A patentability assessment is carried out to determine whether the idea is ‘patentable’ or not. This involves not only ascertaining the novel aspect of the idea but also verifying the obviousness of an idea to a person skilled in the art and utility of the idea vis-à-vis its industrial application. A patentability assessment typically involves conducting a search for patent and non-patent literature disclosing content similar to those of the idea to be patented.
At Epiphany, we strongly recommend patentability assessment prior to initiating drafting of the patent application, as it not only helps in ascertaining the patentability of the invention prior to indulging in the expensive process of obtaining a patent but also helps in determining the boundaries of state-of-art so that the patent application can be drafted in an optimal way.
To obtain a patent for an idea, an application disclosing the idea must be filed with the patent office of the respective jurisdiction in which protection for the idea is sought. We, in collaboration with patent agents, draft patent applications to client’s specifications.
In addition to possessing domain expertise and sound knowledge of guidelines stipulated by the patent offices for filing a patent application, a person drafting a patent application must also possess imagination, as drafting a patent application requires skill. The patent application must be drafted to cover not only the disclosed content but also should be designed to be foolproof to minor tweaks and future changes in standards. So the boundaries for protection sought should be broad enough to preclude others from bypassing the coverage area of the patent application with minor tweaks, but also ensure that the patent application does not intrude into the boundaries set by other patents.
The patent drafting team at Epiphany has just this kind of fine tuned patent application drafting experience that it has gained from working with various in-house IP counsel, IP attorneys and R&D heads from Fortune 500 corporations. We are proficient in drafting patent applications to be filed at the USPTO, EPO, Indian Patent Offices, and other patent offices all over the world.
At Epiphany, we realize that the needs of our clients from R&D companies to IP attorneys are different. Our adaptability enables us to mould ourselves as per the client’s requirements. We provide services from provisional patent application drafting and regular patent application drafting to drafting of individual sections of the patent application, such as drafting of the claims section, the description section or just the illustrations.
A design patent (or a design registration) is granted for a novel ornamental design of an article of manufacture. The design patent is granted for protecting only the design of the invention and not the utilitarian features of the invention. For example, a new shape of a beverage bottle may be protected by a design patent if the purpose of the new shape is only the new appearance and not the utility. If the new shape imparts an additional utility to the bottle then the utility aspect of the bottle maybe protected by a utility patent.
In US, once granted the design patent is active for 14 years from the date of issuance of the patent. In some of the other countries such as India, the term of registration of copyright in Design is for 15 years in total. The registration is valid initially for a term of 10 years and can be renewed for a further period of 5 years.
We assist our clients in obtaining protection for their designs either by filing for obtaining a patent or filing for registering the said design.
We provide patent filing and prosecution support services to our clients. As a part of filing patent applications with different patent offices and providing prosecution support, we assist our clients in:
Litigation support offered by Epiphany includes following services:
Invalidation search is conducted to aid infringement litigation. An Invalidation search is focused on invalidation of claims of a patent.
At Epiphany, a team of experienced professionals develop an understanding of the claim(s) of the patent to be invalidated and conduct a targeted search for identifying patent/non-patent literature relevant to the claims of the patent under consideration.
During the patent drafting and patent prosecution stages, the patent application undergoes various amendments that may leave behind certain errors or discrepancies in the patent application/issued patent. Such errors may weaken the strength of the patent, thereby influencing the enforceability of the patent. Patent proofreading enables identification of such errors in the patent document.
A file wrapper consists of documentation of various communications between an examiner at the patent office and the applicant starting from the filing of the patent application till the grant of the patent. A review of the file wrapper or file history is quiet crucial for litigation proceedings as well as during licensing negotiations. At Epiphany, we perform a detailed review of the file wrapper to ensure delivery of insightful results to the clients.
Claim mapping analysis is done to support decision making during litigation proceedings and licensing deals. The claim mapping analysis involves mapping of the claims of a patent to a product description or a technical document. The claim(s) considered for this analysis are usually the independent claim(s) of the patent document. Several elements/features are extracted from the selected claim(s), and each extracted element/feature is mapped onto one or multiple relevant products/ description in the technical document.
E-discovery relates to the process of searching, gathering, and organizing the electronically stored information from all the parties involved in a lawsuit with the intention of utilizing such information as evidence in the lawsuit. The types of information included in the E-discovery process are IM messages, email messages, web sites, documents in electronic formats such as PDF formats and MS word documents, computer logs, records etc. We, at ''Epiphany'' understand client’s requirements related to the lawsuit, and analyze the pool of documents provided by the client for filtering out the documents relevant for litigation. The filtered documents are thereafter categorized into sub domains and technologies for subsequent use in lawsuit proceedings.
A patent analytics assignment is conducted for obtaining an overview of the patenting landscape vis-à-vis a technology domain. Such assignments are also referred to as Landscape studies. Typically, landscape studies are useful for:
At Epiphany, we develop an understanding of the technology under consideration and conduct a search to identify patents and published patent applications relevant to the technology under consideration. The identified patents/ published patent applications are then classified into a broad classification system (also referred to as taxonomy). The classified patents/ published patent applications are analyzed by a team of trained professionals for identifying trends, seed patents, R&D focus of key players, etc. The findings of the landscape study are collated in a customized search report based on client’s requirements.
Another key area of patent analytics is Gap analysis (also referred to as white space analysis). It is primarily performed to identify the unexplored gaps or white spaces in a technology area that have a potential for innovation. White spaces in a technology are identified after conducting a preliminary landscape study of the technology. Gap analysis enables a client to identify and exploit areas where R&D may be conducted for generating innovation. Moreover, gap analysis allows the client to gain a competitive edge in the market.
Valuation of an intangible asset, such as a Patent, is a complex process. However, patent valuation becomes mandatory while conducting a variety of transactions such as transfer of ownership (licensing or assignment) of the business or patent, due diligence, collateralized financing, financial reporting and taxation matters. Further, patent valuation may also be needed to support litigation matters, such as quantifying patent infringement damages. Furthermore, patent valuation provides insight into decision making related to allocating the expenditure in the research and development activities.
At Epiphany, we combine our experience of handling such matters with knowledge of valuation techniques to assist clients in arriving at a ‘fair value’ for their patent.
An FTO study is conducted to determine whether introduction of a product in geography would infringe upon valid IP rights of an entity residing in that geography. An FTO study is typically conducted by identifying active patents or patent application publications that could pose as commercial barriers in the jurisdiction targeted for the manufacture, sale, use or export of the proposed product.
Therefore, FTO study serves as an effective risk assessment tool for assessing commercialization of a given product at a given time, and in a given jurisdiction.
At Epiphany, our team of experienced professionals first develops an in-depth understanding of the product features, and, thereafter conducts a detailed search for identifying active patents or patent application publications that map on to the product features. The claims of the identified active patents or patent application publications are then analyzed for potential infringement by the product features. The findings of the FTO study are collated in a customized report based on client’s requirements.
As per various patent systems, such as the US, Europe and PCT, a patent specification should contain one or more patent drawings, whenever the nature of the case requires a drawing to understand the invention. The patent drawings may also include illustrations which facilitate an understanding of the invention (for example, flow sheets in cases of processes, and diagrammatic views). The patent drawings must show every feature of the invention specified in the claims and are required to be in a particular form. The patent drawings must be such that they can be readily understood by persons using the patent descriptions.
Our team of patent illustrators utilizes state of the art software to produce high quality patent drawings from rough client sketches, photographs, prototypes and sometimes even from plain description. The high quality patent drawings supplement the content described in the description section to bring out true flavor of the disclosed invention.