How do you locate the product/standard for an infringement search?

Companies and individuals take aggressive steps to protect their patent rights. Most often, if a patent holder discovers that a product or a process is disrupting his patent rights, he might face damages from the infringing party. Such implementation of patent rights is usual in developed economies, such as the US and Europe. However, even India has seen its share of attempts to enforce patent rights.

Generally, one may recognize that his product may be infringing on a patent(s) by carrying out the freedom to operate study (our article on the freedom to operate) and an infringement analysis (our article on infringement analysis). Contrarily, a patent holder might have informed you that your product is infringing his patent and asks you to stop all activities relating to the infringing product. So the question now is how you found out?

Some of the best practices which we adopt to locate products & standards are as follows:

 

1. Search based on Potential Infringer List of products: Based on subject patents, the subject matters expert prepares a list of potential infringer/Infringing products based on bibliography data, potential competitor & potential products based on an open search across similar products/technology infringers.
2. Product Document/datasheets/manual Based Search: The features of claims are searched on infringer websites. Google search, Google image search, consortium, if any, etc.
3. Video-Based search: A open search is performed on YouTube and another potential infringer website to locate the evidence.
4. Standard-based Search: In the case of a standard-based infringement, a search is performed on portals like IEEE, 3GPP, ETSI, IETE, ITU, JEDEC, MPGLA, etc.
5. Product Tear Down: Sometimes, claim features require teardown documents such as for semiconductor/circuit-based claims. If teardown is freely available, we use these teardowns else, based on client approval and teardown documents are purchased to locate the evidence.
6. Image Search: Sometimes, for design search, google image searches are preferred to locate the evidence.
7. Input /Output Testing: In some cases, product testing is required, and we have a lab set-up for product testing, mainly on the software side and marginally on the hardware side.
8. Source code: Source code review is another method to locate the evidence, and we do source ode review wherever possible.
9. Packet Snipping: Sometimes, evidence can’t be retrieved, such as the type of server used in streaming videos; in such cases, we snip the packet over the network for a particular application to use the evidence in the claim chart.
10. Product Sales office: At times, we are sure the particular product is infringing, but due to lack of evidence, we cannot prove the infringement. In such cases, we contact the product infringing company and try to pull out evidence but collecting product manuals from the sales office.

Please feel free to check our patent infringement services page to determine if we can cater to your patent requirements. You can contact us to explore the option of working together.

I hope you found this article is helpful. 

 

Significance of Patent Landscape Analysis

 

Patent landscape analysis is a comprehensive analysis of patents and scientific literature. An analysis is focused on the research area given by the client. A Patent landscape analysis shows the white space in the research area, IP trends to figure out the density of activity, and technology decay and rise. Patent landscaping is suitable for planning research in virtually any area of technology. Patent landscape analysis shows what areas are potentially rife with third-party patent problems for a given general field of technology. By contrast, what areas remain relatively free of third‐party patents ‐ and possibly are available for appropriation. Useful for

• Track the global activities of competitors and outline their strategies & strengths.
• Monitor R&D trends worldwide.
• Discover the latest technological advances in the area. 
• Spot potential white space in the marketplace.
• Identify new players in the technology space. 
• Identify technologies developed by various players.
• Monitor research collaborations in a technology area.
• Identify potential avenues for mergers/ acquisitions.

What are some of the steps involved with performing Patent Landscape Analysis?

The fundamental idea of patent landscape analysis, sometimes referred to as patent mapping, is to review and organize the patent activity in a technology area. Ideally, you have engaged a patent landscape team consisting of a patent analytics expert and experts from R&D, marketing, competitive intelligence, and legal that are familiar with the technology, area to be analyzed, and have time to commit to the project. Steps involved with creating a successful patent landscape analysis include:

 

1. Establish the purpose of the patent landscape analysis. Why is this patent mapping project being undertaken (i.e., idea generation, ‘white space’ analysis, design around, competitive intelligence, patent filing strategy/patentability, risk management/validity/freedom to operate, monetization, M&A, etc.)?
2. Determine which patent search and analytic software and/or third-party services will perform or assist in the project.
3. Your landscape team will agree on the boundaries of the technology area of focus. It includes considering whether to have product terms, technology alternatives, multiple application areas in the search, and to agree on the goals and outcomes of the patent landscaping project.
4. Determine which countries to include in the search, how far back in time to look, whether to have abandoned patents, family members, equivalent versions of patents, etc.
5. Perform preliminary searches across patents and technical literature and work with the team’s technical and market experts familiar with the technology area to identify a set of relevant keywords, patent class codes, and organizations working in the technical area.
6. Generate an initial training set of documents relevant to the technology area and review those documents to identify additional and refined technology, product, and application areas to categorize the patent information.
7. Use keyword, patent class code, citation mapping, and semantic search strategies. Identify lists of patents that are relevant to each technology, product, and application sub-area.
8. Review and sort the patents within each relevant technology, product, and application sub-category. It can be done through automated means (quick yet less accurate) using keyword and international class code searching. Or manually (time-consuming, yet very accurate) by reviewing Titles, Abstracts, and Claims. Manual review offers the additional benefit of adding meta-data, comments, and value rankings to each result. It will result in a more robust and valuable output. 

Our expert team consists of patent analysts who perform rigorous data mining, data visualization, and data analysis to generate a patent landscape that helps clients identify competitive and technology trends.  

Ingenious e-Brain provides intellectual property research & analytical consulting firm, including customized services in the form of Patent landscape analysis, Patent portfolio analysis, Patent searches (Prior‐art, Patentability, Invalidation, Infringement, and Freedom to Operate), Patent alert and monitoring, Trend analysis, Patent to Product mapping, and patent licensing. Our expertise lies in generating valuable IP intelligence from patent, non‐patent, product, and other technical & competitive information. We provide consistent, high-quality IP research & analytical services in electronics, telecommunications, medical devices, pharmaceutical, biotechnology, life sciences, chemistry, mechanical, and many more. 

 

A Guide To Patent Infringement Analysis

Patent infringement is using a patent for commercialization/Monetization purposes without the patent assignee permission or license. Patent infringement analysis determines the category of patent infringement, such as Literal infringement and Doctrine of equivalents.

 

• Literal infringements: It happens when the accused firm copies the product as claimed in the patent. Two main specifications of literal infringement are: The function of the accused product is similar to the original patent. It is also identical in terms of material and structure.
• The doctrine of equivalents: This includes any partial infringement. If any part of the accused product is accomplishing the same result through the same process, it covers the equivalents' doctrine. 

The steps for a patent infringement analysis are:

1. Describe the claim in a patent thoroughly.
2. Compare the claims and accused products to check for literal infringements.
3. In case of no literal infringement, examine for infringement under the doctrine of equivalents.

The approach is to go into details of the claim as much as possible. In some cases, the complete drawing is similar, and any small part is claimed. The accused product can have multiple similarities with the original patent, but in case it's not violating the claim, It doesn't come under patent infringement.

Aside from literal infringement and the doctrine of equivalents, there are few more types of infringement based on the different violations.

· Direct infringement: If anyone sells, uses, or offers to sell a patent in the U.S.A without any authorization comes under direct infringement.

· Contributory infringement: Duplicating a part from a patented invention and then use or sell it comes under this infringement category.

· Process patent infringement: Importing any innovation in the U.S without the authority of the patent owner comes under process patent infringement.

· Litigation process after patent infringement analysis

Once the patent infringement analysis is done, courts have a two-step process to find out the result.

1. Claim construction 
2. The court governs whether the accused product infringes on the authentic patent.

Claim construction is the scenario when the court describes the claims made in the patent. During this process, the precise meaning of the term is considered. Although, it can be changed if the patent owner gave a different meaning to the term. Large firms focus on developing a patent claim construction to establish their position on the legal front.

The court judges the product depend on functionality. Any part in the claim is considered as a method to complete a function. It finishes the opportunity of the claim. If a meaning for a technical word is not clear, the court considers the meaning specified by experts or textbooks. In conclusion, claim construction is entirely under the court. However, parties can have a jury trial interrogate the court's interpretation of patent infringement. Moreover, there are specific ways to defend a patent infringement lawsuit.

Want to conduct a patent infringement analysis?

Ingenious e-Brain has more than 9 years of experience in the IP field. Our team covers possibly every technical domain. We go through every database to deliver accurate results. Also, the clients can examine the status of the work at any stage of the process. Most importantly, 100 % customer satisfaction is our top priority.

To know more, visit our service page: https://www.iebrain.com/services/ip-intelligence/infringement-analysis/.

Opportunity Analysis for Generics: Everything You Need To Know

Patents are essential for inventors to protect their inventions, and they are also necessary for rivals to innovate and expand their products after their IP rights have expired. 

We have extensive experience studying intellectual property rights that are about to expire. We recognize that the expiring patent plays a critical role in the industry once the technology enters the public domain. For our customers, knowing that a patent is about to expire opens a world of possibilities. It will enable a business strategy to use the protected invention to introduce new products to the market. It may also be helpful if the client's patent is about to expire. 

The invention becomes part of the public domain after a patent has been in effect for 20 years for utility patents and 14 years for design and plant patents. It means that the invention is no longer protected by a patent and is no longer limited, allowing anyone to make, use, or sell it without fear of infringement. We perform a set of steps to find out the expiring patent that can be helpful to the client.

 

1. Identification of patents using databases: In this step, the experts run a free search to find out the relevant patents for opportunity analysis of generics. Free and paid databases are used for the identification of patents. The patent search databases are Derwent Innovation, Patentscope, EPO, Drug bank, Chembank, Questel Orbit.
2. Preparing key string: Our patent analyst carries out a key string search defined as querying a patent database using keywords to shape key strains. A key string consists of words related to the generic patents; synonyms related to the required patent.
3. Refine search by Patent expiry Date: Our expert team refines the search using advance search, uses a date range provided by the client, and begins the search. This step filters out the patent according to its date of expiry.
4. Manual analysis for screening patents: Our team conducts a manual analysis of the selected patent and is filtered out after advance search. 
5. Verification of legal status: The team verifies the patents' legal status and filters out the expired, dead, or revoked patents. The legal status is checked using the orbit database, and further, the patents are filtered according to the status.
6. Identification of commercial products: This is an optional step to identify the commercial products in generic that patents are near to expire. Details of such patents are extracted and filtered according to the client's needs.
7. Listing all the commercialized products: We list out all the commercialized products that are appropriate according to the client's needs.
8. Report generation: After filtering all the relevant patents according to the client's need, an excel report is generated containing all insights of a patent, including patent number, assignee, publication date, expiry date, the domain of inventions, and claims.

We offer generics opportunity research services to various pharmaceutical, biotechnology, cosmetics, and skincare companies. Our team closely examines patents that are about to expire to identify opportunities for our clients. Contact us now.

How To Conduct Patent Watch Analysis?

The process to implement the patent watching service at regular intervals is the key to ensure the safety of your patents. It can be monitored from official journals, online sites, etc. Moreover, there are various reasons for firms to use patent watching/monitoring searches, such as to analyze competitors in the market, to prevent any patent infringement, etc. Also, the main aim is to gain information about market strategy, competitor's potential resources and determine the strength of services/products. Most importantly, increase in legal protection of patent reduce the chances of infringement.

Regular monitoring ensures the monopoly on inventions. It detects potential infringement related to the manufacture, sale, or import faculties in each region. Moreover, it gives insights into the domains in which competitors are focusing on research. Hence, firms that rely on innovation can respond accordingly.

Reasons To Implement Patent Watching/Monitoring Services

 

• It determines novelty or performs prior art searching: The main aim of a patent watch is to understand the novelty to lower the expenditure for performing extra R&D. Clients also clout the report references to create a better quality of draft while presenting prior art in front of the analyst at the time of prosecution at the Patent Trial and Appeal Board (PTAB).
• To assess product clearance, right-to-use, or perform a freedom-to-operate search: It is crucial to search for potential infringement by performing a product clearance search. It helps in discovering the leading competitors for a specific domain. This helps in avoiding any potential infringement.
• Perform Validity or Invalidity search: We can conduct a complete validity search against any patent claims through our large domain experience and database coverage. We work with some of the prominent IP litigation firms in the United States, and our work has demonstrated benefits in hundreds of cases. It will allow you to monitor potential infringement risks.
• To perform a state of the art search: This can even provide you with an overview by examining published patents, applications, and non-patent literature, and which will help to understand future trends.
• It discovers competitive or technical intelligence: This can help identify new competitive insights to help you manage business plans. It allows you to identify and monitor other people's patent applications which the opposition may challenge in the future.
• To perform subject matter-specific watching service: Watch can even be explicitly performed on a technical subject. In this, the search is only carried for any new patents or patent applications in a specific domain.
• To perform search specific to proprietor/applicant name: There is also a provision to perform a patent search by a particular name. It is a better option if you want complete information about the leading competitor about his all sorts of technical improvements.
• It monitors every phase of the patent process: It is essential to watch every step of the patent application process since patent applications regularly undergo amendment throughout an examination. Therefore, a third-party patent application that emerges to be an infringement risk at the starting of the procedure may or may not remain such at the later stages. For this, monitoring is a must to know regarding the risks associated with all the stages of a patent process.

Ingenious e-Brain has more than nine years of experience in the IP field. Our team covers possibly every technical domain with eminent clients globally. We go through every database to deliver precise results. Also, the clients can check the status of the work at any stage of the process. Moreover, 100 % customer satisfaction is our top priority. To know more, visit us for Best Patent Watch/Monitoring Analysis Services.

 

How To Conduct A Markush Chemical Structure Search?

Chemical structure search is an essential aspect in chemical research and the pharmaceutical industry for performing elaborate, efficient, and exact searches. Chemical structure search allows the searchers to filter out relevant patents with precision. Chemical search requires an exact search or spatial arrangement of the alkyl group as this information is vital to determine biological effects.

In pharmaceutical and chemical industry domains, conducting structure searches requires a distinct skill in the know-how of Markush structures and their interpretation thereof, particularly chemical compounds whose IUPAC names/CAS numbers/common names are not disclosed. Most of the patents, especially compound-focused, are typically drafted in Markush language. Therefore, for a disclosed structure, basic scaffold, variation in functional moieties in Markush structures becomes pivotal for a researcher to develop a structure search strategy to retrieve the most relevant patents and scientific publications.

It becomes important for a pharmaceutical company to boost its R&D efforts, handle patent litigation, monitor competition, and strengthen its intellectual property rights.

How to perform an efficient chemical patent search?

1. A detailed review of the structure disclosed — Investigating the disclosed structure to identify the common scaffold and other R groups defined generically or specifically.
2. Drawing query structure — Preparing an appropriate query structure around the common scaffold identified and G group definition to capture the R groups or other variables/attributes. A researcher should pay due attention in defining:
• Class Atom Match Level
• Limited Unlimited Count
• Point of Attachment etc.
3. Conducting searches — Performing Markush structure search using the query structure on Registry, Marat, and DWPI files via STN. Following types of searches are conducted based on specific requirements.

• Substructure (SSS) — It allows the query to retrieve Markush structures that match it exactly and those that have substitution at any available positions.
• Closed substructure (CSS) — Blocks all positions in the query from further substitution unless otherwise specified. CSS is much more restrictive than SSS.

Note: A sample structure search is performed, and few hit structures are evaluated to ascertain the prepared query structure’s accuracy and do the modification if required.

4. Analysis and interpretation of results — Analysis of results considering the following:

a. A structural elucidation given common scaffold/variables/attributes

b. Identify hit structure in case the structure is too generic, e.g., R-A-B-C-D-E-R1

c. Applying genus — species concept during interpretation

5. Presentation of results — Research presents results as follows depending upon the level of analysis required.

• Quick — A list of relevant references is provided without any structural/variable/attributes mapping around the common scaffold structure.
• Moderate — For the identified relevant references, the definition of R-groups, variables/attributes are provided to elucidate the chemical structure of interest.
• Extensive — Actual structures that map to the structure of interest are prepared in view of disclosed Markush structures in the identified relevant references.

Ingenious e-Brain Solutions provides comprehensive and time-bound chemical structure search services in the pharmaceutical space across various IP projects (patentability search, FTO, invalidation/opposition search, and landscape studies).