How to file a U.S. design patent application? Protecting ornamental designs is one of the crucial aspects of manufacturing companies at a global level today. Since the products consistently are driven through customers’ changing requirements, their respective designs improved. It is understood that design patents provide protection of the ornamental design or shape of the product for some years in a given jurisdiction. However, it Is equally crucial to understand what portion of the design needs to be protected. Quality design patent applications require less time to get approved from the patent office as compared to a utility patent. However, components within the product to be protected have to be clearly laid out in terms of views to be compliant with USPTO requirements. Some key points to be taken care of while filing a design patent include: Understanding the product based on its uniqueness ornamentally. Taking care of internal components within the product to be claimed or not Defining all claimable parts of the product and discriminating with the non-claimable part Providing USPTO compliant shading, lines, color distinctions of claimable part from non-claim part Including necessary ornamental representation of parts of the product Complying to 37 CFR requirements laid out by USPTO Like in utility patent applications, the design patent applications are subject to the examiner’s review of prior patents and literature available in the market. Hence, it is recommended to conduct a thorough design patent search based on keywords, classes (Locarno, Domestic design classes), and their combination to ensure the patent application is not susceptible to easy rejection from USPTO. PatentManiac provides high-quality design patent filing services with competence, precision, and quick turnaround time. In case of any questions, please reach out to us at mail@patentmaniac.com or visit www.patentmaniac.com
How to Search for State-of-the-Art?
How to Search for State-of-the-Art? Inventions to be patented are either absolutely novel or an improvement suggested to the previous or existing solutions present in the market. As the innovation industry evolves every decade, various solutions to existing problems are identified and filed with patent offices. These solutions are more economical, less complex, and easily integrated with emerging technologies. As a matter of fact, the twenty-year lifecycle of a patent gives ample time to evolve around an existing patent and identify alternative ways that are less costly, more efficient, and easily adaptable to state-of-the-art technologies. This makes the problem exist however solutions corresponding to it are now diversified. Hence, a State-of-the-art (SOTA) is majorly a need of Fortune 500+ companies to build and strengthen their patent portfolio by understanding patents solving one or more problems, and identifying novel techniques to solve the problem which is less complex and more economical from a problem standpoint. It is to be understood that a basic need to State-of –the-art is also to understand patents issued or applications published within the last twenty years to see and understand a technology area or a technical problem and its solutions. Some tips that shall be considered while conducting a SOTA search include: · Twenty Year Lifecycle of patent · Covering Active/Inactive patents · Relying on Class (IPC/CPC/U.S.) based search · Conducting Broad search with respect to the technological problem · Limiting the search to claims, if possible to gather relevant patent data-set It is recommended to exclude patents before twenty years as the technology stands outdated. The patent data-set gathered serves as the right guide to review and understand various solutions to a technical problem. In case of any queries, please reach PatentManiac at mail@patentmaniac.com.
How to conduct an effective FTO Search
How to conduct an effective FTO Search A Freedom-to-Operate (FTO) search is performed to understand enforceable patents that can become a cause of patent infringement while launching a product or a service in a jurisdiction. From an effective launch standpoint, it is one of the crucial steps to evaluate and judge if the product developed has already been covered by a patent active in the country where the product is to be launched. Specifically, the features associated with the product are generally checked if they are covered in the claims of enforceable patents. In order to perform an effective FTO search, people should understand core features around the product and perform the search accordingly. From an IP perspective, the claims are reviewed and the degree of overlap with respect to core features of the product is evaluated. Once the search is performed and the closest enforceable patents are identified, a one-to-one comparison of core features is done to finalize the risk analysis. The risk majorly is classified into below aspects: Changing / Adding core features within the product without increasing costing of the overall product. Licensing with companies owing the patent covering the core features of the product. It has to be understood that a comprehensive FTO search shall be conducted to uncover any potential enforceable patent that can also be considered while developing around the product to make is complex and less infringing. This strategy is generally used in different technologies to plan and extend features in the product. From a product development perspective, both products and services are considered equal in terms of conducting an FTO search. To put it simpler, any service (including SAAS) is equally susceptible to patent infringement while launching in one or more jurisdiction. It is a common perception that the FTO search is product driven. However, this perception is NOT completely true. Sometimes, both product and service provided by the product are launched together. In these circumstances, one needs to understand the nature of FTO that needs to be checked. For example, if someone is launching a Baby Doll with an AI-based technology to understand and respond to a kid’s enquiry, one should consider the AI-based technology being part of the core feature to be considered for the FTO search rather than the design of the baby doll. Hence, one needs to be well aware of the core features in the product or service that is to be checked via an FTO search to avoid infringement. Quick pointers for an effective FTO search will be: Classifying core features of the product to be launched. Conducting patent search within 20 years from the date of filing in the jurisdiction where the product is to be launched. Conducting the broadest level search on “Claim” section of the search tool to uncover everything around the product literature. Classifying the risk around the enforceable art identified in terms of product re-development or licensing. In case of any queries, please reach PatentManiac at mail@patentmaniac.com.
How to Get a Patent in the US?
The United States is the innovation hub for various technologies based inventions that are filed with the patent office (USPTO) directly or with a foreign priority. Every year, hundreds of thousands of patent applications (Provisional or Non-provisional) are filed with the U.S. patent office. Each application covers a novel idea that requires a thorough inspection by examiners of the patent office before issuing a patent. It is to be understood that an idea’s inception needs to follow a set of procedural steps through an experienced patent attorney, who works along with you to interact and prepare the patent application to be accepted by the U.S. patent office. One wrong step can sabotage a complete patent application and lead to thousands of dollars loss. Hence, from an inventor or company standpoint, it is highly recommended to follow each step comprehensively in order to get a patent on your invention. The steps that are pillars to a strong patent application include: I. Conducting a Patent Search on the Idea – Whether your invention is a novel method, product of both, it is very much important to review what is there in the market (normally termed as Prior Art Search) that is exactly similar or nearly similar to your invention. This step is crucial and acts as a guiding path for polishing your invention and the patent application in general. II. Choosing Patent Application Path – Based on the Patent Search conducted, the patent attorney can discuss the position of your invention with the degree of closeness of the Prior Art identified. Once it is discussed, the attorney can advise to follow one out of provisional and non-provisional. The provisional application gives 1 year to the inventor to improve and finalize the invention so that it doesn’t look similar to what has been identified in the patent search. Otherwise, Non-provisional is recommended. III. Drafting the Patent Application – This is the most crucial and important step in the complete process which defines boundaries in your invention. A carefully written patent application allows easy prosecution and shall cover the boundary of your invention without breaching anyone else. The patent attorney shall write and review the patent application and take inputs from the inventor at each step, so that there is no technical or legal limitation to the claims of the invention. Hiring a right set of legal experts to draft a patent application is really important as it directly controls the patent prosecution cost. IV. Filing the Patent Application – Once the patent application is drafted and reviewed by the patent attorney and inventor, it is ready to be filed with the patent office (USPTO). The U.S. patent office accepts either E-Filing or Paper-filing via a licensed patent agent or attorney registered to practice with the U.S. patent office. It is to be kept in mind that each way of filing the patent application requires the inventor to provide certain information to the patent agent or attorney like Name, Address, Financial Status (for discounted patent filing fee). Once all these details are filled on your behalf by the appointed patent agent or attorney, you receive a filing receipt that the patent agent or attorney will share with you, along with all other documents received from the U.S. patent office. V. Publication of the Patent Application – From the day of filing the patent application, the U.S. patent office publishes the patent application for view to the public within 18 month(s) from the day of filing. This is to ensure that the patent application is open in public domain and can be reviewed directly. Sometimes, for specific technical area(s) that are related to national security, the patent application is not published but issued directly as a patent. VI. Examination of the Patent Application – The published patent application is now allocated to an art unit, which is a technical department of patent examiners who are subject matter experts. This assists in reviewing the application at pace. If the patent examiner allocated from the art unit with the U.S. patent office finds your invention not novel, he/she can issue an objection to the patent application (specifically to the claims of the patent application) and send it over to the appointed patent attorney to respond within a time frame allocated. Based on the type of objection, the patent attorney might consult with the inventor and file a response to the office action with agreement or denial of objection raised. A couple of such office actions are generally common with a patent application. However, that cannot hold true for each idea. VII. Issuing a Patent– Once the examiner and patent attorney have agreed or come to a common standpoint on the patent application, the patent office approves a patent to the inventor and gives the inventor rights to the invention for a period of 20 years from the date of filing. In case of any queries, please reach PatentManiac at mail@patentmaniac.com.
Evidence of Use (EoU Charting) – Best Practice(s)
Evidence-of-Use (EoU) is categorized as one of the most crucial services for patent portfolio managers, patent practitioners, and individual inventors. It is the foremost analysis step to pursue patent litigation or licensing with potential parties. It is advisable to check for potential infringement in order to license the patented technology for monetary benefits. However, the trend has changed over the years. During the patent life-cycle, once the patent has been filed and under the prosecution stage, the patent holders do check for potential infringement on their published claims. Herein, the EOU analysis is of immense use. It is always recommended to be very comprehensive in your analysis while developing these EOU charts for litigation purposes. There are different objectives to be catered while you check for infringement levels. The objective varies from type of licensing to sole monetization or both. In order to develop EOU charts, one must be sure of the objective to be achieved so as to customize the efforts. The most common case is to look for all types of infringers reading on the enforceable patent in a jurisdiction. Herein, one must customize the efforts based on: Dominant players within the technology of the patent Forward Citations of the patent Method/System claim targeted in the patent Checking if the patent falls under certain standards (SEPs) Once the above is understood, the search is well-aligned to identify big players who are potentially capable of licensing or paying royalties. There are numerous approaches to conduct EOU based searches and certain ways of developing infringement charts. The best approach to search and chart an EOU include: Identify/Shortlist/Understand the broadest Independent claim within the patent Conduct a quick search to Identify big players active in jurisdiction and covering the technology disclosed. A strong eye on Citations of the patent, especially the forward citations Conduct a post-art patent search to identify companies with patents in similar technology as disclosed in the patent Conduct Google search (sometimes on E-commerce platforms as well) to identify similar products of infringing parties Referring to multiple documents for a single product charting in case(s) of different versions of same product Use Commercial terms rather than technical terms while framing keyword based approach It is known that there is no standard approach while we conduct the search for Evidence-of-use (EOU). However, a good amalgamation of technology in question, broadness of the claims, time-window, and other essential parameters (Right set of Keywords) allow one approach to be adopted over the other. A sellable Evidence-of-Use (EOU) chart should have the element-by-element mapping of each element and its role being performed by a product being sold. Sometimes, it does require search and reviewing a Trade Secret (which is NOT easily available). For product-based invention, in order to review the infringing party’s product, it is advisable to do proper reverse engineering before going from infringement. Sometimes it does happen that the infringing product is purchased and opened up to see the exact functioning of the infringing product. From a researcher’s standpoint, it is advisable to review the patent with description and NOT rely on claims only. If required, a prosecution history shall also be reviewed to understand the claims being enforced are understood.
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Patent Drafting Strategies – What to follow and What to avoid?
Patent drafting has been one of the most crucial exercises for any IP professional to understand and develop skills around. Quality patent application ensures client’s invention boundaries are well protected and infringement levels are low. There are numerous guidelines that advise on steps to be followed while writing a professional patent application draft but they radically change from technology perspective and maintaining invention boundaries. There are many rulebooks but entrusting one of them over the other might not be a good idea. Patents are written and prosecuted manually, hence the patent office perspective sometimes does not align with the attorney’s viewpoint. Hence, we receive office actions. Although we can lay out rules for various sections of the patent application, it is evident that a patent practitioner shall understand and develop skill-sets pertaining to the technology area and write applications accordingly. Some of the key points include: Writing quality claims with special attention to independents – It is the most crucial part of the overall patent application and needs to be strategized concerning 35 U.S.C 101, 102, and 103. Hence, the invention shall be classified within a process, system, article of manufacture, and composition of matter. Secondly, the invention needs to overcome novelty and obvious parameters to avoid rejections. Enabling claims property– This is an essential portion of the specification part and requires all claims (Independent and Dependent) to be explained through one or more essential embodiments. This makes your invention more clear during the examination procedure and helps in the prosecution stage. However, it is recommended that one should also explain alternative embodiments along with the essential ones to cover defensive publication as well Enabling Embodiments with Figures – A mandatory and not unconventional way is to explain through figures and flow diagrams each embodiment in the description is quite essential while writing the detailed specification. It is to be understood that each embodiment shall be explained in order, along with non-enabled alternatives as well. This helps to visualize the invention with variation in scope and avoids infringement on your patent-based products or services by your competitors. Full-filling Best Mode Requirement-Conventional but a good approach is to explain the best mode in which your invention would work. This exclusively enables the parameter where your invention was conceived. Overcoming 37 CFR Rejection – This section is totally based on the supporting figures being made compliant with the patent office rules and labeling appropriate elements of the figures in the description section. Non-labeled or uncovered labeled sections both correspond to 37 CFR-based rejections. It is recommended to consider and adapt any PTO based ruling on a technology area and develop claim strategy accordingly. Sometimes, one shall consider standard essential patent (SEP) based infringement as well apart from prior art(s) identified and considered while writing the claim section. Some claim writing tricks that shall be helpful include: Developing system/method-based diagrams to depict and categorize essential elements/steps from the non-essential. Focus and elaborate more on essential elements/steps. Understand to draft patent applications driven towards system or method oriented based on prior arts and basic SEP analysis. Develop a chain of dependent claims strategically, i.e. Independent-dependent, dependent-dependent accordingly. Try not to be repetitive in claims, i.e. avoid repeating system dependents in method independent and vice-versa. Follow and consider ruling-based guidelines (eg: Alice ruling in software etc.) to improvise on claim language and avoid rejections. Try to write a claim in a way that it is written more on a global standard for considering multiple country-based patent filings.
Patent Landscape Search
Patent landscape search has been a conventional yet a smart approach to enter or understand the patent market within one or more jurisdictions. It is often used synonymously with patent FTO search as well. However, both of these searches are related amongst themselves. From a conventional standpoint, a patent landscape study allows us to understand a broader technology with finer details through graphs, charts and state-of-the-art based automation techniques. It helps us visualize a patent marketplace, strengths, weaknesses of some classified or upcoming technologies over the other. Companies who need to enter or invest in technologies in one or more countries do require effective patent landscape study during their decision making, so that they can develop different strategies including licensing, portfolio creation, transactions etc. However, the utility of patent landscape is multi-faceted as it is conducted on a generalized technology with thousands of patents being considered. The outcome of the analysis can be shown via 3-D, 4-D charts including, but not limited to – Sunburst, Heat Maps, Bubble Chart, Waterfall etc. for data visualization. Sometimes, it is preferable to show the analysis using an external dashboard with customized content. There are many approaches to conduct an effective patent landscape. However, it is recommended to understand the technology targeted in detail, so that the relevant patent data-set gathered from multiple sources is correct and up to date. Once this is performed correctly, one approach to refine the data-set is: Classification of the data-set into sub-technologies, followed by breaking them further till there is no further technology classification left. A general rule is to reach 5% of the overall size of the patent data-set till one should stops technology classification of the patent data-set. Generating Sunbursts and heat maps of the technical classifications performed on patent data-sets. Expansion of the patent data-set into extended families to uncover all geographies where the patents have been filed. Charting regions wise graphs including filing trends, geographical distribution, legal activities, dominant players, dominant inventors and their combinations. Generating bubble charts relating to classes where most of the patent data-set has been classified to understand white spaces and strength of the patent data-set. In addition to the above, it is always recommended to integrate state-of -the–art dashboard tools with the patent data-set to uncover and customize hidden insights or upcoming technologies within the general technology. Hence, the patent data-set and its correctness is of foremost importance to conduct a patent landscape in a correct manner. Otherwise, all the follow-up analysis becomes useless and skips essential key points to be deduced from the source data. There are many automated and artificial intelligence based tools that allow quickly extracting patent data on a certain technology and generating analytic charts based on the patent data. However, they lack essential ingredients, i.e. manual classification of the patent data. Since the manual extraction, followed by classification of the patent data is incomplete, the upcoming trends (for example, new patent applications published) are skipped by these automated tools. The best approach is to manually extract and filter the patent data-set, followed by integration with these artificial intelligence and dashboard tools. In this way, we generate highly efficient and knowledgeable analysis that helps in achieving decision making while entering a particular technology or licensing with owners of the patent in one or more jurisdictions.