an idea is one thing and its execution and implementation on the ground is another. Inventors can retain the novelty of innovation through a sound patent strategy - patent your novel inventions, especially in cutting-edge technology like Wi-Fi 6 and Wi-Fi 6E.

Sagacious IP, a global IP research and consulting firm, enables businesses to develop and protect their technological innovations via patents. In addition, our services like technology scouting can help organizations to identify upcoming trends in Wi-Fi technology and leverage them to boost revenue. Click here to know more about this service.

-Aman Goyal, Saloni Yadav, Surendra Singh (ICT Licensing) and the Editorial Team

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Wi-Fi 6, Wi-Fi 6E & its Patent Filing Trends: Indications of the Next Evolution in WLAN Technology

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Wi-Fi 6, also known as 802.11ax, is likely to be the next evolution in wireless local area network (WLAN) technology. The term Wi-Fi 6 is part of a new naming convention. It was imposed by the Wi-Fi Alliance on Wi-Fi standards in order to make them more easily understood by users.

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Collaborative Patenting – Future of IP & Innovation

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Collaborative Patenting – Future of IP & Innovation

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Collaboration has always aided humanity in overcoming the most difficult obstacles. In order to enable technology-driven societies, technology players have partnered and implemented techniques to avoid any difficulties encountered when developing innovation-driven sustainable enterprises. While individual and/or group invention is possible, moulding the final consumer appeal necessitates communal innovation as well as coordinated regulations and frameworks. Read more about Collaborative Patenting here.

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"In the long history of humankind (and animal kind, too), those who learned to collaborate and improvise most effectively have prevailed." - Charles Darwin

Collaboration has always helped mankind maneuver the biggest challenges and hurdles. Like all other human accomplishments, technology players have collaborated and enforced methodologies to avert any obstacles faced while creating innovation-driven sustainable businesses, in order to enable technology-driven societies. While innovation can be both an individual and/or collective endeavor, shaping the final consumer attraction, however, demands collective innovation and coordinated policies and frameworks.

Evolution of Patents & Patenting

What we call patents, were known as 'royal grants of industrial monopolies' in the fifteenth century. This entity first represented "a legal right to property in a novel mechanical or scientific invention" only in the late eighteenth century. Since then, patenting and patent enforcement processes have witnessed tremendous alterations at multiple intervals and levels.

In this evolution process, multiple strategies and frameworks have been consistently formed to smoothen the development of modern-day technologies, and resultant end products. Such frameworks generally include Standards Development Organizations (SSO or SDO), patent pools, among many other consortiums and forums. These frameworks were established to nurture the integration of extremely distributed IP assets for the final adoption and harvesting of end technology.

SSOs focused on developing, publishing, or disseminating technical standards using a consensus-based standards development process. These include bodies like ETSI, ITU, 3GPP, etc. Similarly, a patent pool refers to a consortium of two or more patent owners to license one or more of their patents to one another or to third parties. The patent pools include entities like Avanci, MPEGLA, Marconi, etc., and in essence, have been created to avoid crushing patent lawsuits. For example, the 'Sewing Machine Combination" of 1856 is believed to be the first modern patent pool in the United States and was created for the same unfamous reasons.

To cater to the challenges from Patent Assertion Entities (PAEs or Patent trolls), even defensive patent aggregators were formed, with the likes of RPX and AST which have helped member organizations to avert frivolous assertions from such entities.

The discussion in the two preceding paras emphasizes on the need for collaborations to introduce technological marvels. It's evident that the collaboration has consistently paved the way forward towards continued innovation. However, many opponents may argue about some of the prevalent negatives of these collaborations and their underlying frameworks.

Need For Deeper Collaboration

All the listed consortiums and forums have end-stage utility to make smoother technology adoption. However, with the proliferation of technologies across industry sectors, there's a need for deeper collaborations, which come into action at the R&D level and prevent lawsuits and technology stagnation.

To understand the need for deeper collaboration, let's understand this from the perspective of ICT proliferation which exists in almost every industry sector, as well as study the apparent disruptive characteristic of Artificial Intelligence (AI) and Machine Learning (ML).

In the case, as illustrated in the figure below, there are a couple of probable collaboration schemes possible. Instead of working in silos, any possible collaboration from the set of probabilities would have its set of pros and cons.

Figure: Possible industry collaboration

Let us assume the incorporated ICT technologies in the end automotive product don't fall under the competitive area for either of the automotive players. Amongst one of those possibilities, imagine a scenario wherein the two automotive players initiate coordinated research into enabling ICT technologies to alleviate their absolute reliance on any ICT players, while continuing independent research in their mainstream industry segments. This strategy would help them to merge their talent pool towards collaboratively building ICT technologies and leverage their core expertise towards building breakthrough innovations in their competitive area. This is an example of a case scenario and the scope for such a possibility exists in almost all industry sectors, given the current cross-domain applicability of technologies.

So how does it benefit?

To answer this question, one may need to answer yet another counter-question - what is the degree of difference in the inclusion of such enabling technologies in such cross-industry products?

The answer is next to zero because such enabling tech is mostly similar across the market players.

This in essence means that the inclusion of such technologies isn't any objective marketing parameter, then why wouldn't companies take initiatives to execute coordinated research in such areas and subsequently develop collaborative patent portfolios to secure their market dominance?

With such strategic collaborations, industry players need to establish collaborative R&D frameworks and lay the foundation for the next generation patenting, with the hope of building a better future together for all.

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Collaborative Patenting - Future of IP & Innovation - Sagacious IP

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"In the long history of humankind (and animal kind, too), those who learned to collaborate and improvise most effectively have prevailed." - Charles Darwin Collaboration has always helped mankind maneuver the biggest challenges and hurdles. Like all other human accomplishments, technology players have collaborated and enforced methodologies to avert any obstacles faced while creating innovation-driven sustainable businesses, in order to enable technology-driven societies.

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Patent Portfolio Pruning – An Effective Method for Immediate Cost Savings

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Patent Portfolio Pruning – An Effective Method for Immediate Cost Savings

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Companies throughout the world have been evaluating their strategies and seeking for ways to utilise their profit-generating assets during the last decade. It's worth emphasising that patents are one of these assets' most valuable components. Because patent filing and maintenance are more expensive, corporations regularly examine and prune their patent portfolios to ensure that they remain relevant to their core business. The purpose of this article is to describe the process of patent portfolio pruning and how it reduces costs and allows for better resource allocation. Read more about Patent Portfolio Pruning here.

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Over the last decade, companies globally have been rethinking their strategies and looking for opportunities to leverage their profit-driving assets. It's well worth noting that patents are one of the most valuable parts of these assets. Since patent filing and maintenance incurs higher costs, companies frequently evaluate and prune their patents to ensure their continued relevance to the core business. This article aims to describe the process of patent portfolio pruning and how it minimizes expenses to facilitate better allocation of resources.

Why is Patent Pruning Important?

Patent pruning involves analysis of a company's patent portfolio to identify and categorize patents into core, non-core, high and low-quality categories. Such segmentation helps in abandoning low-quality patents to increase the total value of the patent portfolio. Almost every top patent filer has a robust patent pruning process in place. One of the primary reasons for performing pruning is the fact that patents usually become invaluable to business over time. Therefore, including them in the pruning process saves money, which can be reinvested in R&D activities, new IP filings, patent maintenance and more.

To summarize, patent pruning helps in identifying the following:

High-quality patents that can be retained/renewed

Low-quality patents that can be potentially abandoned

Let us now understand the pruning process involved here.

Pruning Process - Objective and Subjective Analysis

Objective Analysis - The Process

The main motive of objective analysis is the identification of fundamental patents (patents that are directly aligned to a company's objective). But how do we identify which patents are fundamental and which ones are not?

This can be easily done by reviewing the patent tags. Patent tagging is either done in-house or by using IPC/CPC classification codes. The major tagging parameter is 'core and supplementary', which is used to check whether a patent corresponds to the company's own products. If yes, it is considered a core patent, otherwise, it is tagged as supplementary. At the end of this exercise, the patents categorized as core can be retained whereas the ones categorized as supplementary can be pruned. Thereafter, a detailed analysis can be performed to make decisions to license or abandon them.

Besides the core and supplementary tags, there can be other tagging parameters that can further help in shortlisting patents for pruning. For instance, we can either check if the patents relate to other products, or we can organize the patents as per multi-tier technology and applicability tags.

For objective analysis, the quality indicators are - rate of forward citations, variation of forward assignees, diversity of IPC/CPC of forward citations, diversity of patent families, etc.

Objective Analysis - An Example

Let's consider this example for objective analysis. The patents of a cloud service provider can be tagged according to the tagging parameters to identify core and supplementary patents. Specifically, they can be tagged based on technology tags. Therefore, patents related to networking and content delivery (i.e., related to the cloud network or cloud category) would be core to the company and will be retained.

How to Shortlist Patents for Subjective Analysis

After identification of core patents, the remaining ones which are non-core should be studied in detail before being discarded. Instead of studying all non-core patents at once, we can prioritize them based on various quality indicators.

The main quality indicators for subjective analysis are - claim scope and the ease of evidence identification. We can also check the current market applicability of a patent or its future value in the subjective analysis.

Finally, based on this analysis and these parameters, we can decide the set of patents that should be considered for pruning and can be taken forward for subjective analysis thereafter.

Subjective Analysis - The Process

Subjective analysis is basically done for non-core patents, during which we follow the below steps:

First, we check whether the patented technology is being implemented in any of the third-party product offerings.
If yes, then the patent can be recommended for renewal or for exploring licensing/sales. If no, we need to further check if research is ongoing in the field of invention of the said patent.

In case the research is ongoing, it can be recommended for renewal or for exploring licensing/sales.
If yes, we can discard the patent. If not, then we can check whether the technology has become obsolete.

Subjective Analysis - An Example

In the case of a large network device manufacturer, objective analysis is performed to categorize patents as core and non-core patents. Then, the non-core patents are evaluated based on certain other parameters. Resultantly, some patents will have medium claim scope and low ease of identification while others will have high claim scope and high ease of identification.

Therefore, by combining both objective and subjective analysis, we can identify the patents which should be renewed to generate money and the ones which can be discarded. Furthermore, according to the F3 analysis model, fringe patents have the least potential for value generation and include monetizable, lean and obsolete patents. Monetizable patents are crucial for start-ups or companies in a different domain, lean patents have no family member under prosecution and obsolete patents are not used in any of the current products/services. To generate money from these fringe patents, we can do the following:

Impact Story

Sagacious IP undertook a project to help a Fortune 25 Cloud company with over 10,000 patents. The objective of the project was to either save money or generate revenue for the company. After pruning over 100 patents, we generated revenue and reduced expenses by:

Increasing patent sales.

Pruning over 40 patents that were 7-year-old and more than 60 patents that were 11-year-old to save costs.

Final Thoughts

Patent pruning allows businesses to categorize patents and ultimately discardlow-quality ones to increase the overall value of the portfolio.Sagacious IP, an award-winning IP research solutions provider, has been offering various IP services and solutions to its clients across the world. Be it ranking a patent portfolio or assessing possible licensees, our patent licensing and monetization services enable you to generate money from your IP. Click here to know more about this service and click here for our webinar on this subject.

- Amit Kumar (ICT Licensing) and the Editorial Team

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Patent Portfolio Pruning - An Effective Method for Immediate Cost Savings - Sagacious IP

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Over the last decade, companies globally have been rethinking their strategies and looking for opportunities to leverage their profit-driving assets. It's well worth noting that patents are one of the most valuable parts of these assets. Since patent filing and maintenance incurs higher costs, companies frequently evaluate and prune their patents to ensure their continued relevance to the core business.

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Patent Trends in Big Data Analytics: Dominating the Digital Era

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Patent Trends in Big Data Analytics: Dominating the Digital Era

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Traditional data that is structured in a way that makes it easier to manage and alter has been stored and processed by relational data management technologies for decades. People are generating an enormous amount of real-time data as a result of globalisation and the ease with which they can access the internet, which is spread across a variety of social media platforms and streaming services such as Facebook, Twitter, LinkedIn, Instagram, YouTube, Netflix, Hulu, Amazon Prime Video, and others. Big Data Analytics aids in the analysis of large amounts of data in order to uncover hidden patterns, unknown connections, industry trends, and client preferences in order to make better business decisions. Read more about Patent Trends here.

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Patent Trends in Big Data Analytics: Dominating the Digital Era - Sagacious IP

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Companies are already innovating in the Big Data Analytics space to gain an edge over their competition. Patent trends play a key role in

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Nutraceuticals – Insights on Industry & Associated IP Rights

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Nutraceuticals – Insights on Industry & Associated IP Rights

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In the current world context, health and related characteristics have become a focal point. As a result, the healthcare market has risen to prominence and has a strong market hold. While the healthy eating movement has been popular for a few years, its importance has risen since the outbreak of the current pandemic. People have acknowledged the necessity of leading a healthier lifestyle, and this is where Nutraceuticals products come into play.

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Attention to health and related parameters has been a focal point in the current world scenario. Subsequently, the healthcare market has gained precedence and commanded strong market hold. While the healthy food movement has been on the trend for the past few years, its significance has gained priority ever since the current pandemic set in. People have realized the importance of a healthier lifestyle, and this is where the products under Nutraceuticals fit right into the puzzle.

In this article, the basics of Nutraceuticals are discussed, along with their types and benefits. It also highlights the market demand and how innovations in this field can be protected through intellectual property rights. So let us first understand the world of nutraceuticals.

What are Nutraceuticals

The term "Nutraceutical" combines two words - nutrients and pharmaceuticals. It implies that Nutraceuticals offer nutrients essential for a well-functioning body and some therapeutic utilities. Stephen DeFelice coined the name in 1989 to describe products that are based on natural food sources and offer some additional health benefits. These foods focus more on prevention than on cure and help promote general well-being, prevent malignant processes in the body, and modify diseases to reduce their severity.

Types of Nutraceutical products

Nutraceuticals can be classified under four categories based on their natural sources, pharmacological conditions, and chemical constitution. These are:

1. Dietary supplements: These products contain nutrients derived from natural food products and are concentrated in liquid, capsule, or powder form, such as l-arginine, casein, etc.

2. Functional foods: These types of foods are enriched and fortified with additional nutrients that are not found in their natural form. Thus, they offer more health benefits to reduce the risk of some severe diseases.

3. Medicinal foods: These foods are very specific to their purpose and are used in the dietary management of a condition. They are administered under the supervision of a medical professional.

4. Farmaceuticals: As evident, the word is a combination of 'Farm' and 'Pharmaceutical'. It is used for the foods that are attained from modified agricultural crops or animals. These foods have medically valuable components and are highly cost-effective.

Benefits of Nutraceuticals

The continuous rise in the popularity of these products is a result of the immense health benefits they bring to us. So let's discuss them one by one:

1. A positive role in biological processes: Nutraceuticals play a positive role in several biological processes. This includes providing defense against antioxidative stress, managing cell proliferation, enhancing gene expression, and safeguarding mitochondrial integrity.

2. Increase life expectancy: It is expected that Nutraceuticals may increase life expectancy by supporting the functions of the body and maintaining its integrity. In addition, they have been suggested to improve the quality of life by preventing chronic diseases, slowing down aging, and improving overall health. Thus, increasing the quantity as well as the quality of life.

3. Disease-modifying tendency: Nutraceuticals may boost immunity and reduce susceptibility to certain diseases. Moreover, they have also been found to show disease modification tendencies, i.e., affecting the pathophysiology of the diseases to reduce its activity and progression and result in a better outcome.

Nutraceuticals Industry: Market Demand

In the early 90s, the nutraceuticals industry first started to emerge. However, it underwent phenomenal growth during the 2000s based on its unique ability to merge scientific discoveries with the ever-growing demand for health-enhancing products. Moreover, it also works as a cost-effective substitute against expensive treatments across various markets. Thus, consumer demand will remain the primary driver for the solid growth of the market.

And riding on this high consumer demand, it is expected to reach USD 826 Billion at a CAGR of 8.9% during the period 2021-2028. To put it in perspective, it stood at USD 278.8 Billion in the year 2020.

Further, the prominent markets for these products in the current scenario are - United States, Europe and India. However, China is expected to surpass them all by 2030.

At present, the United States represents the largest Nutraceutical market globally. An increasing number of US companies are looking to include Nutraceuticals in their product line. This inclusion results from a push from highly health-conscious consumer demands.

Next, the European Nutraceutical market is anticipated to register a growth rate of 7.5% CAGR during 2020 - 2025. While the Netherlands, Germany, and Sweden may emerge as innovation hubs for the Nutraceuticals market, Spain and Great Britain may prove to be the decisive test markets for new products.

Lastly, the nutraceuticals market in India is projected to grow from USD 4 billion in 2017 to USD 18 billion in 2025. There are various factors for it. The first, and the most obvious one, is the rising demand for dietary supplements. Secondly, around 15 percent of the Indian population is malnourished, which is a large number considering the huge population in the country. And the government has taken several measures to reduce the same, such as Integrated Child Development Services (ICDS), National Health Mission (NHM), and the mid-day meal scheme. Nutraceuticals have an essential role in these services by fulfilling the nutritional demands at affordable prices.

Regulations and the challenges therein

The regulations in the Nutraceutical sector pose a crucial challenge. The prominent concern is about the variation in definition across the market. This discrepancy hampers the goal of globalizing the product. For example, in Japan, functional foods are defined based on ingredients, and they should exclusively include natural ingredients. On the other hand, in the United States, functional foods offer some health benefits over and above the apparent essential nutrition. Moreover, they can include biotechnological products. In addition to it, there are no specific regulations to deal with Nutraceuticals, as we will see in the next section.

Starting with the US, Nutraceuticals are regulated under Dietary Supplement Health and Education Act (DSHEA). Under these regulations, manufacturers are responsible for the safety of the product. Therefore, the registration of the product before making it public is not mandatory. However, they have to ensure that the information on the label is genuine.

They are moving to Europe, legislations related to food come under European Food and Safety Authority (EFSA). Under this umbrella, the regulation of food supplements comes under Directive 2002/46/EC. Moreover, in contrast to the US, new products in Europe undergo stringent requirements to ensure safety before they arrive at the market.

Lastly, the next big market is India. Here too, no specific regulation has been assigned to Nutraceuticals. However, it comes under the Food Safety and Standards Act (FSSA). The manufacture, storage, distribution, sale, and import of nutraceuticals are regulated in India under the Food Safety and Standards Act of 2006.

Intellectual Property in Nutraceuticals: Patents, Trademarks, and Trade Secrets

The above discussion on Nutraceuticals lays certainty on the dynamic and growing nature of the industry. A high rate of innovation is expected with large-scale mergers and acquisitions being witnessed already - the latest being acquiring Bettera Holdings for $1 Billion by Catalent Inc.

That is why Intellectual Property (IP) becomes indispensable when capturing the Nutraceuticals market. The reason is that the market is relatively new, and it is booming with innovation. Thus, investing in IP will protect the innovators against competitors and enhance the overall value of the company and attract more investors to it. Moreover, the new players entering the market should also be wary of infringing the IP of existing players as well.

In the next section we will discuss about the different types of IP and the related concepts and how they can help you leave a mark in the Nutraceuticals industry.

Patents protect innovation

To protect your innovation, it is indispensable to get a patent grant. There are two type of protection provided under patents:

Utility Patent can provide legal protection to the novel and the non-obvious composition, formulation, manufacturing process and the method of usage of a nutraceutical product. You can refer to this case study to better understand utility patents. On the other hand, the design patent protects the distinctive visual qualities of a manufactured item, such as packaging material. You can read the article to know more about design patents.

Further, filing a patent is a complex task requiring a fair knowledge of the patenting processes, its technical aspects, and the patentability of the innovation. For a better start to the process, you can read this article on patent filing strategies.

Trademarks protect your brand

Trademark establishes your unique market identity. A good trademark helps in identifying the original manufacturer of the product. In addition, it offers protection to the labeling and packaging of the product along with the slogan and logo of the company. Thus, it confers a competitive advantage to the business by developing goodwill with consumers. This could be particularly useful for Nutraceutical companies and a trademark specialist can help such a company to decide the aspects that can be protected, as mentioned above.

Our guide on trademark can help you choose the best one for you.

Trade Secrets

They are intellectual property rights that protect a business secret via legal secrecy. In order to be recognized under trade secrets, the information should have the following:

1. It should have a commercial value.

2. It should be known to a limited number of people.

3. It should be reasonably protected by the rightful secret-holder.

Unlike patents and trademarks, neither the trade secrets require registration, nor do they expire, and nor do they get exposed to the public.

There are various types of information that a Nutraceutical company would like to protect through trade secrets. This includes examples such as protecting the manufacturing process that could otherwise be detected through reverse engineering if the process was protected via a patent. Similarly, the list of suppliers providing ingredients can also be kept as a trade secret. Moreover, a particular physiological mechanism that enhances a physiological function can be regarded as a trade secret. Lastly, even the amount of individual ingredients within a proprietary blend can be kept as a trade secret - assuming other FDA requirements are met. The only downside to this can happen if a proprietary formula can be reversed engineered - in which case it will cease to remain a secret and acquiring a patent instead might be the correct approach in this particular scenario. Similarly, 'negative know-how'* can also be protected.

*Negative know-how refers to information derived during the development stage that states formulations or processes, etc., that do not work. Such information can be critical as a time-saving measure and should be protected from a competitor.

Freedom-to-Operate (FTO)

Before a Nutraceutical product is launched, it is a best practice to know if it has the freedom-to-operate in the market. Please read this article to know the role of FTO and why an FTO analysis is paramount so that a Neutraceutical company can modify the product or packaging to mitigate potential infringement risk and protect its brand reputation.

Final Thoughts

To conclude, the Nutraceuticals industry has great potential to offer its consumers innovative products that serve their immediate health-conscious needs. Therefore, protecting that innovation is crucial to gaining market traction. Implementing a suitable Intellectual Property Right (IPR) based on your individual needs can be tricky. Our experts in IPR can guide you.

Shweta Sharma (IPP) and the Editorial Team

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Nutraceuticals - Insights on Industry & Associated IP Rights - Sagacious IP

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Attention to health and related parameters has been a focal point in the current world scenario. Subsequently, the healthcare market has gained precedence and commanded strong market hold. While the healthy food movement has been on the trend for the past few years, its significance has gained priority ever since the current pandemic set in.

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Indian Patent Filings Trend in the Life Sciences Sector

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Indian Patent Filings Trend in the Life Sciences Sector

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India's life sciences industry has grown tremendously over the years. The country's extensive formulation expertise, concentration on improving manufacturing and regulatory capabilities, and an inventor-friendly patent environment are just a few of the elements fueling the sector's rise. And, while some may argue that India's life sciences sector has lagged behind those of some of the world's leading nations, it has come a long way. Read more about Patent Filings here.

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Over the years, the life sciences sector in India has grown significantly. The country's substantial expertise in formulations, emphasis on developing manufacturing and regulatory capabilities, as well as an inventor-friendly patent regime are just some of the factors driving the growth of the sector. And although some might say that India's life sciences sector has not fared so well when compared to some of the world's leading nations, it certainly has come a long way.

In line with the above, the following article covers how the innovation index of the sector has grown exponentially, the key trends in Indian patent filings during the past decade, and the challenges that lie ahead.

Percentage increase in number of patents filed in 2019 compared to numbers filed in 2011 - ~14.5% increase

Increase in number of patents filed in last 5 years (2016-2020) compared to patents filed from 2011-2015 - ~3% increase

Increase in number of patents filed in last 5 years (2016-2020) compared to patents filed between 2011-2015 (Patents with Indian Priority) - ~35% increase

Now before we begin, let us first understand the relationship between patents and the life sciences sector. The two share a critical bond as a significant portion of the sector's revenue comes from patents. Therefore, it is no wonder that life sciences has emerged as one of the leading sectors that have seen a sharp growth in global patent filings over the years. The situation of Indian patent filings is no different.

If we observe the general patent filing trend in India during the period (2011-2020), there has been a steady increase in the filings, with total filings standing at 1,93,327. Further, if we compare the cumulative patent filings in the past five years (2016-2020) with those in the five years before that (2011-2015), approximately over 93,000 patents were filed from 2011-2015, while over 95,000 patents were filed during 2016-2020. Overall, this comparison reflects a substantial increase in filings over the past five years.

It is important to note that not just Indian filings but patent applications with Indian priority have also grown significantly from 2011 to 2020. The total number of Indian priority applications recorded during this period are more than 50,000. Out of which, over 20,000 applications were filed during 2011-2015 while more than 30,000 applications were filed in the last five years (2016-2020).

To understand the recent patent filing scenario in India, let us now discuss the past five years' trend in terms of International Patent Classification (IPCs), assignees as well as geographical distribution of Indian patent filings overall.

IPCs, Assignees and Geographical Distribution of Indian Patent Filings

Figure 1: Graph representing top IPCs for Indian Patents (2016-2020)

When it comes to technology areas in the life sciences domain (using the IPCs), the most patent filings that occurred were during the last five years (graph above). The top areas include Diagnostics and Surgery, Medicinal Preparations, Devices for Medical Purposes, Drugs for Treating Different Disorders, Process for Separation or Isolation of Chemicals, Chemical Compounds, Protein Compositions and their Preparation, Microbiology and Genetic Engineering, and Testing processes such as immunoassays. Out of these, Medicinal Preparations has shown over 28,000 patent filings, the highest number recorded among the technology areas during 2016-2020. Based on the application years as well, a similar patent filing distribution has been observed for these top ten technology areas.

Figure 2: Graph representing top Applicants for Indian Patents (2016-2020)

In terms of assignees (Figure 2), overall, India has witnessed patent filings from foreign Companies, Indian Companies as well as Academia (research institutes and universities). Out of these, the maximum number of Indian patents have been filed by the foreign firms, indicating that India is considered a leading market destination. Among the top ten foreign contributors in Indian filings between 2016-2020 are Philips, BASF, Dow Global Technologies, Procter & Gamble (P&G), Compagnie de Saint-Gobain, Unilever, Novartis, and Ethicon with 4064, 3220, 1364, 1044, 1025, 1006, 980, and 974 filings, respectively.

Figure 3: Graph representing top Indian Companies filed for Indian Patents (2016-2020)

The top Indian firms who filed patents in India during the last five years (graph above) include ITC Ltd., Dr. Reddy's Laboratories, Tata Steel, Reliance Industries, and Cadila Healthcare with 597, 586, 560, 466, and 426 patents, respectively.

Figure 4: Graph representing top Academia filing for Indian Patents (2016-2020)

But what's even more interesting is the fact that the academia (graph above) is also aggressively filing for Indian patents including both Indian & Foreign Universities & Research Institutes. The top filers among the Indian research institutes and universities are Lovely Professional University (LPU), Amity University, Indian Council of Agricultural Research (ICAR), IIT Bombay, and IIT Madras with 569, 513, 458, 396, and 396 filings, respectively. These large number of patent filings from the Indian academia are reflective of their strong research capabilities. Top foreign research institutes that have filed patents in India in the life sciences sector are - Centre national de la recherche scientifique (France) and IFP School (France) - with over 400 patents filed by each in last 5 years.

When it comes to the geographical distribution of patents with Indian priority, a vast majority of Indian filers are applying for patents within the country itself, followed by the USA, Europe, China, and Japan. These foreign filings by Indian applicants are indicative of the high potential of these markets and the degree of research done by the Indian inventors in the life sciences sector. Furthermore, in terms of inventions with a foreign priority that are being filed in India, the USA leads the filing race with over 59000 patents, followed by Europe, Japan, Germany, Great Britain, France, China, Korea, and Australia.

Further, despite the ill-effects of COVID-19 on human lives and businesses around the world, the spirits of the inventors were not dampened. The top ten assignees that filed for patents in India in the Life Sciences sector during the pandemic include Ethicon, BASF, Philips, Lovely Professional University (LPU), Unilever, University of Chandigarh, Nippon Steel, Compagnie de Saint-Gobain, Dow Global Technologies, and LG Chem Ltd. Interestingly, LPU and University of Chandigarh - with a total of over 170 patents that are competing neck to neck with the top foreign assignees (graph below).

Figure 5: Graph representing top applicants filing for Indian Patents since January 2020

In terms of technology areas, the ones that received the maximum number of patent applications during COVID are - Diagnostics and Surgery, Medicinal Preparations, Devices For Medical Purposes, Drugs For Treating Different Disorders, Process for Separation or Isolation of Chemicals such as Chromatography and Distillation, Chemical Compounds, Protein Compositions and their Preparation, Microbiology and Genetic Engineering, Testing Processes such as Immunoassays, Catalysts and Colloid Chemistry, Treatment of Water/Sludge, Medical Implants/Prostheses, Disinfectants and Similar Chemicals, and Computational Models. Among these, Treatment of Water/Sludge, Catalysts and Colloid Chemistry, Medical implants/Prostheses, Disinfectants and Similar Chemicals, and Computational Models joined the list of top technology areas during the pandemic.

Besides technology areas, the priority regions also witnessed some changes. Before the pandemic, Germany held the fifth position in terms of priority-wise patent filings. However, Korea moved up four places to replace Germany and become the fifth highest filer of patents in India during COVID times. This signifies that Korean companies are showing interest in entering the Indian market and are contributing significantly.

While the life sciences sector is witnessing rapid growth, a host of challenges exist parallelly and some lie ahead. Currently, the pharmaceutical companies, which is a part of this sector, are facing hiccups in dealing with IP litigations and rising competition due to generic drugs. Besides these, two of the biggest challenges are related to development of approved drugs - prolonged hours spent on research and the substantial investments required for them.

Rampant self-medication due to increased digital connectivity and awareness, and shift in focus towards preventive healthcare and precision medicine are also significant constraints. Lastly but most importantly, low returns on generics and strict guidelines by governments across the globe are few other limiting factors to R&D within this sector.

The Way Forward

Despite these challenges that lie ahead, innovations in the life sciences sector in India are increasing rapidly. Factors such as establishment of small molecule development and manufacturing in India by foreign and native firms, increasing activity of companies in development of biosimilars for global market, recent changes in policies for advancing innovative medicines in India, rise in expenditure on healthcare, and active involvement of Indian companies in developing new precision medicines and their collaborations with foreign companies to provide access to unique treatments are anticipated to propel the sector to newer heights.

Sagacious IP is a leading IP solutions provider that has been instrumental in helping companies to protect and maximize their innovation. Our technically sound team of patent professionals cover diverse technological areas. Visit our website to know more.

Ankur Gupta (Life Sciences) and the Editorial Team

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Indian Patent Filings Trend in the Life Sciences Sector - Sagacious IP

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Over the years, the life sciences sector in India has grown significantly. The country's substantial expertise in formulations, emphasis on developing manufacturing and regulatory capabilities, as well as an inventor-friendly patent regime are just some of the factors driving the growth of the sector.

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A Complete Guide to Cover Patent Drawing Office Actions

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A Complete Guide to Cover Patent Drawing Office Actions

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Patent drawings, illustrations, and diagrams are essential for proving an invention's uniqueness. The intricacy of well-defined illustrations is considerably better at explaining a product's new feature or functioning. Without a product representation, the examiner or an average spectator may struggle to understand the inventor's idea or creation. Patent drawings have become more easier thanks to the development of drawing tools. Previously, if an examiner rejected the drawings for alteration, manually correcting the drawings could take weeks or even months. Advanced tools, on the other hand, make the process of correction much easier.

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A Complete Guide to Cover Patent Drawing Office Actions - Sagacious IP

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Patent drawings, illustrations, and diagrams hold the key to effectively demonstrating the novelty of an invention. A product’s new feature

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How our Patent Portfolio Analysis Helped a Taiwanese MNC to Optimize its Resources & Increase Profit

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How our Patent Portfolio Analysis Helped a Taiwanese MNC to Optimize its Resources & Increase Profit

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An organization's patent portfolio must be evaluated on a regular basis in order to make the best use of its resources. It leads to increased returns on investment and lower operational costs, ensuring that the organization's success graph is always on the rise. Our most recent case study demonstrates how Sagacious IP's patent portfolio management services improved an organization's performance and helped it achieve long-term success.

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How our Patent Portfolio Analysis Helped a Taiwanese MNC to Optimize its Resources & Increase Profit

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eriodic evaluation of an organization’s patent portfolio is indispensable for better utilization of its resources. It results in higher

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How Presales Support Can Skyrocket Your Business

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How Presales Support Can Skyrocket Your Business

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Companies are continuously seeking for strategies to outcompete their competitors and grow their operations as the business world becomes more competitive. While marketing and sales departments are critical for corporate growth, presales departments should not be disregarded. This is because these departments assist sales teams in a variety of ways, such as simplifying the sales funnel and identifying areas for development in order to close more deals in the future.

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With rising competition in the business world, companies are constantly looking for ways to outcompete their adversaries and boost their businesses. While marketing and sales teams are crucial for driving business growth, the role of presales departments cannot be overlooked. This is because these departments support the sales teams in various ways including simplifying the sales funnel and identifying areas of improvement for closing future deals.

In line with the above, the following article sheds light on the importance of presales support in driving the growth of companies.

Understanding Presales

Presales simply refers to the different activities that take place before sales, i.e., before deals are closed. This includes tasks such as identifying sales-qualified leads, conducting product and market research, performing customer analysis, preparing buyer personas, and at times preparing project proposals.

The teams tasked with presales activities support sales teams to achieve their targets, centralize the process and systems such that sales teams do not work in silos, and bridge the gap between sales and other teams. In essence, presales teams lay the groundwork for the success of sales oriented organizations.

How Presales Department Supports Sales Team

Improves Efficiency and Saves Time

Companies that intend to onboard new clients or close business deals need to ensure that their sales teams function effectively at all times. Presales departments can help sales teams by optimizing their efficiency and saving time. One way in which these departments can do this is by setting up tools such as: TextExpander for saving time, Paperflite for data centralization and analytics, Zoho CRM for setting up campaigns and managing leads and contacts, and Loom for recording and sharing videos with clients. For instance, a client named Kerry, who expanded 1160 snippets in a month, saved nearly 7 hours that month using TextExpander. This saved time was better utilized for connecting with new clients.

Bridges the Gap Between Sales and Other Teams

Presales departments can also help in bridging the gap between sales and other teams such as marketing, operations (Ops), and accounts. For instance, if sales team decides to create a new website for increasing sales, it can involve the presales team along with the marketing team. This is because a presales team has expertise in conducting market and competitor research that is required for the successful creation of websites.

When it comes to Ops teams, especially in the IP domain, a presales team can be extremely helpful in extracting patent data using credible search tools. If need be, this team can also collaborate with accounts team.

Analyzes Portfolios of Prospective Clients

Before closing a deal with a prospective client, the sales team must ensure that their portfolio has been analyzed. In the IP industry, it is crucial to evaluate the patent portfolios of prospects. A presales team can help in analyzing such portfolios using state-of-the-art tools such as PatSeer and Questel Orbit. Performing this analysis is critical for determining whether the prospect in question is a good fit for the company.

Maps Projects Using Centralized Repository

A Presales team can support the sales department by maintaining a centralized repository of all the projects undertaken by a company. So, when a prospect approaches the sales team with a project, a quick search can be run to determine if the company has worked on a project similar to that of the prospect. In case it has, the same methodology or service can be used for saving time.

Disseminates Relevant Information

Presales departments can help in disseminating industry-related information to companies or specific clients. One way of doing this is by creating client newsletters that can be distributed through various channels to keep the readers abreast of the latest happenings in their industries. For instance, in the IP industry, presales departments can help in preparing fortnightly or monthly newsletters for IP-related companies. The content of these newsletters can include IP-related topic of the fortnight/month, patent filing trends, IP news, articles, press releases, and other publications.

In addition to playing the aforementioned roles, presales teams can also be actively involved in promoting and advertising content to reach the target audience along with the marketing team. By doing so, these teams can boost the company's brand awareness, lead generation as well as conversions.

Conclusion

With an immense focus on the sales teams for closing deals and driving businesses, the presales departments are often left unnoticed. However, emphasizing on growing businesses without ensuring operational support for sales teams can eventually impact their ability to achieve sustainable growth. Since presales teams provide this support, it is imperative for both teams to work in collaboration for ensuring business growth.

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How Presales Support Can Skyrocket Your Business - Sagacious IP

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With rising competition in the business world, companies are constantly looking for ways to outcompete their adversaries and boost their businesses. While marketing and sales teams are crucial for driving business growth, the role of presales departments cannot be overlooked.

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Using Technology Landscape Analysis For Tech Credentialing

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Using Technology Landscape Analysis For Tech Credentialing

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Conducting a thorough analysis, such as a Technology Landscape Analysis, prior to entering a market offers the best potential chance of success. The primary insights gained from such an examination aid in making sound decisions. It illuminates critical components such as the current market situation, level of competition, the organization's market position, the most up-to-date processes and procedures, and much more.

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Using Technology Landscape Analysis For Tech Credentialing - Sagacious IP

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Conducting a comprehensive analysis, such as a Technology Landscape Analysis, before entering a market ensures success to the greatest extent