One of our clients, a patent brokerage company, needed assistance in patent ranking and technology tagging. 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 Evidence of Use 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.
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 make well-informed decisions and save costs.
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 of 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 tracking 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.
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 we greatly increased their efficiency. 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.
DATA INTEGRITY IN IP DOCKET SYSTEM
Our client is a well-known US law firm, and had concerns about the integrity of the data in their IP docket system. The records included US and non-US cases for patents and trademarks. The causes of their concern were migration to a new docket platform, a significant number of new client intakes and multiple hands entering data in docket system. A customized solution was developed, wherein we agreed on a list of fields for each record in their system that would be compared to source data. The client provided their data by record and fields within the record via Excel which was extracted from their docket system. We ran a script to pull data that is available electronically and through paid databases. We populated mirror fields from source data and highlighted discrepancies. Where no electronic data was available, we utilized their foreign agent network to manually retrieve data. We found an overall error rate of about 35%,15% of which were deemed critical. We engaged on this project in late 2018 and completed it in around 6 weeks. The client was very pleased at how cost effective this important exercise was, the turn-around time and most importantly, the ability to address errors or omissions head-on, reducing risk to the firm and their clients.