Key Services

Patentability/Novelty Search and Commercial Assessment

A Patentability Search / Novelty search / Prior Art Search is conducted to evaluate the patentability of an invention based on the statutory requirements from a patent office. Patentability Search / Novelty search / Prior Art Search is done before preparing the patent application to determine whether the invention is novel and non-obvious. Patentability Search / Novelty search / Prior Art Search involve identifying patent and non-patent literature that can render an invention un-patentable. Apart from worldwide patent databases, scientific publications and business materials are also searched. In addition to evaluating patentability, Patentability Search / Novelty search / Prior Art Search helps in defining the limits of claims while drafting a patent for an invention.

The invention is also evaluated for commercial potential as well. The various factors that we consider in evaluating the commercial viability of an invention include: problems solved, potential applications, market size, potential licensing opportunities, funding/venture opportunities, and challenges to commercialization.

Freedom to Operate (FTO) or Freedom to Practice (FTP) or Clearance Searches

Before a launch of any new product in a particular jurisdiction, a freedom to operate (FTO) / freedom to practice / clearance search should be performed to assess the risk of potential infringement. In freedom to operate search / freedom to practice / clearance search, the claim language of the third-party in-force patents is compared vis-a-vis the product specifications of the client. Based on the analysis, freedom to operate search / freedom to practice / clearance search report provides a mapping between features of the product to be launched vis-a-vis claimed elements of the patent references found. We also provide legal status of the enforced patents. In addition, we also capture the patent publications having features similar to those of product for client’s consideration.

We have been assisting a number of clients in performing Freedom To Operate (FTO), Clearance Search and State Of Art searches, particularly in medical devices, biotechnology, bioscience, life sciences domain, exercising devices and many more.

Evidence of Use / Claim Charts

The team at Effectual Services has extensive experience in creating Evidence of Use and claim charts. The charts are made as per client’s requirements. For quick evaluation, we can map key features of the claims to the product specifications. For detailed charts we try to supplement publically available evidences with reverse engineering or teardown where ever possible.

Invalidity Searches / Prior Art Searches and Claim Charts

An invalidity search / prior art search involves conducting a thorough patent and non-patent literature search to identify prior art references / literature that might invalidate the patent in contention. The invalidity search / prior art search report includes the details of potential prior art literature (along with bibliographic details) and a mapping of the claims to the relevant text of the prior art literature / references. In the invalidity search / prior art search, we also analyze other legal aspects such as antecedent and enablement issues, non compliance to duty of disclosure, etc. Other than English language we have capabilities of searching on Chinese and Japanese languages. A Chinese or Japanese language patent and non-patent literature proves useful in high stakes cases. These invalidity search / prior art search report help in strengthening our client’s invalidity assertions. All these findings are presented in the form of claim charts.

Patent Proofreading

As per various studies, over 90% of patents issued by the USPTO have errors related to the claimed terms, dependency in claims, claim duplicity, cited references, inventor names, specifications, etc. It is imperative for assignees to proofread patents to identify all the PTO/Applicant errors in a patent, ensure that these errors are not detrimental to a patent’s enforceability, ensure that the claim coverage of a patent is not altered and/or limited, the overall scope of a patent is not adversely affected. Effectual Services patent proofreading process is an extremely detailed analysis of a patent’s prosecution history to identify any PTO or applicant error. Our team members run thorough manual as well as automated checks simultaneously to ensure that a patent is free of any errors. Our proofreaders have in-depth knowledge of Patent laws and are also trained in Patent drafting best practices for various jurisdictions, including US and EP. We also prepare ready to file Certificate of Correction that can be filed with the PTOs saving your precious time.

Recent Projects

Patent Evaluation

One of the patent brokerage companies needed assistance in patent ranking and bucketing. Through our indigenous method of manual screening and ranking, we assisted the client in the evaluation of patent portfolio and identified patents worth monetizing. For the high value patents, we developed EoU charts that indicated commercial prospects.

 

Asian Language Search

We assisted a leading law firm in conducting native Chinese language searches. The objective was to uncover prior art references in the Asian languages that do not have an English language counterpart. The results identified were carefully screened in English language as well as native languages.

 

Patent Searches

A US-based technology company wanted to develop a patent filing strategy. The objective was to identify white spaces and technology which would enable them to channelize their research and development initiatives. Our team structured a methodical search strategy that comprised of defining apt technology taxonomy, identified and classified patents pertinent to the taxonomy. The search enabled the client to take well-informed decisions and save cost.

 

Patent Licensing Support

Effectual assisted a US-based company in successfully out-licensing more than 50 patents to multiple players, which resulted in maximizing revenue more than 60 million dollars. We worked closely with the company’s attorney to identify target products and companies and developed Evidence of Use charts and infringement contentions. Our team provided support in preparing claim to specification charts and prepared responses to invalidity contentions.

 

Patent Drafting and Filing

A California-based technology company wanted to protect their innovative software and associated products. Despite the stringent patentability criteria for software and business method arts, we assisted them in building a strong patent portfolio. We adopted a robust approach that included a strategically planned pre-filing search to locate patents in the similar technology domain and helped them to modify and re-draft the patent claims. Through this laborious process, we were able to procure a strong patent portfolio for the company and helped in increasing their revenue.

 

IP Support Services

A Silicon Valley-based IP law firm was facing challenges related to managing its docketing backlog. Effectual supported the firm through a dedicated team of paralegals who maintain and manage patent dockets and coordinate with the concerned attorneys in preparing filing forms, sending reminders, tracking deadlines, assignment documents, and document classification and management.

 

Information Disclosure Statement (IDS)

A leading corporate filed a significant number of patent applications and faced challenges with the preparation of their IDS forms. The arduous task involved tracking and identifying the IDSs filed globally. We assisted the client in gathering the prior art from various patent databases and track the references filed in the IDSs globally. We identified all the references in the patent application and submitted the IDS as per the guidelines defined by PTO.

 

Proofreading Services

A US based law firm based was facing challenges in proofreading patent applications. The objective was to highlight clerical errors and check the subject contextually. The client partnered with us to undertake the paralegal task and minimize the office action. We identified the clerical errors such as spelling, bibliographic details, consistency in terms, claim dependencies, etc. Our service yielded significant benefits in terms of minimizing work pressure and helped the client to focus on primary areas.

 
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