Patent Infringement Search an Effective Tool for Competitive Intelligence

The research is carried out to identify potential companies and their products which are infringing on the patented invention.

Our team of experts works towards identifying substantial evidence and come up with detailed claim charts. We make sure that we exhaust all avenues of information such as white papers, product data sheets, product’s press releases, video tutorials etc. to come up with a comprehensive infringement theory.

Our unique approach to conducting a patent infringement search landscape for a client helps them identify and prioritize on potential infringing companies and move ahead with filing an infringement lawsuit. We also offer specialized services for plaintiffs wherein we help them in drafting detailed infringement contentions.

“What they provided was unparalleled. We couldn’t have asked for more. After reviewing their report, we instantly knew which companies to sue and which ones to pursue licensing. All the evidence we needed to support our contentions was already in the charts.”

Challenge:

A satellite-based television service providing company, headquartered in California, wanted to identify potential infringers for their recently granted US patent. The client desired to have a full understanding of the market and wanted to identify the major players in the related domain and potential infringers who might be infringing on their patent. The client asked us to prepare infringement claim charts against the products of the potentially infringing companies.

Execution:

Citius Minds’ analysis team extensively analyzed the patent of the client. The infringement analysis was conducted in four phases. In the first phase, the team researched the technology field thoroughly to gain an in-depth understanding of the domain. In the second phase, the team performed an initial market research to identify the big players in the ‘satellite-based television service’ providers. The market research involved researching annual reports, sales figures, product information, etc. The third phase involved screening and the detailed analysis of the potentially infringing products which involved reviewing manuals, online articles, other publically available information and reverse engineering as well. All the identified evidence was analyzed and a list of potential infringers was prepared. In the final phase, the team prepared infringement claim charts against the identified products. The claim charts depicted ‘element-wise’ mapping of the potentially infringing products with the client’s patent claims. The team didn’t just give technical analysis but also included the relative sales volume estimate of the products of the potentially infringing companies to help the clients make a quick decision on how to move forward.

Impact:

Our claim charts enabled the client to identify the potential infringers for their patent. The color-coded claim charts helped the client to easily understand the similarities between the claims and the potentially infringing products. The sales figures provided in the report helped them finalize which defendants to pursue litigation and which ones for licensing. The evidence provided in the claim charts against the products helped the client in preparing the infringement contentions and filing an infringement lawsuit against the potentially infringing companies.

                                                                                          

Freedom to Operate

In a highly competitive market, it becomes imperative for a company which is about to launch a product, to carry out an extensive Freedom to Operate research on the patents to identify potentially threatening patents. It will not only help the company to avoid reworking on product functionalities and features but also avoid facing unexpected licensing costs.

At Citius Minds, in an FTO search, we dissect the product to identify every minute feature and then conduct the search to identify threatening active patents and publications. We map the product features against the claims of the identified patents to reflect potential infringement. In addition to this, we also conduct an extensive File-wrapper analysis to understand how the rejections and amendments impact the claim language.

Our detailed analysis helps the client to take an informed decision on whether they can move ahead with the launch or they need to work on tweaking the product functionalities.

“We were just about to launch our product. We had no idea someone had already patented it. Citius Minds helped us save millions that we would have wasted in pointless litigations.”

Head of Research & Development – A mobile manufacturing company

Challenge:

A mobile manufacturing company wanted to check possible threats of infringement for their new product to launch in the United States. The invention was related to a mobile phone having an aluminum housing, curved AMOLED touch sensitive display, locking mechanism to switch off the display screen, and a notification bar for checking the notification without unlocking the display screen at the back side of the housing. Citius Minds was engaged to perform an analysis of the product features, identify available active patents which claimed the features similar to the aforementioned product.

Execution:

The team thoroughly analyzed all the product features. A ‘Same-Page Document’ was shared with the client for sharing the team’s understanding of the important features of the product. This document included key features of the products based on team’s understanding, several representative term-sets and important US classifications, which could potentially be used in conducting the patent search. We used several paid and free patent databases to formulate exhaustive key strings using different term-sets to list the patents (filed only in the United States) similar to the disclosed product. The team then analyzed the list to shortlist the patents that claimed similar features as that of the client’s product.

One of the shortlisted patents also claimed a mobile phone having segmented AMOLED screen in which the bigger section was 10 times the smaller one. The smaller section was used to show notifications such as missed calls, new messages, etc. and the bigger screen was utilized for other smartphone features such as surfing the internet, playing games, chatting, etc. Another patent claimed several features of the product but did not disclose the aluminum housing and the notification screen at the back of the housing.

The team created a diagrammatic representation of the available and missing features in the identified patents as a part of a detailed report including ‘element-wise’ color-coded mapping of the product features with the relevant claim of the prior arts as well. Our team went a step further in guiding the client by suggesting them several features that may be added or parameterized to create a design around product.

Impact:

The client was able to showcase the similarities and differences between their product and the prior-art comprehensively using our diagrammatic representation, to the decision making team. The color-coded claim mapping helped his team to understand the relevancy of the identified patent references.  They decided to tweak around with some of their features so as to prevent their product to infringe on any of the patents still active. The client used the millions, which would have been spent on a pointless patent infringement litigation suit, on research and development of their next generation tablet. We were engaged again to work closely with the R&D team from the beginning of product development lifecycle.

Infringement Contentions

Whenever a Plaintiff decides to move forward with the patent litigation against targeted defendants, it becomes very important that they form a consolidated strategy which will help them win a patent litigation. The immediate and the most important step after the filing of the patent litigation is to come up with the list of asserted claims and consolidated infringement contentions.

 Citius Minds helps you in identifying the most important claims to assert and formulating solid infringement support. Our strength lies in the fact that our technical experts have closely worked with various counsels in helping them solidify the infringement theories and backing it up with requisite infringement evidence. We try to be as specific as possible in our assertions and accusations in listing down the accused products, device models, a name of the process (if asserting against a method/process claim) – norms which are required by U.S. Federal circuit courts, of course with some caveats. Our claim chart identifies each claim limitations, evidence of infringement against the claim limitation whether direct or indirect infringement, a description of an operation of an indirect infringer that contributes to or is inducing that direct infringement. Our chart clearly reflects whether the assertion is literal or under the doctrine of equivalents and helps the plaintiff counsel to put the accused infringer on notice of what exactly is being accused on an element by element basis.

Invalidity Contentions

When defendants are hit with a patent litigation and they have been served with infringement contentions and asserted claim set, they have to respond to the opposing party by serving them with Invalidity contentions within 30 to 60 days (depending upon the court). The biggest roadblock which a defendant faces is in identifying anticipating prior arts against the asserted patent claim set. Citius Minds’ group of technical experts are seasoned campaigners when it comes to identifying such prior arts that can serve as the best defense for your invalidity contentions. 

We focus on identifying relevant sites from the prior art which anticipates the asserted patent or renders it obvious. Our strength lies in the fact that our work product clearly states the evidence whether the evidence is anticipatory or obvious and if obvious, an explanation of why the prior art renders the asserted claim obvious, including an identification of any combinations of the prior art showing obviousness. Our claim chart tabulates each alleged item of prior art against each limitation of each asserted claim. We then draft the invalidation contention theories by working closely with the defendant counsels.

Invalidity Contentions, infringement Contentions, patent invalidity analysis

Freedom to Operate Search United States

In a highly competitive market, it becomes imperative for a company which is about to launch a product, to carry out an extensive research on the patents to identify potentially threatening patents. It will not only help the company to avoid reworking on product functionalities and features but also avoid facing unexpected licensing costs.

The future outcomes of the new technology or product or development program that is to be launched by a company or organization in a country. So, FTO search United States provides a detailed techno-legal interpretation of intellectual property protection related to pre-launched products or technologies or patents by the competitors.

At Citius Minds, we dissect the product to identify every minute feature and then conduct the search to identify threatening active patents and publications. We map the product features against the claims of the identified patents to reflect potential infringement. In addition to this, we also conduct an extensive File-wrapper analysis to understand how the rejections and amendments impact the claim language.

Our detailed analysis helps the client to take an informed decision on whether they can move ahead with the launch or they need to work on tweaking the product functionalities.

“We were just about to launch our product. We had no idea someone had already patented it. Citius Minds helped us save millions that we would have wasted in pointless litigations.”

Head of Research & Development – A mobile manufacturing company

Challenge:

A mobile manufacturing company wanted to check possible threats of infringement for their new product to launch in the United States. The invention was related to a mobile phone having an aluminum housing, curved AMOLED touch sensitive display, locking mechanism to switch off the display screen, and a notification bar for checking the notification without unlocking the display screen at the back side of the housing. Citius Minds was engaged to perform an analysis of the product features, identify available active patents which claimed the features similar to the aforementioned product.

Execution:

The team thoroughly analyzed all the product features. A ‘Same-Page Document’ was shared with the client for sharing the team’s understanding of the important features of the product. This document included key features of the products based on team’s understanding, several representative term-sets and important US classifications, which could potentially be used in conducting the patent search. We used several paid and free patent databases to formulate exhaustive key strings using different term-sets to list the patents (filed only in the United States) similar to the disclosed product. The team then analyzed the list to shortlisted the patents which claimed similar features as that of the client’s product.

One of the shortlisted patents also claimed a mobile phone having segmented AMOLED screen in which the bigger section was 10 times the smaller one. The smaller section was used to show notifications such as missed calls, new messages, etc. and the bigger screen was utilized for other smartphone features such as surfing the internet, playing games, chatting, etc. Another patent claimed several features of the product but did not disclose the aluminum housing and the notification screen at the back of the housing.

The team created a diagrammatic representation of the available and missing features in the identified patents as a part of a detailed report including ‘element-wise’ color-coded mapping of the product features with the relevant claim of the prior arts as well. Our team went a step further in guiding the client by suggesting them several features that may be added or parameterized to create a design around the product.

Impact:

The client was able to showcase the similarities and differences between their product and the prior-art comprehensively using our diagrammatic representation, to the decision-making team. The color-coded claim mapping helped his team to understand the relevancy of the identified patent references.  They decided to tweak around with some of their features so as to prevent their product to infringe on any of the patents still active. The client used the millions, which would have been spent on a pointless patent infringement litigation suit, on research and development of their next generation tablet. We were engaged again to work closely with the R&D team from the beginning of product development lifecycle.

The Utility Patent Process

A utility patent is issued for the invention of a new and useful process, the machine, manufacture, or composition of matter, or a new and useful improvement thereof. It generally permits its owner to exclude others from making, using or selling the invention for a period of up to twenty years from the date of patent application filing. Approximately 90% of the patent documents issued by the USPTO in recent years have been utility patents.

Below is a summary of the benefits of US Utility patent:

• Protects the functional aspects of an invention.
• Can provide broad patent protection making it difficult for a competing product to avoid patent infringement.
• Capable of protecting many different variations of a product with a single utility patent.

We have tried to collate a list of questions with answers from the USPTO website that will help you in understanding the process to get a Utility Patent:

What should be my Application strategy? Provisional or Non-provisional application? 

• Provisional Application: A     provisional patent application allows you to simply file your invention without a formal patent claim, oath or declaration, or any information disclosure (prior art) statement. A provisional application is a quick and     inexpensive way for investors to establish a U.S. filing date for their     invention (priority date), so anyone conceiving the same invention later     will not be able to obtain a patent (as long as a full, non-provisional     patent application is filed within one year of filing the provisional     version). Filing a provisional patent application allows the inventor to refer to her or his invention, and mark the product ‘Patent Pending’.
• Non-Provisional Application: The non-provisional application establishes the filing date of your patent application and begins the examination process. Your patent application will be examined by the USPTO only after the Non-provisional application is filed.

Should I use professional legal services or file myself?

Hiring a Patent Attorney or IP Firm: The preparation of an application for patent and the conducting of the proceedings in the United States Patent and Trademark Office (USPTO) to obtain the patent is an undertaking which requires good knowledge of patent laws, Office practice and procedures, as well as knowledge of the scientific or technical matters involved in the particular invention. Also, a comprehensive search needs to be performed to be sure that the invention is new and can be patented. Investors may get into considerable difficulty if they prepare their own applications and file them in the USPTO and conduct the proceedings themselves.

Inventors are not skilled in the art of searching prior-arts and hence might miss important references which might lead to loss of filing and examination fees and eventually abandon of their patent application. While a patent may be obtained in many cases by persons not skilled in this work, there would be no assurance that the patent obtained would adequately protect the particular invention.

Therefore, hiring a Patent Attorney for filing your patent and a Patent search firm for Patentability search may be the two most important and correct decisions of your patent’s life cycle.

I want to file myself (Pro Se):

If you do want to file your patent yourself, familiarize yourself with important patent laws, procedures of the patent office and study the domain of your invention in detail.

If you are an inventor or small business who has limited resources and needs help applying for a patent on an invention, you may be eligible to receive pro bono (“for free”) attorney representation through the Nationwide Pro Bono Program.

Make sure you have all the required documents listed in the Checklist for Filing a Nonprovisional Utility Patent Application with the USPTO.

How much is this going to cost me?

A patent application is subject to the payment of a basic fee and additional fees that include a search fee, an examination fee, and issue fee. Depending on your application, there may also be excess claims fees. Fees vary depending on the type of patent application that you submit. Get the Current Fee Schedule here.

How long will this take?

The time it will take until you receive your first letter from the USPTO in response to your application depends on the domain of the invention. You can estimate the time using the First Office Action Estimator.

Can I get my patent faster?

Consider expedited examination options. The USPTO has various programs and initiatives that are available to applicants during each phase of the application process. Each program is designed to advance the progress of a patent application and to provide applicant assistance. You can view a detailed Matrix of programs available Prior to Examination on USPTO’s website.

How do I prepare and submit my application?

There are several sets of requirements to prepare and submit a Patent application. See the Patent Application Guides for the detailed legal requirements for filing a Utility Patent Application.

Make sure to submit your initial application with all the required parts needed for obtaining a filing date and include the correct fee.

Can I submit my application online?

Use EFS-Web, the USPTO’s electronic filing system for patent applications, to submit Utility patent applications, Provisional applications and many other types of Office correspondence to the USPTO via the Internet.

• To get an idea of what must be submitted to get a filing date and documents that are often included in a new application, see a Very basic tutorial on Filing a New Application online.
• First time online filers may also contact the Patents     Electronic Business Center for assistance.

Before you sign the application, make sure that you read the written specification and claims. You will not be able to add anything new to your application once it has been filed with the USPTO.

What if my application is incomplete?

If your application is incomplete, you will be notified of the deficiencies by an official letter from the USPTO, known as an Office Action. You will be given a time period to complete the application filing (a surcharge may be required). If the omission is not corrected within a specified time period, the application will be returned or otherwise disposed of; the filing fee if submitted will be refunded less a handling fee as set forth in the fee schedule.

When and how will my application be examined?

Once your application has been accepted as complete, it will be assigned for examination.

Your examiner will review the contents of the application to determine if the application meets the requirements. If the examiner does not think your application meets the requirements, the examiner will explain the reason(s). You will have opportunities to make amendments or argue against the examiner’s objections. If you fail to respond to the examiner’s requisition, within the required time, your application will be abandoned.

What if my response to a Final Action does not overcome all of the examiner’s objections?

If your response to a Final Action does not overcome all of the examiner’s objections or if any of the claims have been twice rejected. You can consider filing an appeal with the Patent Trial and Appeal Board (PTAB).

Can I get updates about my application?

Sign up to view your pending application and documents in Private PAIR. You can also sign up for the PAIR e-Office Action Program to receive an email notification when a new Office communication is available for viewing and download in PAIR.

When do I receive an approval?

If the examiner determines that your application is in satisfactory condition and meets the requirements, you will receive a Notice of Allowance. The notice of allowance will list the issue fee and may also include the publication fee that must be paid prior to the Patent being issued.

When do I get a Patent number for my invention?

Utility and reissue patents are issued within about four weeks after the issue fee and any required publication fee are received in the Office. A patent number and issue date will be assigned to an application and an Issue Notification will be mailed after the issue fee has been paid and processed by the USPTO.

How will I receive my patent with a ribbon and gold seal?

The patent grant is mailed on the issue date of the patent. It includes any references to prior patents, the inventor(s)’) names, specification, and claims (to name a few). It is bound in an attractive cover and includes a gold seal and red ribbon on the cover. You can also Order certified documents with the USPTO ribbon and seal as well as the signature of an authorized certifying officer.

We hope these FAQs will help you file and get a US Utility patent. Keep Innovating!

For any further questions, feel free to comment or contact me on jay@citiusminds.com.

Meet the Author:

Jay Sharma

Manager – Client Engagement

Jay has extensive experience in Intellectual Property consulting. He has been helping clients across the globe in achieving their business goals. He has consulted thousands of individual inventors to get patents for their inventions, monetize them and unlock the real value of their IP. He loves golf and spends all his free time reading fiction.