Patent Creation

patent_prosecution_support

Trained by experienced attorneys and seasoned patent professionals, our team seeks the broadest possible protection from the invention while narrowing it enough to take care of any existing art(s). We have a thorough understanding of the patent law and relevant legal practices across relevant jurisdictions. With hands-on experience in various technologies and patent analysis, we provide a competitive edge by supplying novel patent strategies. We also provide assistance across strategic searches such as patentability searches, novelty searches, knock out searches, prior art searches, drafting and filing of patents, office action response, etc.

The patent creation searches cover a wide range of steps which include:

Patentability/Novelty Search Assessment

A comprehensive patentability search involves analysis of the prior art by conducting thorough research to locate each feature of the invention to be claimed. The search helps you to evaluate the patentability of an invention based on the statutory requirements and ascertain whether the invention is novel or non-obvious. Our in-house analysts conduct exhaustive prior art searches in multiple databases to identify various elements that are relevant to the invention. We develop reports, templates, and search findings as per the format prescribed by you.

Effectual’s patentability searches help patent practitioners, corporations, and inventors to identify the features of invention, understand the scope of protection, and provide detailed patentability analysis in order to take decision related to filing of the invention. In addition to this, the invention is also evaluated for its commercial potential. The factors we consider to evaluate the commercial viability of an invention include, but not limited to, problems solved, potential applications, market size, potential licensing opportunities, funding/venture opportunities, and challenges to commercialization.

Patent Drafting

We assist you to prepare quality patent drafts through defined methodology and approach. Our patent and analytics experts have thorough understanding of the patent law and processes which helps them to understand inventions and draft patent applications as per the drafting guidelines specific to the patent issuing authority. We help you draft provisional and non-provisional applications in multiple technical domains for filings at the USPTO, EPO, IPO or the PCT—-Read More

Patent Filing

Our experience in filing applications with patent offices across the globe has made us well versed with the necessary procedural requirements that are to be met with the filing stage. We help organizations in filing patent applications at the Indian Patent Office (IPO), national phase PCT applications in India and in obtaining foreign filing permits, certified priority documents, etc—-Read More

Office Action Drafting and Filing

Review of the prior art and drafting suitable responses to the objections raised by patent examiner is a cumbersome task. Additionally, these responses have to be drafted and adhered to the timelines as issued by the patent office. Given the time consuming nature of responding to office actions, we are immensely capable of analyzing the prior art, drafting convincing responses to such office actions, and negotiating the scope with examiners—-Read More

Accelerated Examination Search Document (AESD)

We provide comprehensive search report in conformity with the guidelines issued by USPTO. This involves extensive pre-examination search report performing searches in all the prescribed resources (US patents, published patent applications, and non-patent literature) including search log with details like specific class, sub class combination searches and a discussion on closest art with a focus on differentiating factors.

Additionally, the AESD search helps you to reduce cost and obtain patent in a limited time frame.

Directed Prosecution

Taking a step beyond the conventional patent prosecution support, our robust approach enables you to take critical decisions regarding your pending patent applications. The report helps you to take informed decisions to continue with the patent application.

This includes support such as:

  • Continual review of the overlapping products and standards
  • Preparation of Evidence of Use (EOU)/claim charts exhibiting the overlap
  • Suggest suitable amendments in light of the overlapping art

Defensive Publication or Disclosure

Defensive publication as a strategy enables you to restrict any entity from obtaining a patent for the invention. Our team of engineers and technical experts help you to prepare defensive disclosures of the invention highlighting all the possible embodiments and publish them in accessible resources—-Read More

Design Patent Search

Designed patents are granted on the ornamental design of a functional product. We conduct thorough search in the design patent classes prior to applying for a design patent. Our unparalleled industry expertise assists you in searching design patents for prosecution and invalidity analysis/re-examination requests. We have capabilities of searching design patents for US, Europe, WIPO, Canada, and Australia.

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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