Legal Status Monitoring
Service Overview
Why Legal Status Monitoring and Alert services?
Provide timely updates about own IP’s current status, to be used for further actions
Regular updates of the competitors’ IP status, help in predicting competitor's strategy
Regular updates on any lapsed IP, that can be an entry point in a market
Why Us for Legal Status Monitoring?
Expertise:
- Monitoring patents Pre-grant & Post-grant
- Ability to monitor patent assignments
- Ability to monitor Private and Public PAIR both
- Covering obscure jurisdiction directly or via network of associates
- Trained Paralegals to review transaction history and file wrapper and providing detailed summary of events in monitoring period
- Sharing insights based on monitoring to decide on filing oppositions, risk & business opportunity assessment
- Association with local attorneys in geographies where legal status data of an IP is not publicly available
- Expertise in monitoring Asian Jurisdiction patents as well (including China, Japan, Korea, Taiwan and India)
- Coordinating with local attorneys in jurisdictions where legal status is not publicly available
- Clearly highlighting the updates in current monitoring period for better visibility
Coverage:
- Patent Prosecution Details: Patent offices of respective Jurisdictions such as EP register, USPTO, SIPO, KIPRIS. INPASS etc.
- Patent Litigation Details: RPX Insight, Case Law World II Database, 4IPCouncil
Who might need this service?
IP Counselors
R&D Managers
Attorney
Strategy makers
Case Studies
Client:
The client is one of the leaders in biotech therapeutics worldwide with major IP and market shares worldwide. Headquartered in the US, the company engages with innovators in medicine, immunology and pharmaceuticals etc. globally and is functional in engineering therapeutics for a range of medical conditions
Problem:
The client required a detailed study and timely monitoring of patent portfolios of their competitors to determine areas of opportunities and competition. The client was further interested in identifying lifespan of the competitors’ portfolio for specific technologies to design around in furtherance to their R&D strategy. Overall, the client wanted technical and legal monitoring regarding the portfolios of their interest to advance their business strategy
Solution:
Search Objective:
To identify any patent references that affect the clearance of the Client’s product/technology in various jurisdictions. Further, to determine legal updates in the portfolios of relevant patents.
Searching Included:
Preparing search strategy using various Term Sets and Classes to capture patents filed in last 20 years. Identifying major players in the domain and formulating searches to capture the most relevant patents assigned to these players. Further updating searches to add relevant information determined during preliminary searches
Analysis:
- Determining relevance criteria based on the client’s technology/product disclosed in the identified documents.
- Screening patents based on the relevance criteria and further categorizing shortlisted patents in various categories according to the criteria.
- Analyzing the most relevant patents (five members per patent family) by mapping them under a detailed taxonomy underlying key concepts of the client’s technology/product. Further identifying information from the relevant results and adding to the taxonomy.
- Preparing a report complete with analysis and bibliographic information highlighting legal status details of the patents and sharing the deliverable with the client. (Deliverable 1)
- Monitoring newly published patent families and newly published members of the analyzed families. Sharing monthly legal status updates and quarterly technical updates with the client (Deliverables shared for a span of 24 months)
Outcome:
Impact:
According to the search and analysis shared by Sagacious, the client was able to assess the competitors’ most recent technology, legal status and lifespan of the patent pool for deciding course of action for their business strategy. The client was able to identify possibilities of collaboration with few of the competitors and extend their business segment in diagnostics.
Project Duration:
Time for quarterly technical updates: 24-28 hours/update – involving 1 analyst and 1 project manager.
Time for monthly legal monitoring: 4 hours/update– involving 1 paralegal support and 1 project manager
Client:
A US based Multinational in the field of FMCG
Problem:
The client was in the process of releasing a product in the market, which could face tough hindrances from a competitor’s patent portfolio. The client was interested to “watch” the legal events related to the portfolio, so that they could launch their product without any possible infringement.
Solution:
Analysis:
- Sagacious developed an understanding of the client’s product and competitors’ portfolio.
- Sagacious further identified family members, including continuation applications and legal events (history, tentative future events, amendments, oppositions and upcoming fees etc.) for each patent family in the portfolio.
- To organize the identified information, Sagacious prepared a detailed tabular representation corresponding to each prosecution or legal update in the portfolio.
- Sagacious compiled a dossier of documents corresponding to each update amended claims, new legal events etc.).
- Based on the study of portfolio and the chain of legal events, Sagacious formulated a monthly “watch” of the portfolio.
- Monitored the portfolio every month for a span of more than a year, within which Canadian family members within a certain monitored family became legally inactive.
- Sagacious therefore provided the client a timely update, to be able to introduce their product in Canada, with minimal refinement in their product specification
Outcome:
The client was able to receive timely updates, to be able to introduce their product in Canada, with minimal refinement in their product specifications.
