PATENT PROSECUTION SERVICES  

  • Patentability / Novelty Search

Thorough search for prior art literature to raise questions on patentability of subject matter

This search is effective when an invention is in its nascent stage. It is designed to assist in providing quality solutions and opinions for forming a strategy to go forward with a Patent Application, or not.

Once we are provided with a brief disclosure of the invention, we perform an exhaustive worldwide search of all issued patents, expired patents, published patent applications and other relevant Non-Patent Literature.

Patentability Search is based on the sole criteria of novelty and non-obviousness. Patentability/Novelty search helps to evaluate a particular invention and provides an insight into the already existing technologies and opinions for forming a strategy to go forward with a Patent Application, or not.

It may take quick five-hour Patentability Search to a search that might extend up to a few days, depending upon its complexity.

  • Freedom-to-Operate/ Clearance Search

Freedom to Operate (FTO) search is conducted to mitigate the risks of infringement of patents in a particular region/country so that one can take a particular action, like launching, developing or producing a product, without infringing the IP rights of others.

This type of search is strictly a jurisdiction-based search that establishes whether or not, you can legally commercialize your product, targeting a specific market only. If your want to sell a product, it is important that you know for sure that your product will not infringe any other patented products in the market. Therefore, we always suggest a patent clearance analysis [FTO] of a product to be done before it is launched to be absolutely sure where the product stands. In a patent clearance analysis before the launch of the product, we search through various patent databases in search of patents your product may be infringing upon and give you advise accordingly.

At SNF, region country-specific comprehensive FTO searches are conducted by technical experts having extensive patent search experience along with various patent search strategies, wherein pending patent applications as well as granted patents are analyzed. An FTO opinion detailing on IP rights, IP law relating to a particular jurisdiction, expiry dates of the patents and assessing how the patented claims might be invalid is rendered to our clients. The FTO report is provided within 10 to 15 days.

  • State -of -the -Art Search

Our State of the Art Search services are sought by clients who wish to identify the status of any current developments in their technology of interest. We identify patents and non patent publications, and the key players in particular technology for all such clients.

The state of the art search is conducted to find patents related to particular technology of interest. This type of search can cover patents worldwide or from a particular geographical area, depending on interest. These searches are broad but not as broad as a landscape study, which often touches lot of surface but seldom goes in depth. In state of search, we sufficiently narrow the surface area to be covered and go in depth to answer some specific questions posed by business, R&D or legal team regarding a particular technology.

  • Patent Drafting

Patent drafting, besides being the most important document in the entire patent registration process, is also considered to be one of the most complex techno-legal documents. This document contains the aspects of the invention for which protection is sought.

Constructing claims is an art and requires a fine balance between the legal and the technical. Moreover, there is always the dilemma of constructing the claims either too broad or too narrow. Usually patent agents try to construct claims as broadly as possible to widen the scope of the invention. If the claims are too broadly constructed, there is a possibility that the application would face rejection for covering more than what the inventor actually invented. On the other hand, if the claims are too narrow and does not cover the invention adequately, competitors may easily copy the invention and work around it without infringing the patent claims. If a patent claims are narrow, the patent may not be of much use commercially because competitors may make slight modification in the product that do not infringe the patent claims and launch it in the market.

Therefore, it is a difficult task achieved only through practice and expertise in the field of drafting. Better patent drafts tend to include a mix of broad as well as narrow claims to adequately protect an invention. At SNF, to draft patent applications to perfection, we have a strong team comprising of patent attorneys, registered patent agents, and technologist who work in systematic internal processes to understand your invention and deliver quality patent drafts. Our patent drafting team can expertly draft patents in various domains of science and technology. We have the experience of drafting numerous patents in various technical fields, pertaining to domestic and foreign clients.

We, at SNF, also have the software tools required for illustrating the patent drawings required along with the patent application. The preliminary patent draft is provided for our client’s review within 15 to 20 days.

  • Patent Illustrations / Drawings

When a patent application is submitted, patent drawings illustrating your invention also must be provided, for a better understanding of the invention.

Well-developed drawings support the embodiments of your invention when textual description alone is not enough.

These patent drawings are required to clearly depict every feature of the invention, and should also conform to the law. Our team of experienced draftsperson makes use of the latest software tools for accuracy.

  • Office Action Responses

Office Action acts as a decisive test for your invention in the form of Objections/Rejections that are raised by the Patent Office. Preparing a response to office action requires a blend of both- technical and legal expertise, so as to be able to challenge the rejections/objections raised in the Office Action.

An “Office Action” is a letter from a patent office in which a patent examiner or other official of the patent office makes an official communication to the patent applicant about the status of the patent application.

Office action response is prepared when examiner raises objections and rejections against an application filed in pursuance of a patent. An expert is required to counter answer the examiner’s rejections and objections in order to grant of patent. The person who drafts the response to the examiner’s objections should have technical skills in the specific field of invention.

  • Patent Filing

Patent filing is an elaborate and complex process which involves technical and legal requirements. Patent applications should be prepared as per the guidelines defined by the respective patent laws across jurisdictions as incorrect applications may lead to loss of the priority right or may delay the priority date. Post filing the patent, there are other documents that need to be provided as per the timelines. We have a team of experienced workforce consisting of lawyers and paralegals having vast experience in filing patent applications. We prepare ready-to-file documents in the format prescribed by respective PTOs so that the paralegals and attorneys have to spend minimum time in filling up the forms.

The team also includes Indian patent agents, who are also registered to practice before the Indian patent, having in-depth understanding of the intrinsic values of patent as well as the experience of successfully handling patent filing & prosecution in India and abroad. Our team is fully acquainted with the legalities of patent prosecution procedures of different jurisdictions.

 

PATENT LITIGATION SERVICES

  • Patent (In)Validity Analysis

An invalidity search is conducted to invalidate a specific patent on grounds of novelty. It is an effort from our end to figure out every possible prior art that was missed during the Examination by the Patent Office.

A search for any document or evidence of use of the patented invention before the first effective filing date of the subject patent is conducted. In case you have been sued for infringing a patent, you may use Invalidity search as a tool to try and invalidate that patent.

The Invalidity search is mostly ordered by defendants because if they can invalidate the plaintiff’s patent, with previously existing prior art(s) the patent can be considered invalid and cannot stop others from selling or manufacturing the technology in dispute. Plaintiff’s or patent owners can also conduct the validity search for their own patent as a part of due diligence exercise to know the strength of their own patent.

A validity Search can also confirm your patent claims and potentially increase the fees you charge for licensing your technology.

When a client plans to license, buy, sell or assert a patent, they request for a patent Validity search to ensure the enforceability of the patent under consideration. Our Validity reports help our clients in taking informed decisions and negotiations.

  • Infringement Studies

Infringement analysis is done to ascertain whether a process or product infringes upon a patent claim. Our infringement analysis reports include a thorough analysis based on the legal principles of literal infringement and infringement based on doctrine of equivalence.

A product or process may infringe a patent claim under literal infringement or doctrine of equivalence. Under the principle of literal infringement, a claim is infringed if every element of the claim is found in the accused product or process. Under doctrine of equivalence, a claim is infringed if the accused product or process performs substantially the same function in substantially the same way to obtain the same result as that of the patented product or process, even when there is no literal infringement.

  • Claim Chart Preparation

The team at SNF has extensive experience in creating Evidence of Use Charts (Claim Charts). We customize charts as per client’s requirements. When a custom work is required, we often apply multiple analysis techniques in order to generate high quality claim charts. Claim chart construction involves detailed mapping of patent claims with the identified literature (patent, product or other literature) in question. Claim charts are typically used by attorneys and in-house counsels to determine validity of claims, scope of infringement and taking licensing-related decisions. We perform detailed analysis of patent claims and provide easy to understand reports with textual and graphical comparison along with claim enablement depicting the extent of overlap between the claim and the literature.

 

PATENT ANALYTICS SUPPORT

  • Patent Landscape Analysis

Patent landscape reports, in general, provide an overview of the patent situation for a specific technology in a given country, region or on the global level. However, the scope of a landscape report is determined based on the specific requirements of a client. At the minimum, they provide a state-of-the-art search for the technology of interest in suitable patent databases. The results of the search are analyzed to answer specific questions. Some of the questions that may be answered through the analysis include: What are key patterns of patenting activity? Who are the most active competitors in a given technology domain? Who are the most active players in a given technology domain? What are the emerging sub-fields in a given board technology domain? Are there are any white spaces in the technology landscape? What are the different solutions for a particular problem? and many more.

Our landscape reports contain visualization of the results in order to facilitate understanding of the results, and decision making.

  • Whitespace Analysis

In a world where every company wants to be on the forefront of innovation, the need to explore underserved markets or businesses that are outside their core becomes all the more important. A white space analysis helps to uncover these unmet and unarticulated needs to create innovation. This kind of analysis is done to find technology voids where competitive advantage can be gained by bending the R&D in a particular direction so as to block other competitors exploiting those spaces.

Our white-space analysis provides the charts showing the technology growth and white-gap areas where further R&D can be done to carry out incremental innovation for the development of a new product.

  • Competitor Analysis

A competitor patent portfolio analysis involves an in-depth study of the key competitors, their technologies, patent portfolios, patenting trends, product pipeline, niche technologies, licensing opportunities, and protection from infringement and litigation liabilities, SWOT Analysis, etc.

We help you keep track of Top-notch firms, competitors and research groups worldwide. We also focus on key technologies so that you will always know who has been active in research and development areas that are important to you.

In a world where every company wants to be on the forefront of innovation, the need to explore underserved markets or businesses that are outside their core becomes all the more important. A white space analysis helps to uncover these unmet and unarticulated needs to create innovation. This kind of analysis is done to find technology voids where competitive advantage can be gained by bending the R&D in a particular direction so as to block other competitors exploiting those spaces.

  • Patent Portfolio Management

A Portfolio Analysis provides an in-depth qualitative analysis of your company and that of your competitors. Such an analysis identifies competitive strengths and weaknesses.

This strategic search helps you to identify unused patents in your portfolio for out-licensing. Our studies are based on an exhaustive analysis of patent documents from around the world.

We supplement this with other relevant non-patent literature documents as well. All the relevant patents are analyzed and classified in a detailed manner (taxonomy) and at the end of this study, the analysis is presented through intuitive graphs and charts to aid usability.