Our Solution

Our team deployed a hybrid approach to increase the value of the pending patent applications and portfolio of granted patents to increase the client’s patent portfolio.

The team deployed the following:

 Directed Prosecution for pending patent applications with and without Notice of Allowance (NoA) to file continuation to expand promising patent families.

 Conventional infringement search for granted patents.

 Our client’s competitive landscape indicates strong and weak technological areas in the patent portfolio for their products and competitors’ patent and product landscape.

We developed a seamless workflow, which has now become integral to the client’s patent portfolio development. Our team’s infringement research and search analysis supported the client in making informed decisions on expanding the patent portfolio with future utility and assertion ready for both offensive and defensive approaches.

• Directed Prosecution: For each NoA application, we performed the analysis of the allowed claim and performed an infringement search to identify any competitors’ overlapping commercial products or technology. Analysis of the standard bodies and open-source technologies was also considered in the workflow.
  In case the claim of a pending application was infringing on a product, the in-house counsel was informed, and the patent was bucketed in a high-value patent list. Also, in some cases, a recommendation was made to file a continuation with a slightly different claim scope that can still be mapped on competitors’ overlapping commercial products or technology.
  For patent applications with incomplete infringement, we identified unclaimed key features or embodiments described in the client’s specifications which can be included in the claims for filing continuation patents.
• EoU Chart: Based on the identified products, we generated EoU charts mapping out the allowed claim and for granted patents. The patents with a short remaining life and which cannot be infringed by a commercial product and of an obsolete technology were recommended for pruning. Based on the strategic approach of the client, annuities of ~100 patents were not paid.
• Patent Monitoring: Our team focussed on the patent monitoring of our client. Whenever a Notice of Allowance was issued, an infringement search was performed on the allowed claim to identify commercial products and recommend the client for continuation.
• Portfolio Categorisation: Patents were categorized to show the portfolio’s diversification and indicate the portfolio’s strong and weak areas. The categorization was updated for all the allowed patents to dynamically show the changing nature of the client’s patent portfolio.