Evidence of Use chart is developed in order to cite evidences that a particular product/service or standard reads on each element of the patent claim, thus potentially infringing the patent. Detailed evidence of such charts helps in licensing negotiations, pre-litigation research, and patent transaction opportunities.
We have extensive experience in creating evidence of use/claim charts. We help you to map key features of the claim(s) to the product specifications and create evidence that potentially prove infringement. For detailed charts, we supplement publically available evidence with reverse engineering or teardown reports. Our EoU chart services include:
- Patent-to-Product mapping
- Patent-to-Standard mapping
The patent-to-product mapping chart includes mapping of elements to the product and ascertain the extent to which the product reads on to the claim, whereas patent-to-standard mapping includes a patent mapped on the relevant sections of a standard, which in turn establishes infringement of the patent. Over time, we have assisted our clients in numerous successful licensing negotiations. We also have vast experience in working on different standards like IEEE 802, 3GPP, LTE, etc.
While preparing an EoU chart we strongly emphasize:
- Thorough understanding of the patent and its claim(s) in light of the patent specification and file history to derive broadest possible interpretation of the independent claim(s)
- Analyze and create an exhaustive list of potential infringers
- Perform a thorough search on the identified companies and analyze product portfolios in order to find the infringing product
- Granular mapping of the claim elements to indicate the presence of each element in products/standards
After analyzing the IP portfolio, we conduct infringement searches for the patents to look for potential infringers. We conduct infringement searches in diverse technology domains including electronics and communication, computer science, information technology, automobiles and mechanical technologies, chemical technologies, biotechnology, bio-medical equipments, and life sciences. The search process includes preparing a list of leading players in the technology space including conducting search on company/OEMs websites, 3rd party subscriptions, and various databases. The relevant references are identified and further analyzed by referring in various catalogs, manuals, data sheets, white papers, product brochures, etc. We also perform product testing in order to ascertain infringement. Depending on the claims of the patent, we also undertake another approach to check if any of the latest standards incorporate the features of the patent. We have experience of working on different standards including IEEE 802, 3GPP, LTE, etc.
In addition to this, we prepare claim charts/evidence of use charts for validating the actual use of the technology. Such charts can be used at the time of filing litigation applications.
Organizations invest huge sums of money to develop their patent portfolios, but the real value can be derived from effective portfolio management. We help you in mining patents that provide a high return on investments through licensing or litigation. Additionally, we assist you in identifying valuable patents in the portfolio that can yield hundreds of thousand dollars in revenue. We assist you in mining patents that add value to your organization and can be used for the purpose of licensing or litigation.
The patent mining process involves a two-fold strategy which is comprised of:
- Semi-automated solution: We understand your needs to optimize costs and deliver maximum value for every project we undertake. Our indigenous scoring system enables you to identify key patents from a large portfolio(s) based on patent’s bibliographic details. This scoring system takes into account parameters such as forward citation, number of independent claims, claim length, readability of claim(s) on a product/service features, market segment and size, etc.
- Manual solution: Depending on your requirements, we provide portfolio analysis wherein the scoring is based on manual screening of patents. Such analysis includes all the parameters used in semi-automated approach and subjective parameters such as number of active members in patent family, number of office action responses, screening of patent claims, specifications, etc.
Many firms need to bucket and rank their patent portfolios in order to evaluate opportunities and risks associated with their patents. We help you in bucketing the patents as per specific product or technology taxonomy. We assist you with:
- Developing comprehensive taxonomy
- Conducting in-depth analysis of patents to further classify sub-categories
The IP portfolio of the organization contains large number of patents, generally of a relative value in terms of both cost and quality. To identify valuable sets of patents for licensing activities, we work closely with you to rank the patents based on our proprietary or specified ranking models. This enables companies to manage their large portfolio and provide greater insights with respect to a particular technology domain. The outcome of a scoring model ranks patents as high, medium, and low. It involves a two-fold strategy which is comprised of:
- Semi-automated solution: We understand your needs to optimize costs and deliver maximum value for every project we undertake. We have developed a scoring system for identifying key patents from a large portfolio based on certain parameters. This scoring system takes into account both objective and subjective parameters such as forward citation, number of independent claims, claim length, detect ability of overlap, market segment and size, etc.
- Manual solution: Depending on your requirements, we provide an entirely manual approach for portfolio analysis. Such analysis includes all the parameters used in semi-automated approach and analysis of the subjective parameters such as number of active patents in patent family, number of office action responses, claim analysis, etc.
WHY DO WE NEED IP DUE DILIGENCE?
In today’s dynamic business environment, intellectual property assets have become one of the most important assets. IP due diligence is essential for acquiring IP assets of the target company/business or raising capital through mergers and acquisitions. Therefore, it helps the organization to take informed decisions as invest in, license-in/out, or acquire/sell IP assets. An IP due diligence helps in examining the strength, scope and enforceability, ownership rights, and the future potential to be derived from the IP.
Generally, IP due diligence is conducted at the onset of the negotiations to determine the true potential of IP. We help in assessing the IP of the target company by preparing comprehensive checklists, understanding the objectives, substantive investigation, analyzing the results. We also assist you in driving maximum value from the IP by identifying potential sources of risk and understanding the intrinsic value of the IP.
IP DUE DILIGENCE PROCESS
The IP due diligence process is an audit to analyze hundreds of thousands of patents, which are narrowed down to a manageable number by using various scoring methods. We offer both semi-automated and manual process for due diligence as per your requirements. Such services include infringement searches, preparing claim charts for selecting high value patents, and performing validity searches, check filing and patent maintenance history, and change of assignments of patents. Our team maps the competition and assists you with strategies that enable you to achieve your business goals. We provide a wide range of services which include:
To improve your business capability, portfolio assessment is a vital task. We help you to manage and analyze your IP portfolio by indentifying strengths and addressing gaps.
After reducing the size to a manageable number, we conduct infringement searches for the identified patents to look for potential infringement of the technology of the patent. We have conducted infringement searches in various technology domains including electronics and communication, computer science and information technology, automobiles and mechanical technologies, chemical technologies, biotechnology, bio medical equipments, life sciences, etc. This helped us in acquiring unmatched practical knowledge and experience to perform technical evaluation of products and services to look for as evidence in use of related patent technology. After completing the infringement search, we prepare Claim charts/Evidence of Use charts/Rule 11 charts for validating the actual use of the technology. Such charts help in determining actual use of the patented technology and can also be used at the time of filing litigation complaints.
A validity search for a patent unearths relevant prior art that might have been published or available at the time of the prosecution and may prove detrimental to the novelty/non-obviousness at a later stage. We also perform a detailed file history analysis to identify the novelty and scope of the patent.
Enforceability of the patent depends on parameters such as timely payment of maintenance fee, entity status, etc. We also perform asset validation checks, including assignment history and active life remaining for a patent.
We prepare marketing collaterals that may be used to pitch key prospects and formulate business strategies.
Market research plays a crucial role in devising innovative business strategies which helps in ascertaining information about competition, technology roadmaps, and insights about the particular market. We help you in identifying latest trends such as new technology areas, white spaces, thus applying our business analytics to seize upon market opportunities. With in-depth understanding of the market, our team helps in infringement analysis and decisions relating to enforceability of a patent. To add value, we perform analysis of the infringing product by conducting research in numerous databases including analyzing trade literature, websites, SEC filing, manuals, subscriptions, etc. The research helps in locating potential infringers for out-licensing or cross-licensing the relevant technology or suing them. Additionally, the market research team helps in gathering information about competitor’s patent application and patent grants. The research helps you in keeping track of competitor’s development in the particular market, thus making well-informed business decisions. Our dynamic and systematic approach helps you in developing a better understanding of the market share and the exposed revenue of an infringing product(s). Our team provides a complete spectrum of market research solutions focused towards intellectual property industry.