A Unique Approach to Identify ‘Killer Prior-arts’ During Patent Invalidity Searches – Webinar

Table of Contents

Key-points to be covered in this webinar (A Unique Approach to Identify ‘Killer Prior-arts’ During Patent Invalidity Searches)

Following key-points are covered in the webinar “A Unique Approach to Identify ‘Killer Prior-arts’ During Patent Invalidity Searches“:

  • What are different searching variants to address different invalidation scenarios?
  • Document of Understanding
  • Interim discussion and updates
  • How invalidity searches are helping clients to file pre/post-grant opposition
  • Content of invalidity Report

Key-note Speaker

Rishabh Anurag, Senior Patent Analyst, Engg. Searching

Anchor

Tanmay Mittal, Head – IP Solutions, India Region, Sagacious IP

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Webinar Transcript:

Tanmay Mittal speaking- Greetings! Everyone! I hope all of you are doing well and staying safe amidst this pandemic. This is Tanmay Mittal, head of IP Solutions-India region at Sagacious IP signing in to welcome you all to our session today.

In our endeavor to contribute towards IP awareness, we’re happy to host today’s webinar which will introduce you to some of the means to adopt while performing invalidation searches. The topic of today’s webinar is A Unique Approach to Identify “Killer Prior-Arts” during Invalidity Searches.

Before I go ahead and introduce our speaker, I would like to thank all the participants who have joined us from various countries today. Thank you everyone.

Speaker Introduction

Let me now introduce our speaker for today’s session. We have Mr Rishabh Anurag with us today who will be sharing knowledge with us on this topic.

Rishabh is a senior IP professional with a diverse experience in Prior-art searches. And he finds it very interesting to perform invalidation searches. Welcome to the webinar, Rishabh.

Rishabh Anurag speaking- Good evening everyone. Thank you for having me on this webinar. Hope you all are doing well in these tough corona times.

Tanmay Mittal speaking- Thank you Rishabh. I would be anchoring this webinar and we’ll try to keep it exciting and interactive through polls.

And, before we start off with the presentation today, again, a quick request to all of you. Please keep sharing your questions as, and when you have, during the course of the session. You can share your questions via the question box on the GoTo webinar platform. And, I will be picking up all those questions and asking them to Rishabh after he finishes his brief.

Let us now get start the main part of a session. And, for that, let me quickly invite Rishabh to share his presentation. Over to you, Rishabh!

Rishabh Anurag speaking- Yes. Thanks, Tanmay.

So, before moving on to the webinar, let me just share a disclaimer. Tanmay, can you please move to the Disclaimer slide.

Disclaimer

Sagacious IP does not own any of the logos, cut-outs or trademarks used here. These are just for illustration and educational purposes only.

We have collected the data shown in this webinar mostly from official websites, patent databases and worldwide web.

So, guys, in this webinar, we will be discussing the unique approaches, tailor-made practices and methodologies that we follow here at Sagacious to help our clients in invalidity searches.

What is an Invalidity Search?

But, before that, although you may be already aware, let us first understand what invalidity search is.

“An invalidity search involves conducting a thorough patent and non-patent literature search to identify prior-arts references which can attack the priority date of the target patent. We should publish these prior-art references before the cut-off date that is the earliest priority date of the target patent.”

So, we restrict our first strategy with that date. This date restriction mainly differentiates it from the novelty and patentability searches in which we do not take the cut-off date into account.

Also, most of you must be aware that the prior rights cases or references as well. Prior right cases are those cases in which the priority date of that reference is before the earliest priority date of the target patent, whereas, its publication date is after the priority date of the target patent.

So, we also look for combinations of multiple prior-arts in invalidity searches for invalidating the patent claims. So, now, you can have a look at the table of contents that we will be covering soon.

Like, we have already covered the invalidity search-introduction. We will cover different invalidation scenarios & different variants, which are tailor-made for our clients. We will also cover different phases of invalidity searches. And, we will also discuss Invalidity Search Report .

Ideal Scenarios to Perform the Invalidity Searches

Now, here in this slide, you can see the different invalidation scenarios in which we perform or we should consider performing the invalidity searches.

  1. Generally, entities that are sued for infringing a granted patent claims seek for Invalidity searches.
  2. Patent holders or owners who seek license for patents can also use Invalidation Searches.
  3. Patent holders or companies can also use this search in evaluating the strength and value of patent portfolio during mergers or acquisitions.
  4. You can also consider it when you have to ensure your patent claim validity, if that is valid or not.
  5. An invalidation search can also help you for defensive purposes. Like, you can use an invention without getting a license from the actual patent owner so that he does not sues you in the future.
  6. And, in addition to that, we can also conduct invalidation search for pre-grant and post-grant oppositions.

Types of Invalidity Searches

So, we have seen all the scenarios in which we conduct the invalidity searches. Now, let us move to the different types of invalidity searches.

Basically, there are two types of invalidity searches,

  • Utility search and;
  • Design search.

So, Design patents, basically, protects the way an article looks. And, the utility patents protect the way an article is used and works.

Here, we will be discussing, in this webinar, design invalidation search briefly. Our main emphasis will be on the utility invalidation search.

So, we have different unique variants for our clients. These variants can help our clients immensely in invalidation, searches.

These offer flexible timelines & pricing to our clients when they come across different, critical or non-critical situations.

These, it also helps us in ensuring proper quality and great efficiency.

Design Invalidity Variant

So, in this slide we will be discussing our Design Invalidity Variant features.

For design invalidity search, we have several sub-variants depending upon your budget, the jurisdiction coverage which you want, the efforts and time required.

In design invalidity searches, we use keywords, locarno classes and national classification for searching.

We prefer Questel Orbit, EUIPO, Design view, WIPO Global design, Google patents, and we also perform design invalidity searches on respective jurisdiction patent offices.

In this type of variant, we share a detailed MS Excel deliverable containing all the bibliographic details, images and PDFs links of the relevant results found.

So, you can have a look at this table in which we have basically four different sub-variants of this design invalidity searches.

  1. First one is ‘Quick’. It covers single jurisdiction or US or EP jurisdiction.
  2. Next one is ‘Adequate’ variant which covers US, EP, and International Design Registration jurisdictions.
  3. The third one is ‘comprehensive’, in which we cover 25+ countries.
  4. Then, there is ‘global’ sub-variant which covers multiple countries.

And, all these variants differ on the billable hours and pricing.

Also, since most of our competitors do not provide detailed invalidity searches on design. So, we have an edge over them.

Utility Invalidity Variants

Our main focus in this webinar will be on the Utility Invalidity Variants which we provide for our clients.

They are:

  1. SV1
  2. SV2
  3. SV3
  4. SV4
  5. Knock-out
  6. SB & SB plus
  7. NPL
  8. Native/Asian Languages variant.

Search Variant 1

Our first variant or first unique approach, which we provide for the clients, is Search Variant 1.

We recommended this search when there is a need of quick searching. This type of variant search consumes less time. And, it is also on low budget side.

In this type of variant, we perform search in single jurisdiction only. Like, if you’ll take that 70 to 80% of the cases might lie in a particular domain for a target patent. So, we can direct our search in that jurisdiction.

In this type of variant, we can also club non-patent literature search variant, which we will be discussing later, with the nominal pricing.

So, when do you think we would recommended it to use this variant for you?

We recommend this when

  • No internal or third party search has been earlier performed.
  • Before seeking license for a patent.
  • This search variant can also help you ensure the validity of the patent claim(s).

So, basically, we can use this variant in non-critical cases.

Knock-out Variant

Our next variant is Knock-out Variant or the Worldwide Variant.

This variant has coverage of over 100+ countries. It takes fewer hours even though the coverage is good. We do quick and narrow searching for this type of variant.

We can also club Non-patent literature search variant, here.

And, we recommend this worldwide variant when

  • No internal or third party search has been performed.
  • Before seeking license for a patent, and;
  • Ensuring validity of your patent claims.

Search Variant 2

Next such variant is Search Variant 2.

This variant is performed in US, EP, WIPO, Germany, France, UK, Chinese, Japanese, and Korean jurisdictions.

So, this search variant covers the major jurisdictions around the globe in which the patent filings were happening, are happening, and will be happening in the future.

This variant takes sufficient time to perform the invalidity search. And, you can afford this variant when you have low to intermediate budget.

So, we recommend this variant when;

  • No internal or third party search has been performed.
  • Evaluating the strength and value of your patent portfolio.
  • You have to validate your claims during IP filing and monetization.

Search Variant 3

Next search variant is Search Variant 3.

We use it when we require comprehensive and substantive examination for a target patent.

Here, we take adequate time. This lies on a medium cost side. We perform this search in 100+ countries as well.

And, we generally perform this variant using 3 languages- English, German, and French. Languages are customizable as per your requirements. Like, if you want it in English, Korean, & Japanese language, then we can do that as well.

We recommend this variant when more probability of prior-arts existing in European countries is there.

So, in this type of variant, we do a thorough analysis of file wrapper to identify the novel aspects of the claim. We also get an insight for keywords, key strings, and classifications which have been used by the examiner in performing this search while the examination phase.

This variant is required recommended when

  • You are stuck in a critical situation, like internal or third party search has already been done.
  • When you have to evaluate the strength and value of your portfolio during mergers and acquisitions.
  • During Pre-grant opposition or post-grant opposition phase.

Search Variant 4

Our next search variant is Search Variant 4.

It is done when comprehensive and detailed examination is required. Sufficient time is utilized for performing this search. This search is on the high budget side.

This is conducted worldwide. Non-patent literature search variant can also be clubbed in this search.

The main unique point of this variant is that it is conducted in 6 languages. So, we use these 6 languages for performing searches.

In this type of variant, patent searching is done in native patent offices as well. Like, we have official patent offices for Chinese, Japanese, and Korean patents.

In this variant also thorough analysis of file wrapper is done. We extract novel aspects. We also generate insights for keywords, key strings and classifications.

And, in this type of variant, we have also the provision for supplementary searching or supplementary iteration, which is provided free of cost. Like, if you feel that further search focus needs to be modified for finding a particular feature of the claim. So, we are very happy to do that.

We recommend this variant,

  • When you are stuck in very hypothetical cases. Like, when you are sued for infringing the granted patent claims.
  • This variant can be used for keeping a check on the validity of a patent for defensive purposes, as already mentioned earlier.
  • And, this variant can also be used for pre-grant opposition or post-grant opposition phases which are provided by respective countries.

Silver Bullet and Silver Bullet+ Variant

Here comes the Silver Bullet and Silver Bullet+ Variant, which is, one of our trademark variants, and is also most popular among our clients.

You must be thinking why is this so?

This is so because if we don’t find a relevant prior-art, a nominal or a basic fee is charged. And, if we are able to find relevant prior-art, you have to pay a total service fee.

This search is conducted when you want a deep exploration to invalidate a granted patent claim.

In this variant, we don’t have any limit to jurisdictions. And, we also have non-patent databases searching for this variant. This variant also has a monetary benefit to an analyst which automatically motivates him to deliver the best for this variant.

It is recommended

  • When you are stuck in highly critical cases. Like, internal or third party searches have already been performed. And, if you’re looking for solutions, you can come to us.
  • When you are sued for infringing a granted patent claim(s).
  • When there is an on-going lawsuit. You can come to us.
  • For pre-grant opposition or post-grant opposition phase.

SB & SB+ Variant Features

Silver Bullet search variant is conducted in 3 languages and Silver Bullet+ is conducted in 6 languages.

In this type of variant, we do thorough analysis of the file wrapper to extract the information which is required for performing the search. In this variant also, more focus is given on finding the results than on billable hours. Therefore, we have flexible deadlines.

We perform supplementary searching or supplementary iterations, free of cost. So, I think it’s a win-win situation for our clients.

Non-Patent Literature Search Variant

Now, next is Non-Patent Literature Search Variant.

We, at Sagacious, also give great emphasis on NPL searching as not all examiners rely on them during prosecution stages. Adequate billable hours are used for conducting NPL searches.

Here, we also have a unique feature. Like, we have a standalone Non-Patent Literature variant. Like, if you think that there might be Non-Patent Literature existing more than the patent documents. So, we can focus that NPL variant alone and it can also be clubbed with the above described variants with a nominal charge.

In this variant, this NPL searching helps us to get top assignee and competitors working in that domain. So, basically, we can use that assignee and competitors’ knowledge to find out the patents as well.

Several non-patent databases, such as Lens.org, Springer, Science Direct, Google, Google Scholar, Research Gate, IEEE, CiteseerX, Wiley, etc., are used for conducting the non-patent literature searching.

We also have in-house repositories for NPL searching comprising almost all domain names of NPLs. Basically; this is a central location where we can search domain names.

So, we have more than 200 domains available in this repository and you can also get a license for it.

We have also conducted our previous webinar on NPL searches, so you can visit that on our website as well. And, if you have any further queries, you can mail to Tanmay as well.

NPL Variant Features

So, here also, we can see that we do not only restrict to the list domain names discussed in the previous slide.

We also try to capture non-patent literature on Flipkart, Amazon, all e-commerce websites, YouTube, all social media websites. We also take in account technical manuals, user guides, sales and marketing materials for NPL searches. So, wherever we can find literature, which is not a patent application publication, we will look for that.

Native Asian language Search Variant

Our next variant is Native Asian Language Search Variant.

So, again, a unique point in our company is that we have native language experts as well associated with us. These experts can read and write in these native languages proficiently. We have native languages experts for Japanese, Chinese, and Korean languages.

They perform the search by using English, Japanese, Chinese, and Korean term sets. And, they also analyse various patents on non-patent documents in these native languages.

Billing is different for different languages and hours. And, billing is also done on the amount of time utilized for that native language search.

So, for China, Korea, and Japan, we use different types of databases. Some of these are official databases and some of these are non-official databases.

Summary

We have gone through all the unique variants which are tailor-made for our clients. Let’s have a look at their summary. We have 8 search variants.

Search Variant 1 is preferred for quick searching, has low cost and it is performed in single country.

Knockout Worldwide Search is conducted worldwide. It is preferred for quick searching, takes less hours and has low cost.

Then, Search Variant 2 is used for adequate searching. Sufficient hours are given and medium cost is there. And, major IP countries where Patent filings are happening are covered in this type of search.

Search Variant 3 is done when substantive search is required. We give more hours to the search, it has medium cost, and covers worldwide jurisdiction. It is performed in English plus two European languages.

Next is Search Variant 4, it is done for comprehensive searching. It has flexible hours, high cost. And, it is done in worldwide jurisdictions. We also perform search iterations, if required. This search is performed in six languages.

Then, we have Silver Bullet and Silver Bullet+ Search Variant which is our trademark and is most popular among our clients. So, it is performed when deep exploration is required. This type of search variant has flexible hours, variable pricing. It is conducted on worldwide databases, and we perform unlimited iterations till we get a result for you. This is also performed in 3 to 6 languages.

Next is NPL Search Variant. So, here also we give adequate billable hours. And, this is also medium cost and is performed worldwide.

Then, we have Native and Asian language Search Variant. Sufficient searching is done and good amount of time is given to these searches. This is on the medium cost side, and this is done, basically, to Native or Asian countries.


Phases of Invalidity Searches

So, we have discussed about the various unique variants provided for you.

Now, we will discuss the different phases of invalidity searches and what unique approaches we use in those phases.

We have Initial, Intermediate and Final phase.

Initial Phase

In initial phase, we share a Document of Understanding which is generally not a feature provided by our competitors.

Document of Understanding is, basically, a calibration document, which we share before starting the search to ensure that we and you, both are on the same page.

It includes our understanding of the target patent claims and is made on the basis of those claims. The DoU also includes preliminary term-sets, classifications, and search strings, which will be used in the search.

So, basically, this calibration document gives a chance to you to suggest any change in anything or give a particular direction for the search, if required. That is, you can really give a course correction for the search, to us.

Yeah, here I’ll tell you can see the preliminary onsets, which we have used on the left most side.

And, on the right side, we have provided definitions of the IPC/CPC classes, which we use in the search. And, also, the preliminary search strings, which we will be performing once you, approve the Document of Understanding.

Intermediate Phase

Most important phase is the Intermediate phase. In this phase, what unique we do is we share Interim report. With the help of this interim report, you can also give us a course correction.

What happens in that is all good references found till then are shared with you, in a specific format over e-mail.

Tic-tac-toe mapping are also provided against the key features of the patents. So, you can easily understand what the features are, which have been identified in the prior-art document.

It also gives you a chance to analyze whether the search is going in the right direction or not. And, you can suggest us, any feedback, or any search focus over call, as well.

So, in this interim finding, we also ensure that if we haven’t found any single document for invalidating the claims. Then, we try to find a combination of two or more prior-arts and we try to provide you that in the e-mail, so that you can also have a look at it.

Sometimes what happens is you also have 1 or 2 references disclosing some features of the claim and you want us to focus on other features which are not present in those documents. So, you can also give feedback to us for that during interim findings and discussion.

Here you can see and a snapshot of our interim report which was shared over the e-mail. It gives all the bibliographic details like publication, application & priority date, assignee. And, we also give “Sagacious comments” and relevant paragraphs which have been found related to the target patent claims.

Here, you can see the Tic-tac-toe table, which are also provided in the interim report. So, you can easily have a look which documents are disclosing which features of the target patent.

Poll

Tanmay Mittal speaking- Rishabh, I think, before we go to the final phase, it’s time for having a quick poll.

So, everyone present here kindly let us know, what do you think about the following questions?

Question 1- Among below scenarios, what are the scenarios in which an invalidity search is generally performed?

We have 79% of people saying “While involved in a patent lawsuit

Then, we have another 67% saying “In case of pre and post grant opposition”.

Few of them are of the opinion “Before signing a licensing agreement” and rest feel “Before launching a product in the market”.

And, let me tell you, this is a multiple choice, so many of you might have answered to multiple options as well. With that, let me end the poll.

Now, we move over to the next poll.

Question 2- Which of the following date is most critical date to consider, while performing an invalidity search?

Options are

  • Filing date
  • Priority date
  • Publication date
  • Earliest Priority date.

Thank you for the responses and the next question is pretty straightforward.

Question 3- Can we use Non-Patent Literature references for invalidating a patent?

-Yes

-No?

Great, let me close this poll now. We’ll revisit the answers to this poll when we begin our Q&A section.

And, for now, let me bounce the mic back to Rishabh, so you can start presenting again.

Thank you everyone for participating in the poll. We’ll take a look at them after the presentation ends.

Rishabh Anurag speaking- Thanks a lot, Tanmay. So, now, we move on to the final phase.


Final Phase

The last phase is the preparation of deliverables in such a way that it meets your budget and timeline requirements.

So, here also, we have two report formats, basically. First one is the basic report format and second one is the detailed report format.

Basic Report

The basic report format contains only the summary of the prior-arts in the form of Sagacious comments.

So, our clients generally prefer the basic report when they can study or analyze the prior-art documents shared by us, on their own end.

Hence, in this type of report, no paragraphs or images are required for mapping of the references against the key features of the patent claims.

Now, we come to the detailed report. This report contains mapping of all the prior-arts with paragraphs and images. So, you can have a better understanding of the key features which we have found against the claims of the target patents.

And, in this type of report, a tic-tac-toe table, as already mentioned in the interim report section, is also provided. And, highlighting of PDF is also done for various paragraphs, which we use for mapping.

In this report, expert Sagacious comments are also provided for your ease of understanding of the mapping.

How does our Basic Report helps in Filing Opposition?

So, for basic report, we will be having a quick walk through.

As you can see here that we provide an understanding which we have made on the basis of the target patent claim.

We also attach images on the basis of which we have made. We also have a section for search focus and analysis focus provided in the report. Through which, you can analyze what will remain our focus for the rest of the search.

Key-Features’ Section

Then, we also have the ‘key feature’ section, where we make features on the basis of independent claims. Here, we also highlight the important or novel aspects of the key feature with red colour by studying the file wrapper.

Relevant, Related & Interesting Results

So, here, we generally tag the different results found into relevant, related and interesting category.

If a prior-art reference discloses all the features of the claims, we mark that as “relevant”. We provide that in the relevant results section. And, if all the features are not explicitly disclosed or some are partially mapped, then we categorize those results in the “related” results section.

Interesting results section contains those results which are not provided in the relevant or related search section.

So, here, we have relevant results section and here we have found a prior-art in one of the search.

Bibliographic Details & Sagacious Comments

We provide bibliographic details and we also provide a summary. Here, we provide Sagacious expert comments on the basis of the key features of the patent claim.

So, you can easily understand what all features are present in the paragraph.

We also have a tailor-made section for NPL results for sharing non-patent references. Here also, we provide bibliographic details and we also provide Sagacious comments explaining the key features which we have found related to the target patent claims.

Publication dates, Methodology Section & Search-String Section

We also provide the publication date section in which we mention the publication date of the article. It should be before the earliest priority date of the target patent.

“Methodology section” contains our methodology which we generally use while performing the searches.

“Search string” section contains everything related to our search strategies, which we have performed. And, we represent our search strategies aesthetically in this section.

Citation Tree Analysis, Assignee Searches & Other Sections

We also do Citation Tree Analysis for the second level citation search for the target patent. And, we also perform Assignee searches like which assignees are involved in that industry.

We also mention different databases which we have used and what strings we have performed on those databases.

Now, we also have a section for Google, Google Scholar or any NPL database, which we have used like Lens.org and what strings we have performed.

We also have a section for the term-sets which we have prepared.

So, all the IPC/CPC classes or the national classes, which we have used in performing the search; we provide definitions of those as well, for your quick understanding.

“Assumption & Data sources” section contains all the data sources and assumptions we which we have taken into account.

“Sanity list” section contains the documents which are not included in the report. Like the first level citations of the target claim, so, we do not include them into report and this also contains a disclaimer.

So, this is all about the basic report.

Detailed Report

We can move to the detailed report section now. So, here in this detailed report section, I would only introduce you to the things which are different from the basic report.

You can also mail at Tanmay’s e-mail ID ( tanmay.mittal@sagaciousresearch.com ) if you want samples of these reports. .

Now, we are coming to the detailed report. This detailed report has almost every section same as the basic report. We’ll only discuss the different ones.

What are the Unique features of the Detailed Report?

What happens is, in this detailed report, that the key-features which we have used to prepare on the basis of the target patent claims, we map the prior-art references found according to those key features. This helps you in easily understanding what features have been found in those prior-art references. And, you can easily check whether these documents can be combined or not for invalidating the target patent.

We also provide conclusion of search results section, where we provide details of how many relevant, related and interesting results have been included. And, how many hits have been seen, or analyzed for both patent as well as non-patent documents.

Here, we also provide a brief summary of those prior-art references which we have found in the search.

So, coming to the relevant results section. I will be discussing only the different things from Basic Report.

Relevant Result Section

Here, we have mapped the prior-art references found according to the respective key feature. As you can see, there is a feature one, and we have also bold and underlined that part which helps you easily recognizing or highlighting that this has been disclosed or not in this document. We also back the report with the images, so that you can easily understand the mapping.

There is also a unique feature of our reports, that if all the aspects of a particular feature have not been found, then we mentioned that in the form of Sagacious comments. And, we mention the parts of the key-features which have been found, and we also mentioned the part which has not been found clearly.

So, we have marked this key-feature as inferentially mapped. If we feel that the key feature has been disclosed inferentially, then it can be inferred from the diagrams as well as the excerpts but not explicitly disclosed in the prior-art found. So, we provide that thing as well in the form of Sagacious comments for your easy understanding. This is same for the related results section as well.

We have already discussed how we provide the mapping of partially-mapped references. So, in this report section, we also have interesting results section where we only provide the summary of the prior-art found and we also have a tailored NPL section where we provide any non-patent literature. And, we also provide the publication date, like, in the basic report.

The below sections are similar to the basic report, so we don’t need to discuss that.

Question & Answers

So, guys, this is all from my end. I hope that you found this webinar informative and useful for you, in case you guys have any questions, you can ask me right away. Thank you, guys.

Tanmay Mittal speaking- Great, Thank you, Rishabh, for that presentation. I hope it was really useful for all our listeners. And, I do have a set of questions from our audience. Let me quickly pull them up.

Is non-patent literature less important?

We have a question which says that you seem to concentrate on searching products in patents alone. Non-patent literature seems less important. Why is it so?

Well, it’s not the case. It might have got projected that way, we’re sorry for that. But, for invalidating a patent, it’s done equally through patent as well as non-patent literature. That was the reason why we included that polling question as well: Can non-patent literature be utilized to invalidate a patent? We have seen a lot of cases in the past as well where non-patent information, say, media mentions, press release, probably movies where that model or that structure has been shown, and that function has been shown, are used to invalidate.

So, yes, the non-patent literature is equally important and we can use it to navigate patents.

Then, we have another question for us.

When you have a Silver Bullet variant, why would anybody else choose other variants?

I understand that the Silver Bullet seems to offer a lot to everyone because it’s a contingency based model; wherein if we find a relevant reference for you then we will charge you a success fee. If not, then we’ll just charge you a base fee.

So, yes, as Rishabh has already mentioned, there are various scenarios which makes people choose different variants. Also, in my experience I have seen that sometimes you have a very specific requirement which is constrained by the budget.

However, when you go for a silver bullet search, there is always an opportunity to be able to charge a success fee because for silver bullets, we have an incentive associated and, we try and crack that in all the possible ways; the NPL, patent literature, searching in different languages. And, the success fee is on the higher side. That’s why, sometimes people go with these other variants as well.

For any type of searches, when does an analyst decide to stop a search? Is there a time constraint? Is it a budget limitation? Or any of the criteria except for Silver Bullets?

I believe this totally depends on one more criteria. And, that criteria is that when we have analyzed almost all the results that we’ve identified from the set of patent databases that we’re using.

For example, as you have seen in the report that we follow a search methodology, that we use for performing a search. And, we have some, 5 to 10 best practices that we follow. Like, performing keyword based search, from narrow to broad, and broad to narrow, then performing a citation tree analysis, where we are analyzing the first level and second level citations. Then, we have a similarity search that we perform, we have an assignee search that we perform. Then, in some cases, we even go for Geography wise searching because we feel that some inventions are particularly specific to some geography and we have a better chance of finding references over there.

So, once we exhaust all these options and we feel that this is what we have. Then, we stop it there and then another reason of stopping is when during Interims, our client feels that they have found a good reference that they wanted, so, that is where our effort on the searches stop.

So, either in case of success or when we feel that we have taken the necessary efforts for that particular variant, that is only these scenarios when we feel that we should stop the search.

Then, I have another question.

How do you cover Russian language in searching NPL?

That’s a great question. So, for all our listeners, let me tell you that we have Native Language Speakers for Russian, Chinese, Mandarin, Japanese, and Korean, and we operate as Trilogy IP from the mainland China.

So, in most of the cases when we have requests for searching in particular language, we try and utilize our overseas partners for that. And, specifically Trilogy IP. And they seem to have understanding of all the websites, publications in the Russian languages plus University documents, scholar documents. All that information is accessible to them. That is because they are the regional databases for them and they are assigned to it. That helps us cover Russian language.

Then, we have another question on translation. Another one on Chinese language. I hope the answer to my previous question was helpful. And, I was able to well convey the concept behind native language searching and how we do better in native language searching than our competitors.

Poll- Answers & Discussion

With that, we have some questions regarding the polls. And, we want to know about the results. So, let me quickly talk about the polls now.

Question 1

The first question was what are the scenarios in which we generally perform an invalidity search?”

  • While involved in a patent lawsuit– Yes, Definitely.
  • In case of pre and post grant opposition– Yes, Of course.
  • Before signing a licensing agreement– Yes, we advice you do that because you’re going to license a granted patent based on that you will practice business. So, what if, somebody else invalidates that patent?
  • Before launching a product in the market- Generally, we advise to conduct a Freedom-to-Operate search. However, a next step to that is performing an invalidity search when your product is critical and when you feel that a particular prior-art or a particular reference found in the FTO search is blocking or stopping you from practicing or selling a product into that country. So, that is the second step. The first step would be FTO always.

So, I believe people who have answered all the four are correct, People who have selected all the three options are also correct.

Question 2

Coming over to the second poll which was about the dates.

“Which of the following date is most critical date to consider, while performing an invalidity search?”

Options are

–           Filing date

–           Priority date

–           Publication date

–           Earliest Priority date.

Let us start with the elimination method. So, publication date would not be the correct answer over here because you would always go for the date which is the earliest one.

Then, let’s move over to the second option, which is the filing date. Again, I would pass this one because you might be filing in some other geography at a different time, but you might be claiming priority from a patent in some other geography. So, you must not consider filing date because family members can definitely do something bad over there.

We have two options now- priority date and earliest priority date. I feel people who have answered priority date are also correct and people who have answered earliest priority date are more correct.

It depends totally on the kind of application that we have at hand. Sometimes, we just have the priority date that we can consider. It is also construed as earliest priority date. But majority of the people have answered earliest priority date and that is absolutely correct.

Question 3

Then, the last question, which was the obvious one. It was about if we can use non-patent literature.

So, I think we have discussed it pretty well, that yes, we can use it as a means to invalidate our part of literature.

End-Note

With that, I believe we are at the end of this webinar. And, I would like to say thanks to all our listeners who started with us on time and stayed with us during the entire presentation. You have been so vocal. You have asked such relevant questions. I hope we were able to answer them. In case, you could not, you can always reach out to me and we will try and answer them in our post seminar publish.

Also, I feel that overall this session was informative. We were able to pass on, at least, some of the learning that we have. And, I’m sure our listeners must have some great takeaways from this session and will use some of these pointers while working for their businesses.

Lastly, I want to extend a big thank you to everyone. We have people who joined in from various countries today, made time to join us at this time zone.

So, thank you, again. Your participation is such a good encouragement to us to keep continuing our efforts in spreading this IP awareness and knowledge throughout. And, we look forward to meeting you again in the next webinar. Have a good day, everyone. Bye.

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