Patent Business Lawyer in Asia

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

Patent valuation process includes overview of patent and valuation aspects followed by patent valuation approach. Overview of patent covers reviewing patent filing date, patent priority date, countries where patent has been granted, title and abstract of patent, along with scope of granted patent claims.

Patent Valuation Procedure

The patent valuation procedure covers the NPV (Net Present Value), Future Value Forecast, and, Financial Modelling to Estimate Cash Flows. The cash flows are estimated with discounting for patent contribution and discounting for patent risk assessment.

patent valuation india

Patent Risk Assessment

The risk assessment of a granted patent is aimed at analyzing the validity of granted patent claims, possibilities of design around patents, and potential risks associated with infringement lawsuits.

Patent Valuation Approach

The patent valuation approach covers different factors, like, the size of market, market share, annual growth rate, per unit price, profit margin, and feasibility of making the patented product.

Intellectual Property Assets

Intellectual Property (IP) is a crucial portion of a company’s assets. Today, a great portion of the assets of fortune 500 companies consists of intangible assets including intellectual property. A strong IP portfolio is instrumental for fundraising, leverage in business transactions, exit strategy (e.g. for startups), and business transactions such as mergers and acquisitions (M&A), to name a few. Intellectual property may consist of patents, trademarks, copyright, and trades secrets.

Patents are in many cases the most important portion, especially in the high tech and biotech industries. Since there are a large number of transactions in these areas, it is important to assess and estimate the value of a patent portfolio.

Market Potential of Patents

Patents have grown from more fancy and honorary pendants to all-out financial assets and they have created their own market. This is partly due to increasing abstraction of business moving from more tangible businesses and assets to more intangible ones. Abstraction of business started a long time ago. The more abstract a line of business, the more sophisticated the methods used to conduct that line of business, and the more profitable and scalable. However, this abstraction of value comes with some risk.

Valuation of Patents and Intellectual Property Assets from Rahul Dev

Application of Patent valuation

1. Valuation of the company’s intangible assets in cases of taking tax planning decisions. A company does not have to show their tangible assets, but also the intangible assets in the form of intellectual property for paying taxes.

2. Valuation of a company is often done in cases of mergers, joint ventures, and acquisition. A company invests more in the intangible assets, research and development activities, than the tangible assets. Therefore measuring the economic value of the intangible assets can determine the value of assets.

3. For the licensing and selling of the intellectual property and negotiating deals with the parties, the price of the patent or the intellectual property should be known.

4. In cases of patent infringement, quantification of the damages is done. The correct valuation of the patent would help a patentee to recover the damages from the other party.

5. The valuation of the patent is used as security for bank loans. Patent valuation is also used to attract venture capitalists and investors.

6. The patent valuation helps in making patent protection strategies. It helps an organization identify its weakness, like ownership issues, which can have an impact on the value of the intellectual property.

Patent valuation Methods

The patent valuation is done by different approaches. Two methods are basically used for patent valuation

1) Quantitative Approach – which uses numerical and economic data to measure the value of the intellectual property.

2) Qualitative Approach – where the analysis of the potential uses of the intellectual property is done. It deals with the opportunities and risk associated with the intellectual property of the company.

The methods used in qualitative approach are:

A. Cost method

This approach indicates that the patent’s value is the replacement cost, which is the amount that it would cost to replace the item. Simply put, it would be the amount it would cost to replace the invention.

B. Income method

The patent’s value will be the present value of the cash flow or cost savings that it will help provide. For example, let’s say a company patents a product. The reason for patenting the product is because the company is expecting to increase its capital based on the sale of that product, or may expect to save money based on the invention.

Therefore, that expected amount will be the value of the patent when using the income method. This method can be further divided into ‘profit contribution’ and ‘royalty.’ The profit contribution is the profit credited to a patent. The royalty is the income stream expected if a licensing agreement is entered into.

C. Market method

Using this method, you’ll need to determine what a potential buyer would pay for a similar product or service. Therefore, you can value your patent by looking at similar patents.

We conduct patent searches across various technology sectors including, Healthcare, Consumer Goods, Blockchain, Software, Mechanical, Electrical, Biology, Biotechnology, Mobile Apps, Medical Devices, Business Methods, Chemistry, Computing, Life Sciences, Telecommunications and Physical Sciences.

Law Office of Patent Attorney Rahul Dev offers high value software patent drafting and patent due diligence services to clients by using proprietary and efficiently proven process along with a fixed fee costs, for performing comprehensive patent investigations and providing clients with strong patent reports for decision making.

We provide comprehensive Patent and Trademark legal services via our global network to create valuable patent portfolios and resolve complex patent disputes by providing patent litigation support services.

Our team of advanced patent attorneys assists clients with patent searches, drafting patent applications, and patent (intellectual property) agreements, including licensing and non-disclosure agreements.

Advocate Rahul Dev is a Patent Attorney & International Business Lawyer practicing Technology, Intellectual Property & Corporate Laws. He is reachable at rd (at) patentbusinesslawyer (dot) com & @rdpatentlawyer on Twitter.

Quoted in and contributed to 50+ national & international publications (Bloomberg, FirstPost, SwissInfo, Outlook Money, Yahoo News, Times of India, Economic Times, Business Standard, Quartz, Global Legal Post, International Bar Association, LawAsia, BioSpectrum Asia, Digital News Asia, e27, Leaders Speak, Entrepreneur India, VCCircle, AutoTech).

Regularly invited to speak at international & national platforms (conferences, TV channels, seminars, corporate trainings, government workshops) on technology, patents, business strategy, legal developments, leadership & management.

Working closely with patent attorneys along with international law firms with significant experience with lawyers in Asia Pacific providing services to clients in US and Europe. Flagship services include international patent and trademark filingspatent services in India and global patent consulting services.

Global Blockchain Lawyers (www.GlobalBlockchainLawyers.com) is a digital platform to discuss legal issues, latest technology and legal developments, and applicable laws in the dynamic field of Digital Currency, Blockchain Patents, Bitcoin, Cryptocurrency and raising capital through the sale of tokens or coins (ICO or Initial Coin Offerings).

Blockchain ecosystem in India is evolving at a rapid pace and a proactive legal approach is required by blockchain lawyers in India to understand the complex nature of applicable laws and regulations.

We provide patent services including patent searches, patent analytics, patent drafting, patent filing in India, PCT patent filing, patent prosecution, responding to patent office actions, patent monetization, patent commercialization, patent valuation, patent licensing, patent assignment, patent infringement reports, patent invalidation searches and patent legal opinions. Technology landscape studies are core part of our patent practice across a wide range of technology sectors:

ICT Patents

Information and Communication Technology

Biotechnology Patents

Software Patents

Mobile Applications and Computer Related Inventions – IoT (Internet of Things)

We provide comprehensive Patent and Trademark legal services via our global network to create valuable patent portfolios and resolve complex patent disputes by providing patent litigation support services.

Our team of advanced patent attorneys assists clients with patent searches, drafting patent applications, and patent (intellectual property) agreements, including licensing and non-disclosure agreements.

Advocate Rahul Dev is a Patent Attorney & International Business Lawyer practicing Technology, Intellectual Property & Corporate Laws. He is reachable at rd (at) patentbusinesslawyer (dot) com & @rdpatentlawyer on Twitter.

Quoted in and contributed to 50+ national & international publications (Bloomberg, FirstPost, SwissInfo, Outlook Money, Yahoo News, Times of India, Economic Times, Business Standard, Quartz, Global Legal Post, International Bar Association, LawAsia, BioSpectrum Asia, Digital News Asia, e27, Leaders Speak, Entrepreneur India, VCCircle, AutoTech).

Regularly invited to speak at international & national platforms (conferences, TV channels, seminars, corporate trainings, government workshops) on technology, patents, business strategy, legal developments, leadership & management.

Working closely with patent attorneys along with international law firms with significant experience with lawyers in Asia Pacific providing services to clients in US and Europe. Flagship services include international patent and trademark filingspatent services in India and global patent consulting services.

Global Blockchain Lawyers (www.GlobalBlockchainLawyers.com) is a digital platform to discuss legal issues, latest technology and legal developments, and applicable laws in the dynamic field of Digital Currency, Blockchain, Bitcoin, Cryptocurrency and raising capital through the sale of tokens or coins (ICO or Initial Coin Offerings).

Blockchain ecosystem in India is evolving at a rapid pace and a proactive legal approach is required by blockchain lawyers in India to understand the complex nature of applicable laws and regulations.

Business productivity across nations has grown significantly due to ICT (Information and Communication technology) revolution. In essence, ICT represents intersection of multiple technologies in a manner to revolutionize the communication across the globe. With such rapid growth, ICT growth has resulted in commercial as well as legal implications.

ICT companies routinely face complex issues pertaining to corporate laws and intellectual property rights (IPR), specifically ICT patents. Since ICT patents are bound to play a crucial role in shaping up the digital future of the world, the patent expertise required to solve the ICT patent issues involves thorough understanding of communication technology, hardware devices and components, digital technology, Software as a Service (SaaS), eCommerce, Data Processing innovations, Education Technology (EdTech), Semiconductors, Antennas, Microprocessors, Microcontrollers, Financial Technology (FinTech) and Digital Content based innovations.

ICT Patents

As the citizens of the digital age, information technology has become an integral part of our lives. From catching up on the latest news to reading the new bestseller, there is hardly anything that can be done without the crutches of technology. In a nutshell, information technology is truly our second skin.

Information and Communication and Technology Patents

IT and ICT: Are they different?

While information technology (IT) refers to the whole gamut of computing systems aimed at the collection and dissemination of information, information and communication technology, commonly known as ICT, expands the scope of IT. In other words, one can say that ICT is an extension of  IT with its focus on ‘connective communicative technologies’[i].  This is best illustrated by the definition assigned by UNESCO. As per UNESCO, ICT can be defined as a “diverse set of technological tools and resources used to transmit, store, create, share or exchange information. These technological tools and resources include computers, the Internet (websites, blogs and emails), live broadcasting technologies (radio, television and webcasting), recorded broadcasting technologies (podcasting, audio and video players and storage devices) and telephony (fixed or mobile, satellite, video-conferencing, etc.).”[ii] Given the subtleties of differences between IT and ICT, it is not very surprising that these terms are often used interchangeably.

ICT: The Building Block of the ‘Innovation Economy’

Given the dynamic nature of ICT, constant innovation is the life blood to make the ICT industry more sustainable. The growth of the ICT industry in the past few years has led to the development of what is called as the ‘innovation economy’. The report published by the New South Wales, Australia Innovation and Productivity Council describes innovation economy as a system where any innovative “changes emerge at large scale and come to dominate or disrupt pre-existing sectors, and commerce or trade, to foster advanced and high-growth industries.”[iii] The report further states that the growth of internet and digital systems has led to a globalised innovation economy and the future of nations have recognized that the sustainable growth is heavily dependent on how innovative the said economy is.[iv] The European Commission has also in its report stated that a smart growth of the economy lies in strengthening the knowledge and innovation.[v]

The ‘Reward’ in Innovation Economy: Granting Protection through patents 

For an industry such as ICT that is entirely driven by innovation, providing adequate and appropriate incentives to the innovators becomes extremely essential. One of the ways in which incentives can be provided is by ensuring a strong framework to protect the interests of the innovators and allow them to reap the commercial benefits of their invention. This is where protection through patents comes in. Foremost, granting patent protection ensures that an inventor can control the commercial use of their invention[vi]. Secondly, patent protection also contributes to the development of the technology further as the revenues generated by the innovators are used towards extensive R&D.[vii]

Key Issues with Patent Protection in ICT Industry

Of the many concerns regarding patents awarded in the ICT industry, this article focuses on the two key issues of patent thickets and SEPs.

Patent Thickets:

The complex technological process and the surge in the volume of patent applications has led to a fragmentation of patent rights and led to patent thickets[viii]. The only formal definition of a patent thicket has been provided by Carl Shapiro in his paper[ix] and he has described patent thickets as a “dense web of overlapping intellectual property rights that a company must hack its way through in order to actually commercialize new technology”. The reason for the growth of patent thickets in the ICT industry is due to the simple reason that protections are required for several technologies which will be then utilized for the manufacture of a new product. Some commentators have argued that this leads to a large volume of patent thickets can ultimately lead to lesser innovation and higher costs for the R&D[x]. Patent thickets are also furthering competition in the industry as companies are vying to acquire and boast of the biggest patent portfolio.[xi]

Standard Essential Patents and FRAND:

Standard Essential Patents or SEPs refer to the patents which have been granted in order to implement a specific industry standard. Access to such patents is crucial in the ICT industry in order to further and promote innovation. Accordingly, the Standard Setting Organization of a nation have committed license the SEPs on such terms and conditions which are ‘Fair, Reasonable and Non-Discriminatory” (FRAND).[xii]

The FRAND terms ensures that the patent holders receive an appropriate reward for their investment in research and development and at the same time there is access to these specific patents.[xiii] Commentators have also noted that lack of a standard procedure to determine FRAND leads to disputes in cases of SEP licensing which in turn hampers the widespread use of the key standardised technologies and development of a true innovation economy.[xiv]

Conclusion

The surge of patenting in the ICT industry has led to a fragmentation of IP rights which has proved to be a major bottleneck of most national patenting system. Disputes and litigations arising out of the licensing terms of such patents is also another issue plaguing the industry. Reforms of the patenting system, keeping in mind the specific needs of the ICT industry, will require a true harmonization of the patenting rules.  A harmonized regime can prove to be a true game changer for the patents in ICT industry.

We provide comprehensive Patent and Trademark legal services via our global network to create valuable patent portfolios and resolve complex patent disputes by providing patent litigation support services.

Our team of advanced patent attorneys assists clients with patent searches, drafting patent applications, and patent (intellectual property) agreements, including licensing and non-disclosure agreements.

Advocate Rahul Dev is a Patent Attorney & International Business Lawyer practicing Technology, Intellectual Property & Corporate Laws. He is reachable at rd (at) patentbusinesslawyer (dot) com & @rdpatentlawyer on Twitter.

Quoted in and contributed to 50+ national & international publications (Bloomberg, FirstPost, SwissInfo, Outlook Money, Yahoo News, Times of India, Economic Times, Business Standard, Quartz, Global Legal Post, International Bar Association, LawAsia, BioSpectrum Asia, Digital News Asia, e27, Leaders Speak, Entrepreneur India, VCCircle, AutoTech).

Regularly invited to speak at international & national platforms (conferences, TV channels, seminars, corporate trainings, government workshops) on technology, patents, business strategy, legal developments, leadership & management.

Working closely with patent attorneys along with international law firms with significant experience with lawyers in Asia Pacific providing services to clients in US and Europe. Flagship services include international patent and trademark filingspatent services in India and global patent consulting services.

Global Blockchain Lawyers (www.GlobalBlockchainLawyers.com) is a digital platform to discuss legal issues, latest technology and legal developments, and applicable laws in the dynamic field of Digital Currency, Blockchain, Bitcoin, Cryptocurrency and raising capital through the sale of tokens or coins (ICO or Initial Coin Offerings).

Blockchain ecosystem in India is evolving at a rapid pace and a proactive legal approach is required by blockchain lawyers in India to understand the complex nature of applicable laws and regulations.

References:

[i] https://www.techwalla.com/articles/the-difference-between-it-ict

[ii]  http://uis.unesco.org/en/glossary.

[iii] Page 7, The Innovation Economy: Implications and imperatives for States and Regions, Professor Greg Clark, Dr. Tim Moonen and Jake Nunley (August 2018), available at: https://www.industry.nsw.gov.au/__data/assets/pdf_file/0007/163267/IPC-The-Innovation-Economy-2018.pdf

[iv] See generally:  The Innovation Economy: Implications and imperatives for States and Regions, Professor Greg Clark, Dr. Tim Moonen and Jake Nunley (August 2018), available at: https://www.industry.nsw.gov.au/__data/assets/pdf_file/0007/163267/IPC-The-Innovation-Economy-2018.pdf

[v] See generally   The Innovation Union Competitiveness Report, European Commission, 2013, available at https://ec.europa.eu/research/innovation-union/pdf/competitiveness_report_2013.pdf

[vi]See generally https://www.wipo.int/ipoutreach/en/ipday/2017/innovation_and_intellectual_property.html

[vii] ibid.

[viii] The Role of Patents in ICT: A Survey of the Literature, Stefano Comino et al. (2017) available at https://www.researchgate.net/publication/318040107_The_Role_of_Patents_in_Information_and_Communication_Technologies_ICTs_A_survey_of_the_Literature

[ix] Navigating the Patent Thicket: Cross Licenses, Patent Pools, and Standard-Setting, Carl Shapiro (2001), available at https://papers.ssrn.com/sol3/papers.cfm?abstract_id=273550

[x] Are ‘Patent Thickets’ Smothering Innovation?, Stefan Wagner, 2015, available at https://insights.som.yale.edu/insights/are-patent-thickets-smothering-innovation

[xi] Ibid. The author illustrates this with the example of Google launching its operating system. At that time, the patent portfolio of Google was relatively small. However, in order to be able to compete with industry giants like Apple, Google eventually acquired Motorola in order to gain access to its patent portfolio.

[xii] See footnote 8.

[xiii]Standard Essential Patents, Dipak Rao and Nishi Shabana, April 2016 available at http://www.mondaq.com/india/x/484412/Patent/Standard+Essential+Patents

[xiv] India as an Innovation Economy: The Role of IP and ICT, Indian Council for Research on International Economic Relations (ICRIER) and European Business and Technology Centre (EBTC), June 2018 available at http://www.indiaenvironmentportal.org.in/files/file/ICRIER-EBTC_White_paper_IP-ICT.pdf

 

Machine Learning

Machine Learning or ML is a concept that enables a machine or a software tool to learn on its own without specific programming.

For example, in banking sector, ML can be used to predict unpaid or bad loans before a default actually occurs based on the previous payment patterns.

[youtube https://www.youtube.com/watch?v=0zVfGgs9BhE&w=560&h=315]

Other uses of ML include image recognition, like suggesting a name of a friend to tag in a particular image, or speech recognition, like conducting searches and performing other tasks after speech to text processing.

Similarly, diseases can be predicted using clinical parameters and medical history of the patient along with the medical history of the family members of the patient.

Machine Learning Models

Generally, the machine learning algorithm is trained using training data to create learning models. Subsequently, when new data is introduced to the algorithm, it makes a prediction. The machine learning algorithm can be categorized into 3 types, supervised learning, unsupervised learning, and reinforced learning.

In case of supervised learning, the input data acts as a reference or a foundation. For example, if data relates to weather, the algorithm can be trained to learn about specific parameters like temperature and humidity patterns.

In case of unsupervised learning, the algorithm determines the patterns on its own. For example, if data covers weather and population information, the algorithm can create separate data clusters for weather and population data, so that when new data is introduced, it can be automatically fed to the correct cluster.

In case of reinforced learning, the tools is programmed to determine the best possible solution on its own for achieving a particular goal, mostly by interacting with an environment and to learn and evolve using such interactions.

A good example of reinforced learning is elevator service. Like in our office, there are 6 elevators to transport people across 25 floors. So, to provide a timely service, the elevator controller manages the elevators on its own depending upon factors like number of calls and direction of each call.

While training the machine using different methods, valuable intellectual property is generated at each step, which can be protected by way of patents.

For example, patents can be filed for new tools to prevent cyber attacks or for speech recognition tools for better processing of natural languages across different geographies.

Such patents can then be licensed to other industries for broader applications.

Patent Claim Charts

With ever-growing number of patents in the sector covering computer related inventions, software patents, mobile app patents, IoT (Internet of Things) and Artificial Intelligence (AI) Patents, claim charts can be prepared to determine patent infringements or for exploring patent licensing opportunities.

In use, patent claim charts can illustrate an overlap between a product (or a service) and the claims of a patent. Essentially, the patent claim charts dissect the claims of a patent by its specific elements. Other names of claim charts that are used by patent attorneys are, patent claims tables, or patent infringement contentions, or patent invalidity contentions, or patent preliminary infringement contentions (PICs).

In addition to drafting a strong patent application, protecting the company’s intellectual property is a crucial business practice. Strong patent and IP protection ensures that the unique elements of company’s products and processes are protected and adds a high degree of credibility to the company in the industry.

Apart from adding to patent licensing potential, patent claim charts illustrate the extent of patent infringement in a simple and visually understandable manner. Claim charts are also known as ways to illustrate patent mapping between the products and the patent claims, which are used to signify “Evidence of Use” for licensing strategies and patent litigation research.

Product to patent claim mapping is a detailed comparison of granted independent set of patent claims with the product, apparatus, machine, system or method / process

Best 6 Steps for Performing Product to Patent Claim Mapping

  1. Identify the infringing products.

  2. Prepare a claim mapping table describing every feature of the independent patent claim in separate cell.

  3. Interpret the scope and understand every feature of the independent patent claim.

  4. Note down the interpretation of every feature of the independent patent claim.

  5. Map (Compare) the identified infringed product with respect to every feature of the independent patent claim.

  6. Highlight the features identified in the product brochure for easy reference.

What is product to patent claim mapping in patent study?

Product to patent claim chart mapping is a detailed comparison of granted independent set of patent claims with the product, apparatus, machine, system or method / process that may be infringing the granted patent claims. The patent claim chart includes comparison of identified products infringing the granted patent. The steps includes analysing a set of granted patent claims with product features. Our computer software attorneys who are trained by US patent attorneys provide product to patent claim mapping services for ongoing US Patent court litigation. Our CS lawyers have been preparing Evidence of Use patent charts for over 10 years.

Product to patent claim mapping services for independent granted USA patent claims

Sample US claim chart for product to patent claim mapping

Patent Claim 16

Interpretation

Feature Present (Y/N)

Product 1 (iDAvatars)

16. An article of manufacture including a non-transitory computer-readable storage medium having stored hereon computer-executable instructions, execution of which, by a computing device, causes the computing device to perform operations for performing speech recognition, the operations comprising:

Any computing device performing one or more operations for performing speech recognition

Y

Intelligent Virtual Assistant (IVA) [Page 1, para number 4]

initiating a finite state machine; User interacting with the computer-implemented voice user interface with personality. Y iDAvatars combines artificial intelligence with cutting-edge natural language processing technologies and state of the art animation to produce avatars that listen, speak and respond through talk, text and touch [Page 1, para number 2] voice response or text-only guidance [Page 1, para number 4]
receiving a voice input; Input data is user speech. Y Conversational avatars that promote patient engagement [Page 1, para number 1]

state of the art animation to produce avatars that listen [Page 1, para number 2]

interpreting the received voice input, comprising: interpret the spoken command of the user Y Natural Language Processing expertise [Page 1, para number 4] Speak and respond through talk [Page 1, para number 2]
transitioning to a domain state functionality of the finite state machine, determining which domain of functionality to proceed to next based upon an user dialog Y Natural Language Processing expertise, Cognitive computing capabilities [Page 1, para number 4]
selecting a generic prompt corresponding to the domain state functionality, and Analysing user dialog and selecting pre-stored response Y Natural Language Processing expertise, Cognitive computing capabilities [Page 1, para number 4]
selecting a specific prompt corresponding to the generic prompt, selecting a specific prompt that corresponds to the generic prompt, the voice user interface with personality considers both prompt history 930 (i.e., what the virtual assistant has said to the subscriber) and recognition history 916 (what the user has said to the virtual assistant). Y Natural Language Processing expertise,Cognitive computing capabilities [Page 1, para number 4]
wherein the specific prompt comprises
a variant of the generic prompt and also corresponds to the domain state functionality; Each prompt includes both a specific name (e.g., a specific prompt) and a generic name (e.g., a specific prompt corresponds to a generic prompt, and several different specific prompts can correspond to the generic prompt). Voice user interface with personality 1002 determines which domain of functionality to proceed to next based upon a dialog (e.g., dialog 1008) with a subscriber. N
and transmitting the specific prompt in a response. Computer-implemented voice user interface with personality can output to respond to various types of questions or responses in various situations during interactions with the user Y iDAvatars combines artificial intelligence with cutting-edge natural language processing technologies and state of the art animation to produce avatars that listen, speak and respond through talk [Page 1, para number 2]

We provide comprehensive Patent and Trademark legal services via our global network to create valuable patent portfolios and resolve complex patent disputes by providing patent litigation support services.

Our team of advanced patent attorneys assists clients with patent searches, drafting patent applications, and patent (intellectual property) agreements, including licensing and non-disclosure agreements.

Advocate Rahul Dev is a Patent Attorney & International Business Lawyer practicing Technology, Intellectual Property & Corporate Laws. He is reachable at rd (at) patentbusinesslawyer (dot) com & @rdpatentlawyer on Twitter.

Quoted in and contributed to 50+ national & international publications (Bloomberg, FirstPost, SwissInfo, Outlook Money, Yahoo News, Times of India, Economic Times, Business Standard, Quartz, Global Legal Post, International Bar Association, LawAsia, BioSpectrum Asia, Digital News Asia, e27, Leaders Speak, Entrepreneur India, VCCircle, AutoTech).

Regularly invited to speak at international & national platforms (conferences, TV channels, seminars, corporate trainings, government workshops) on technology, patents, business strategy, legal developments, leadership & management.

Working closely with patent attorneys along with international law firms with significant experience with lawyers in Asia Pacific providing services to clients in US and Europe. Flagship services include international patent and trademark filingspatent services in India and global patent consulting services.

Global Blockchain Lawyers (www.GlobalBlockchainLawyers.com) is a digital platform to discuss legal issues, latest technology and legal developments, and applicable laws in the dynamic field of Digital Currency, Blockchain, Bitcoin, Cryptocurrency and raising capital through the sale of tokens or coins (ICO or Initial Coin Offerings).

Blockchain ecosystem in India is evolving at a rapid pace and a proactive legal approach is required by blockchain lawyers in India to understand the complex nature of applicable laws and regulations.

 

Provisional Patent Filing

Provisional patent application is filed when the invention is not fully ready. A well drafted provisional patent provides patent pending rights to establish inventorship and patent ownership as patent office follows first to file approach to determine the true inventor of a patent covering new idea or product.

Formulating a sound patent strategy for your technology driven company is very important in the current era. Across the globe, the in-house patent counsels, heads of research departments, tech based startups and inventors file a preliminary patent application for their invention / idea before the patent office and is known as provisional patent application.

patent attorney for drafting patent application

How to Patent a Product?

It is extremely common for the inventors to ask this question about patenting a novel and inventive product. The first and foremost requirement for inventors while planning for patent process is to maintain proper records of their invention. In essence, laboratory notebooks, idea related documentation, technical specification and other details should be recorded with date, which can establish clear inventorship and ownership of the invention at a later date. It is common for the inventors to docket each and every step of the inventive process, inventive product and novel aspects of the invention, with a view to determine the patentability or patent eligibility of the invention. 

Subsequently, a detailed and thorough patent search is conducted to determine the relevant prior art, which can challenge the novelty and inventive step (non-obviousness) of the invention. While conducting a patent search, the patent searcher or the patent attorney conducts detailed patent search and analysis across various databases, such as, for example, Google Patents, USPTO Patent Database, EPO, UKIPO, JPO etc. Such patent search is conducted by forming multiple patent search strings and using these strings in different combinations by using boolean operators like AND, OR etc.

How much does it cost to file a patent?

The cost of filing a patent and obtaining patent rights depend upon multiple steps. The patent filing process begins by engaging a patent attorney, who charges a fee for conducting a patent search and drafting a patent application, which may be a provisional patent application (PPA) followed by a non-provisional patent application (NPA), or a NPA directly. The professional charges for patent searching and patent drafting by a competent patent attorney may be in the range of 2000$ to 8000$, or maybe upwards depending upon the jurisdiction of the patent and experience of the patent lawyer. Additional component to calculate the patent cost includes official filing fee, which again varies for each jurisdiction and is further dependent upon the category of the patent applicant, i.e. one or more natural person(s) or one or more legal entities. 

Once a patent application is filed, additional cost is required to maintain the pending patent application, and once the patent office issues a patent office action or a patent examination report, further cost is incurred for responding to such objections by way of patent office action response. Thereafter, once the patent prosecution process is complete, patent renewal fee is required to be paid at regular intervals during the term of the patent. Hence, as may be seen, the total cost of a patent depends upon multiple steps, subject to the jurisdiction and requirements specified by the local patent office.

How do you patent an idea or a product?

To protect a new idea or a new product, a well crafted patent strategy is required that ensures that the new idea or the new product is not infringed by third parties. One important point to be considered is that patent laws across various countries or jurisdictions require that a patent application must be filed before disclosing or discussing the idea publicly. This is so because once a new idea is shared publicly without filing a patent application, it becomes public knowledge and anyone is free to execute the idea.

How do I turn my idea into a product?

Successful conversion of new ideas into products requires detailed market research, development of prototypes and appropriate patent marketing. Operationally, patent licensing opportunities can be determined by conducting thorough studies about market potential, financial and technical due diligence, regulatory analysis and SWOT analysis.

What is a provisional patent application?

The provisional patent application is a legal document filed before the patent office (For example,  United States Patent and Trademark Office (USPTO), Indian Patent Office (IPO) or any other patent office.) If a US national is filing patent before the USPTO, the patent application would be known as U.S. national patent application having validity in U.S. alone. Even though, formal set of patent claims are not mandatory in the provisional patent filing we recommend our clients to write a broad set of patent claims in the provisional patent application

However, in order to obtain a granted patent, the patent applicant must fully and particularly describe the invention  in detail and describe the best mode in a complete specification. It is important to remember the deadline for filing Non-provisional patent application. Once the Non-provisional patent application in filed in the home country, one can file international PCT patent before the WIPO.

Missing the deadline for patent filing of complete / non-provisional patent application [12 months from filing provisional patent application] will cause irreparable loss and the provisional application will simply expire.

To read more articles related to Provisional patent applications: click here

Frequently Asked Questions by Inventors

Priority date implies the earliest date from which the patent rights begin, and while determining the term of a patent or during patent infringement lawsuits, the priority date plays a crucial role.

It is common for inventors to develop prototypes and pen down ideas during early stages before finalising the exact features of the invention. To ensure appropriate protection during this period, and to establish ownership by creating patent pending rights, it is important for the inventors to file a provisional patent application.

Provisional Patent Application

A provisional application is a summary of the invention and is filed to protect the invention at its early stage.

Since 8th June, 1995, U.S Patent and Trademark Office (USPTO) has provided inventors the choice of filing a provisional application for patent which was intended to provide a lower-cost prior patent filing within the United States and to administer U.S. applicants equality with foreign applicants under the General Agreement on Tariffs and Trade (GATT) Uruguay Round Agreements.

If an applicant has filed the a Provisional Patent Application for grant of patent he/she has to file the Non-Provisional/Complete Patent Application filed under U.S. Code § 111 of Title 35, within a period of 12 months from the date of filing of the provisional application or else the application will be considered to be abandoned. The pendency period of 12 months cannot be extended, but if the Non-Provisional/Complete Patent Application is filed after 14 months of filing the Provisional Patent Application, such application may be accepted by filing a grantable petition (including a statement that the delay in filing the Non-Provisional/Complete Patent Application was not deliberate and the required petition fee has been paid) to reinstate the advantages under 37 CFR (Code of Federal Regulations) 1.78.

Non-Provisional/Complete Patents v. Provisional Patents

> Non-Provisional/Complete Patents are most undeviating and therefore, the shortest path to grant of patents, whereas, Provisional Patents have a much lower cost of applying as compared to Non-Provisional/Complete Patents.

> A Non-Provisional/Complete Patents is good for inventions that have a short half life much like electronics and software which are about to be launched into the market, whereas, Provisional Patents are good for inventions that take time for R&D and thus needs to be kept under wraps by getting an additional year for filing for grant of the patent with complete specifications of the patent.

> In case the applicant wants to make additions after filling for Non-Provisional/Complete Patents, he/she has to do it by re-filing those addition inventions, whereas in Provisional Patents, the applicant has one whole year to make all the changes he/she wants in the patent and it also benefits the applicant by addition one extra year to the patent life (i.e., from 20 years to 21 years).

> One can only file his/her patents application as Non-Provisional/Complete Patent, in one time, whereas multiple Provisional Patent Applications may be filed by the applicant and be considered as one at the end of one year.

Limitation of Provisional Patent Applications

With some benefits, the Provisional Patents also attract certain limitations which are as follows:

1) The Provisional Patents Applications cost more than Complete Applications since the effort put in is double.

2) Even though the patent specifications will be kept from public record, the invention will has to be disclosed.

3) In case the applicant misses the one year deadline of filing the Non-Provisional/Complete Patent Application, the application will be considered as abandoned.

Filing of Provisional Patents Applications

A filing date will be granted to a Provisional Patent Application only when it contains a written description of the invention, fulfilling with all requirements of U.S. Code § 112(a) of Title 35.

The USPTO provides the following two documents for filing of Provisional Patent Application which have to be filled by either the applicant himself or his/her legal representative:

* Provisional Cover Sheet identifying;

* the application as a provisional application for patent;

* the name(s) of all inventors;

* inventor residence(s);

* title of the invention;

* name and registration number of attorney or agent and docket number (if applicable);

* correspondence address; and

* any U.S. Government agency that has a property interest in the application.

* Fee Transmittal Form as set forth in 37 CFR (Code of Federal Regulations) 1.16(d)

The provisional application (written description and drawings), filing fee and cover sheet can be filed electronically using EFS-Web or filed by mail.

Electronically Using EFS-Web: The provisional application can be filed electronically only if EFS-Web is used. EFS-Web permits patent applications, together with provisional applications, to be filed safely via the Internet. Applicants prepare documents in Portable Document Format (PDF), attach the documents, authenticate that the PDF documents will be well-matched with USPTO internal automated information systems, submit the documents, and pay fees with real-time payment processing. When fillable EFS-Web forms are used, the data entered into the forms is robotically loaded into USPTO information systems. Further information on EFS-Web is available here.

By Mail: The provisional application and filing fee can be mailed to:

Commissioner for Patents

P.O. Box 1450

Alexandria, VA 22313-145

USPTO Patent Filing

What information to include in a provisional patent application while filing it before US patent office USPTO ?

Many a times, our patent clients ask about what all information we should provide which can be included in the provisional patent application. However,  it is a known fact that you get protection for matter you disclose in the patent application. Having said that, it is important to include as much technical information as possible in the provisional patent disclosure.

The provisional patent application should describe the nature of invention & contain the description of essential elements of the invention. A provisional patent application with detailed explanation provides a good skeleton for the patent attorney to convert it into a utility / non-provisional patent application.

For example, a start-up research company is in phase I for making a new antibody to a particular antigen, but lack finances to actually create the antibody itself. Generally, in such a scenario the start-up research company will pitch the idea to the venture capital entities in exchange for the monetary funds needed to create the antibody. It is advisable for the start-up research company to first file a provisional patent application that includes details about the particular antigen and novel description for the same. More details of the main elements should be included in the provisional patent application.

Advantages for Filing Provisional Patent Application

As a patent centric firm managed by highly experienced patent attorneys and patent lawyers, we retrieve and provide clients with strong patentability analysis reports in addition to provisional patent application drafting, which can save time and money during the entire patent process. Such thorough patent research is aligned with the business strategy and corporate evaluations of the clients, so that potentially strong patent applications are filed to create a valuable patent portfolio, thereby adding to the intangible assets owned by the clients.

Advocate Rahul Dev is a Patent Attorney & International Business Lawyer practicing Technology, Intellectual Property & Corporate Laws. He is reachable at rd (at) patentbusinesslawyer (dot) com & @rdpatentlawyer on Twitter

Quoted in and contributed to 50+ national & international publications (Bloomberg, FirstPost, SwissInfo, Outlook Money, Yahoo News, Times of India, Economic Times, Business Standard, Quartz, Global Legal Post, International Bar Association, LawAsia, BioSpectrum Asia, Digital News Asia, e27, Leaders Speak, Entrepreneur India, VCCircle, AutoTech)

Regularly invited to speak at international & national platforms (conferences, TV channels, seminars, corporate trainings, government workshops) on technology, patents, business strategy, legal developments, leadership & management

Working closely with patent attorneys along with international law firms with significant experience with lawyers in Asia Pacific providing services to clients in US and Europe. Flagship services include international patent and trademark filingspatent services in India and global patent consulting services.

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