How Sagacious IP Enabled a Cloud Infrastructure Giant to Generate $160 Million+ in Future IP Valuation Through Strategic Prosecution
Successful businesses often revise their IP strategies and seek ways to mitigate their liabilities. While updating their strategies, they incorporate methods to strengthen their IP portfolio. This in turn helps them in establishing their market position and generating revenue. As patents are the most valuable IP assets, businesses look for ways to expand their patent portfolio. Quite often they opt for strategic prosecution to achieve this objective. Read on to know more about strategic prosecution and how Sagacious IP enabled a cloud infrastructure giant to generate over USD160 million in future IP valuation through strategic prosecution.
Before we discuss strategic prosecution, let us first understand patent prosecution. Patent prosecution is a two-way communication between patent applicants, their representatives, and a patent office. It involves drafting, filing, and negotiating with the concerned office to obtain a patent. Among the various patent components, a claim plays the most important role during prosecution as it defines the scope of protection.
Strategic Prosecution and Detection of Patent Infringement
Apart from defining the scope of protection given to an invention, a patent claim plays a crucial role in identifying patent infringement. How you ask? Well, companies try to map all the elements in an independent claim to a feature in a competitor’s product. Absence of some elements, however, leads to partial mapping which in turn prevents companies from claiming patent infringement. Therefore, companies need to trim or amend the claims according to the publicly available literature related to a competitor’s product to get complete mapping and to prove patent infringement. This complete mapping is also known as Evidence of Use (EoU) and the overall process of directing the prosecution to generate an EoU for proving patent infringement is called directed or strategic prosecution.
Patent Components Involved in Strategic Prosecution
Now that you have understood the concept of strategic prosecution, let us discuss the patent components involved in this process. The first component – patent title, is a single line description of the invention while the second component called an abstract describes the invention in one paragraph. Specifications are the third component that can further be divided into three parts – background, figures or drawings, and detailed description. The last and the most important component is a patent claim that can be categorized into two types – dependent claims and independent claims.
Case Study: Generating Revenue through Strategic Prosecution
Recently, a Fortune15 cloud infrastructure major with a portfolio of over 10,000 patents engaged Sagacious IP for a custom project. After F3 analysis, our team suggested more than 100 strategic prosecutions on granted patents with open family members (open cases). Our strategic prosecutions helped the client in over 40 patent grants to generate over USD60 million. Further, it also helped them in obtaining patents for more than 60 patent applications under examination that had a potential value of over USD100 million.
Strategic Prosecution is an approach that is beneficial for both small and big companies as this is one of the most optimal methods to improve the quality and valuation of the patent portfolios proportionately. This approach allows companies to direct the prosecution of their future patents to become fundamental patents with minimal monetary input. This also builds a robust patent portfolio. Sagacious IP’s Strategic Patent Prosecution Support service allows you to build a strong patent portfolio by finding the products that are extremely close in terms of the technology disclosed in the claims of a patent and then amending the claims to increase the ease of detecting patent infringement. Click here to know more about our service and click here for the webinar.
-Arshjot Singh Gill, Rachita Goel (ICT Licensing) and the Editorial Team