Patent Business Lawyer in Asia

Patent Attorney practicing Patents, Corporate Law, Mergers and Acquisitions, Venture Financing, Startup Technology Law

This case study is about IP services provided to a client in the domain of cloud telephony. Specifically, the cloud telephony company developed an innovative technology product and this case study provides a reference for patent attorneys and intellectual property law firms worldwide.

Oroginally published here.

Cloud Telephony Product – Innovative Technology

The innovative technology product is aimed at offering cloud telephony solutions to users for performing secure transactions via mobile devices.

mobile app software patents

Task – IP Protection

Client wanted to protect overall intellectual property (IP) associated with the innovative product, including the technology powering the product, corresponding product and / or service embodiments, and related aspects of intellectual property rights (IPR).

Patent Portfolio – Creation and Development

The first step executed was to create a patent portfolio by drafting and filing multiple patent applications covering different embodiments of the innovative product. The aim of creating patent portfolio was to add value to the company’s intangible assets by developing the patent portfolio into an asset with global execution potential by way of patent licensing and patent assignment.

 

The patent portfolio included patent applications having claims protecting broad level scope to cover overall technology and corresponding aspects embodied over the wireless network. For example, the parent patent application claimed features to connect users of the product in a secure environment.

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Cloud Telephony Patent – Case Study – Patent Strategy for International Patent Filings and Global Brand Protection via Trademarks from Rahul Dev

Patent Filing vs. Product Launch

Considering the fact that the innovative technology could be applied across multiple industry sectors, parent patent application was filed well ahead of the product launch date and subsequent patent applications were filed in a timely manner in-sync with the subsequent versions and features of the technology product.

Patent Strategy

An accelerated patent strategy was formulated for the client with a view to achieve timely and enforceable patent protection across multiple jurisdictions based on the business interests of the client. Consequently, a strong patent portfolio was created and developed across different countries by way of international patent filings (PCT International Phase Patent Filing, PCT National Phase Patent Filing, Paris Convention). By taking advantage of the patent cooperation treaty (PCT) as per the WIPO (World Intellectual Property Organisation), patent filing procedure across different patent offices was streamlined by bringing together a strong network of international patent attorneys to work on the project.

Brand Protection – Trademark Registrations

In addition to patent protection, multiple brands associated with the product were protected by filing applications for domestic and international trademark trademark registrations. International brand protection was achieved by way of Madrid system, which includes Madrid Protocol, which is related to Madrid Agreement, an international treaty to facilitate international registration of trademarks and management of trademark applications.

Conclusion

Therefore, as may be seen, different aspects of intellectual property rights can be protected by collectively filing multiple patent and trademark applications, both domestically and internationally.

Rahul Dev, Partner at the law firm of Tech Corp Legal LLP, is a patent attorney and international technology business lawyer. Dev’s corporate law practice is aimed at integrating patents, technology laws, intellectual property rights, regulatory and security laws to provide services to Tech companies.

Patent Drafting Resources

  1. Patent Drafting and Writing Strong Patent Applications for Creating & Protecting Inventions

  2. Patent Application Writing Guide | Ultimate Cheat Sheet for Drafting Software Patents and Mobile App Patents

  3. Patents in MedTech – Online Healthcare & Medical Practice Management

  4. Patent Research & Analytics | Where Patent Analytics Are Headed – Harnessing Power of Patent Analytics for Patent Strategy

  5. Frequently asked questions (FAQs) | Drafting and Writing Provisional & Non-Provisional Patent Applications (Specifications)

  6. How and Why are Patents Important for Technology Companies & Startups In Asia?

  7. How can Patent Search help in determining Patentability of Invention?

  8. What is the meaning of Patent Pending Status?

  9. What are advantages of Filing a Provisional Patent Application?

  10. What is a Provisional Patent Application?

About Us – Indian Patent Law Firm

We, at Tech Corp Legal LLP, an Indian law firm serving global clients and patent attorneys worldwide, provide quality patent drafting services to inventors. Along with patent support services provided by GIP Research, we offer top quality patent specification drafting services including enforceable patent claims and high quality patent illustrations.

Our team of patent attorneys and technical patent experts has comprehensive experience in executing projects pertaining to international patent drafting, patent drafting services, drafting patent claims and patent applications, software and mobile app patents, provisional and non-provisional patents, patent searches, office action responses, etc.

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Rahul Dev is a Patent Attorney & International Business Lawyer practicing Technology & Corporate Laws. He is reachable at info (at) techcorplegal (dot) com & @rdpatentlawyer on Twitter

Discuss your Queries

https://clarity.fm/assets/widget_loader.jsFrequently asked questions – Patents, Technology & Internet Laws ***************************************

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About the Author: Rahul Dev

Engagements: Contractual Consulting, Hourly, Project Based

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This is not a legal advice: Disclaimer, Non-Solicitation & Liability

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Patent Basics and Intellectual Property Rights from Rahul Dev

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IPR Protection for Hardware Startups – Patents, Trademarks, Copyrights and Designs from Rahul Dev

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How to Hire a Startup Lawyer – Ultimate Guide to Understand Startup Laws from Rahul Dev

Important Website Terms of Use & Legal Disclaimers for Online Business Models and Mobile Apps Download free ebook for “Drafting Website Terms and Conditions – Important Legal Considerations”:http://app.getresponse.com/view_webform.js?wid=9764902&u=SkJ5Add to Flipboard Magazine.https://cdn.flipboard.com/web/buttons/js/flbuttons.min.js

Often we come across multiple blogs and other related content (videos, images, presentations, documents, eBooks etc.) written by experts and it can get troublesome at times to read and grasp multiple such blogs at one go.

Industry experts are mostly reading and writing at the same time, so if valuable content is curated and presented smartly, it can boost effective knowledge sharing.

patent law firm

This article is aimed at compiling five (5) interesting blog posts pertaining to law and technology, covering diverse topics. Hope these blog posts form an interesting and valuable read:

a. 7 Considerations While Drafting a Non-Disclosure Agreement (NDA)

It is commonly observed that every business discussion between two parties requires disclosure (or exchange) of confidential information, which mandates the execution of a non-disclosure agreement (NDA), also known as the confidentiality agreement.

Parties execute the NDA to protect confidential and proprietary information shared by (and between) each party. In most cases, NDAs act as first step towards subsequent business agreements and contracts, which include additional provisions to cover complexities of business transactions between the parties.

While drafting a confidentiality (non-disclosure) agreement, it is crucial to ensure interests of both the parties is adequately secured by including the required provisions in a well-defined manner and excluding provisions that are not required. Read more here.

b. Your Ultimate Guide To Understanding IPR for Hardware – Patents | Trademarks | Designs | Copyrights

“80% of things that surround us are not made by God, they are made in China”. Considering the dynamically changing landscape of hardware products due to latest developments in technology and introduction of lean manufacturing methods, it has become feasible to launch a hardware business that solves a real world problem.

However, while starting a business involving hardware as core product, adequate considerations must be given to issues related to Intellectual Property Rights (IPR). Read more here.

c. Drafting Website Terms and Conditions – Important Legal Considerations – Free eBook

Website Terms: As businesses and marketplaces transition towards new age mediums such as web and mobile, complexities surrounding them also continue to grow.

Appropriate terms and conditions along with privacy policies are critical to every website and mobile application.

Important considerations while drafting terms and conditions for websites and mobile applications are discussed in this eBook. Read more here.

d. Where Patent Analytics Are Headed – Harnessing Power of Patent Analytics for Patent Strategy

Patent analytics can be used as a crucial tool to prepare innovation landscape for any particular technology, following which the retrieved data can be used for multiple purposes, such as, for example:

(i) To determine scale and intensity of patenting activity across a particular technology sector.

(ii) To assess level of collaborations between Industry, Academia and Government by specifically focusing on patents filed jointly as a result of research collaboration between public and private sector, along with universities.

(iii) To evaluate quality of patenting activity.

(iv) To identify target markets by determining white gaps between existing patents (including both granted patents and pending patent applications).

Read more here.

e. Filing International Trademark Application Under Madrid Protocol 

Madrid System, including Madrid Agreement and Protocol relating to Madrid Agreement, is an international treaty to facilitate international registration of trademarks and management of trademark applications.

Madrid Agreement and Madrid Protocol – Governing Treaties

The treaties provide an easy and cost effective way of filing international trademarks. Once the trademarks are registered by respective designated offices, the Madrid protocol further provides simple procedures to manage international registrations. Read more here.

About Us

Tech Corp Legal LLP is team of accomplished patent attorneys with expertise in Intellectual Property, Patent Strategy & Technology Consulting for formulating profitable & sustainable Patent (IP) Strategy. Our lawyers are invited as Patent Attorneys & Global Business Lawyers to speak at various International & Govt events, News Channels, International Conferences, CEO Workshops.

Our views and articles are regularly featured across national and international publications, including, Economic Times, Law Journals (IBA, LAWASIA), Tech Magazines, Digital News Network (DNA) Asia, BioSpectrum India, BioSpectrum Asia, HT Live Mint, Nature Journal, Entrepreneur Magazine etc.

We act as Patent Consultants & Legal Advisors to International Law Firms (Including Patent Attorneys), Executives, Technology Corporations, Investors, Entrepreneurs & Startups (US, EU, Asia Pacific & various Jurisdictions). Our practice areas include: Patents, Trademarks, Intellectual Property Rights Strategy, Technology Laws, Corporate & Securities Law, Ventures Capital Financing, Fundraising and International Business Advisory, Patent Portfolio Management, Copyrights

We have extensive experience with Global Patent Attorneys, In-house IP Counsels, CTOs, R&D Heads, Licensing Officers and our services include: Patent Law Opinion, Drafting Patent Specifications, Prior Art Searches, Patent Invention Disclosures, Novelty (Patentability) Analysis & Patent Infringement Research (analytics), Patent Litigation Evidence (charts), Patent Invalidation & Validation Analysis, Patent (IP) Landscape Analysis, Patent Prosecution & Opposition, Office Action Responses (USPTO, EPO, UKIPO), Patent Licensing Agreements, Freedom to Operate Analysis etc.

Our Technology Expertise includes: Software Patents, Wireless Communications Patents, Mechanical Patents, Healthcare, Life Sciences, Genetic Engineering Patents, Video (Mobile) Games, Mobile Apps, Cloud Computing, Digital Media, Biotechnology, Semiconductor & Medical Devices

We are registered as Patent Attorneys with Indian Patent & Trademark Office for Prosecuting Patent Applications, Hearings, Responding to Examination Objections, Trademark Applications etc. and member of Delhi High Court Bar Association. Our engagement models include: Contractual, Hourly, Per Project

Our specialties include: Litigation, Patent Litigation, Patent Infringement, Corporate & IP Strategy, Startups: Incorporation, Funding, Brand Management, Contracts & Agreements, Legal Research, SWOT, Corporate Governance, Due-diligence, Mergers & Acquisitions, Antitrust & Competition Laws, Regulatory Affairs, Freedom-to-Operate, Patent Drafting, Claim Drafting, Patent Searches, Office Actions Response, USPTO Patent appeal briefs, Patent Invalidation Analysis, Patent Opposition, Product-Claim Mapping, Patent Enforcement etc.

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About the Author: Rahul Dev

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Contact Mode: LinkedIn or directly message here

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