IT managers are on the front line of innovation for their companies. There is a very good chance that many of the new or novel ideas that their company dreams up will come out of their team. Because of this, it is critical that IT managers understand how the U.S. patent system works. What makes this even more challenging is that there have recently been a number of changes to the process of applying for a patent.Searching & Applying For A PatentAs an IT manager, one of your IT manager skills has to be to identify things that your IT team has done that may be patentable. Sorry, I don’t think that any of us has received any IT manager training in how best to go about doing this. These need to be new or different ways of solving problems that you think that other firms might be able to use. Once you’ve spotted a potential patent candidate, you then need to get the company’s legal team involved.The first thing that the legal team is going to do is to perform a patent search. There is no sense in moving forward with your team’s discovery if someone else has already patented it. These days the patent search has to include international patent databases. Two good databases that you’ll want to make sure that your legal team searches include the World Intellectual Property Organization’s Patentscope database and the European Patent Office’s website.The next step is for you to meet with the legal team and determine if it would be worth it for the company to file a provisional application. Doing this will hold your spot in line to file for a real patent for a year. Remember, the new patent rules say that the first company to file for a patent gets the patent – it no longer matters who invented it first.Secrets To Sharing Information & Saving MoneyWho you tell about your patentable idea turns out to be very important. The rules state that if a member of your IT teams publicly discloses the patentable idea at a conference or during a meeting with a customer, then from that moment on the company has one year to file a patent application or else it risks losing its rights to it. One good way to cover yourself is to make anyone that your team meets with sign a confidentially agreement. This way if the idea is discussed, the clock won’t start running.How many patents your company is currently applying for at any given time matters. The rules state that if the company has less than four patent records on record, then it is considered to be a “microentity”. This means that the cost of filing a patent application will be ½ the normal cost.One of the things that an IT manager needs to understand is the total cost to the company of applying for a patent. The actual application fee is relatively small (about US$800); however, the legal fees associated with a filing can easily run up to US$10,000 or more!What All Of This Means For YouOne of the most valuable things that a company can have is its collection of patents. This puts IT managers in a tricky situation: we are always operating at the cutting edge of innovation at the company and our teams are the ones who are most likely to create ideas that can be patented. This means that you need to know how the patent system works.The rules have recently changed and now the first to file gets the patent. This means that you need to conduct a global search to make sure that your patent has not already been claimed. When your team has an idea that might be patent-worthy, you can provisionally apply for a patent to reserve your spot. You’ll need to be careful about sharing information about your idea because you may cause the clock to start ticking. Finally, depending on the size of your company you may be eligible for a lower rate for applying for a full patent.Patents are powerful tools for companies that are competing in contested markets. As an IT manager you are in the best position to identify patent opportunities and to take actions that will start the process of applying for a patent. Helping your IT team to get a patent is a great way to accomplish some IT team building. Make sure that you understand how the system works and you will become an even more valuable IT manager for your company.
The increasing popularity of smartphones has made mobile application development a lucrative business with a huge profitable market. This is the reason patenting of mobile applications has been a hot topic amongst the patent clients. Mobile app patents have been in the market since a long time now. Going back in time, we have seen even the mobile platform developers with deep pockets such as Google, Apple and Microsoft getting involved in patent litigation. The most common was when Lodsys LLC–a non-practicing patent entity threatened Rovio (the makers of Angry Birds) for patent infringement lawsuits. All this tells us that mobile apps are patentable. However in a market with quick shelf life is it financially sensible to go for patents or not is a different matter.The recent data from app analytics specialist Flurry, states that there are over 600,000 apps available for each, Android and iOS. This makes the environment all the more competitive especially for startups. So whether you want to patent your app or not is a business decision, because patenting involves a whole long process.First question that arises in mind is why should we patent the mobile application? The answers can be:To create a competitive advantage over all the others in market.
To obtain a special monopoly
To generate returns through licensing
To block your competitorsThere are many issues involved in patenting an app that needs to be addressed before you actually go for patents. A patent can protect a product against copying by any other competitor. However, it certainly doesn’t protect you from accusations of violation from other patent holders. This is something similar to the example given regarding Lodsys LLC. It is no way impossible for a patented app to have some features that can infringe the rights of another patented app.Consider these things before diving into the world of patents:Are you ready to spend the budget required for patent prosecution?
Is your app unique or is it worth the money involved in getting it patented?
Do you intend to partner the mobile app in near future?
Will you have any commercial advantage by patenting?Apart from these there is cost and timeframe issue while getting your app patenting. It is very important to access the global market and understand the cost structure corresponding to your country’s regulations. In US a patent is likely to cost up to $ 30,000, which certainly demands a vision if it is a good idea for your app to be patented or not. Also, patenting is a time-consuming process that takes 3-4 years to be granted in a country. So before indulging into this, let your app get public and examine the results. The idea of filing immediately before the idea is public is the most common mistake committed by inventors.The patent act states that a new product or process and an improved product or process can be patented only if:It solves a problem never addressed before
It puts forward new advantages, new solutions or improved solutions
It is more comprehensible and cost-effectiveMobile applications run in two components-first on the user’s device and second on remote server that is the processing center. Any of the two components can form the basis for patentable claim. The application for filing the patents should be filed as early as your app is ready to commercialize. The complete process of filing an application takes a year from the date of starting the process. Patent laws differ in different countries. In India, patents are valid for 20 years from the first date of filing an application. To acquire exclusivity in various territories, one needs to file an application separately. For patenting abroad, you need to first file an application in your country and then for countries abroad using PCT (Patent Cooperation Treaty).Some of the top patent filers in India and around the globe are:CSIR
Procter & Gamble
SAILTo protect the unique functionality of an app, patenting it is the only way to do so. So if you too have a great idea in mind, consider implementing it and examining the results first. Make sure your entire application is drafted well enough to beat the patent prior art.
Patents are the largest source of technological information. Patent are given to the inventor as a reward for its innovation in the form of the exclusive right of the monopoly for a period of 20 years from the priority date of the invention. Due to advancement in the IT sector and internet, now these valuable documents are in the reach of the general public. Any person skilled in the art can go through various patent databases and after a search can get the patent document of their need. There are different patent databases viz, USPTO, EPO, JPO, etc freely open for the public access. If we go through the patents related to a specific technological area, we will be able to find the lots of information about the life cycle of the technological innovation viz.,o evolutionary path of a specific technology,o technological development,o technological diversification,o technology merges,o major players in specific technological area,o key points of the specific technology,”The World Intellectual Property Organisation (WIPO) revealed that 90% to 95% of all the world’s inventions can be found in patented documents.”Patent analysis can reveals very valuable informations, which is not available anywhere. After patent search the crucial part is the patent analysis, and one have to be very concise about their objective of the study. The information in the patent documents can be utilized in different form according to the need and mapped accordingly to get the picture of the entire analysis in snapshots.Patent data can be used for the preparation of technological landscapes. Logistic mathematics and circle mathematics can be very useful in the plotting of the technological landscape. It can reveal the evolutionary trend of a technology, how it is evolved from a basic technology, along with the period of the technological diversification and its nature. These maps will also give the detailed overview of the merging of the different technologies to give rise to break-through technologies. These types of maps will be very useful for the R&D personals to evaluate the position of their research and technology, and also they will find way to more innovate more advanced and valuable technology.In the today’s global context firms need to know what technologies can competitors choke easily, and may be attempting to. They also need to know the spaces in technologies where competition is intense, and the areas where competitors are concentrating their IP development and their R&D efforts. They need to be able to track patent acquisition and development strategies and chart out the competitive landscape. To evaluate technology before making any investment decision, firms need to know the pace of patenting activity in the technology, which patents embody fundamental ideas in the technology and how vulnerable the firm’s technologies are to patent infringements. This will give them much needed information in deciding between technology development and technology acquisition.The ability to extract relevant information from patent literature is a crucial success factor for anyone involved in technological innovation. The technology mapping technique’s that can be used to transform patent information into knowledge that can influence decision-making.Patents are an important source of technological intelligence that companies can use to gain strategic advantage. Technology Intelligence is a can be used for gathering, analyzing, forecasting, and managing external technology related information, including patent information. Computational patent mapping is a methodology for the development and application of a technology knowledgebase for technology and competitive intelligence. The primary deliverables of patent mapping is in the form of knowledge visualization through landscape and maps. These maps provide valuable intelligence on technology evolution/revolution, nature of various types of pioneering; big; pure; and emerging players, state-of-the-art assessment, etc.These types of technological maps will prove to be a valuable multiplier in R&D and commercialization activities, in various ways including the following:o Developing further insights in response to strategic requirements and policy formulation in the organizationo Forecasting and identifying technological activities and trends in the industryo Aiding in the visualization of alternative development and growth paths available to the organizationo Enabling pre-emptive recognition and action on potential licensing opportunitieso Identifying prospective partners and clientso Identify technology discontinuities and areas of opportunities in their chosen technologieso Monitor and evaluate the technological process of competitors and potential competitorso Support decisions on foray and investment into particular technologies and sub-technologieso Surveillance of technological progress of competitors as well as to alert oneself to new entrants to the fieldo Spotting of white spaces or opportunity areas within a dense technological domaino Creative tool to simulate new ideas and create new IPo Complementing corporate IP filing strategieso Support technology proposals for large scale national and international level projectso Support investment and technology due diligence on companiesPatent mapping can be an integral part of IP management. It can uncover valuable information hidden in patents and can provide useful indicators for technical trends, market trends, competitors changes and technological profile and innovation potential of a company. Patent maps are visual representations of patent information that has been mined and aggregated or clustered to highlight specific features. There is a high degree of flexibility in visualization, which may be in the form of time-series or as spatial maps. We provide a more market and technology oriented analysis of the complete set of patent portfolio assets via our patent mapping services. Patent mapping can be used to ascertain the quality of patents with respect to prevailing technology and the extent to which patents affect the technology. This is a valuable input in technology sourcing/development and R&D decisions. Patent mapping can be indispensable for both firms that have an under-utilized patent profile and are looking to license/assign it at the most favorable terms, as well as to firms that are looking at developing patent portfolio strength in a particular technological field.Mere subject specialization is not enough for this, but analytical thinking and innovations are very essential. Today lots of software resources are available for mapping the patent data, but almost all are confined to bibliographic informations. The machine work cannot be compared with that of human intelligence. Patent mapping requires many skills. First and foremost among these is an ability to understand the complex scientific ideas protected by the patents themselves. Although it is possible to create a patent map by analyzing the relationships between patents without understanding the subject matter, such a map is often useless and needs to be refined by someone who understands the intricacies of the particular scientific discipline that is the basis of the invention. Thus, I expect that the need for people with scientific (and engineering) expertise in the field of patent mapping is on the increase. That’s why today lots of KPO firm are looking for the right individual and there is a huge demand today, which will certainly increase in the near future.
Patents are not new, their presence was noted long back during 16th Centaury. In U.S. at the Constitutional Convention of 1787, a federal patent power was proposed by James Madison and Charles Pinckney and was adopted without debate as Article 1, Sec. 8, clause 8. The history of Patent Law began all the way back with the Constitution of the United States which was specific about providing protection for those who invent new and unique products. But after the TRIPS, intellectual property rights and patents gained importance to the business communities and industries. The retrieval of the patent information was made easy by internet and access to different patent databases. Patent are the source of the technological innovation and detailed mining of patent literature is proven to be useful of the Completive Intelligence.This article attempts to analyze importance and methods for the patent data mining and their future use in the competitive intelligence. The key issues discussed in this article are:a. Importance of the patent data mining;b. Using patent data for competitive intelligenceData Mining is a process of discovering meaningful new correlations, patterns and trends by sifting through large amounts of data stored in repositories, using statistical, data analysis and mathematical techniques. Patents are the most valuable and comprehensive source of the technological information and thus are very crucial for the industries. A very strong patent portfolio and IPR system is needed for a industry to compete the global market. An organization’s patent portfolio forms a critical part of its IP holdings alongside its designs, trademarks, copyrights and trade secrets. Much of the value from a portfolio can only be realized through its effective management. In turn, that requires tools and techniques to help understand portfolio content, how and where this fits in with the organization’s competencies and what the market opportunities are for exploiting the technology owned. There is also a need to identify gaps where complementary technology can be licensed in and identify non-core technology where know-how can be licensed out or divested for financial return. This is the province of patent mining. A clear and effective IP strategy critically incorporates a clear and effective strategy for managing an organization’s patent portfolio.There are several free and paid patent databases consisting of billions of the patent documents. The databases which are free to search the patents are as follows: USPTO, EPO, JPO, SurfIP, SIP, Freshpatents, Patentsonline, etc. Whereas different paid databases are, Delphion, Dialog, Micopat, etc. which also include inbuilt analysis tools.The data obtained form these patent documents can be used for the competitive Intelligence. It is defined as process of discovering “competitor’s” strategic decisions, or of business area characteristics, using quantitative analysis techniques applied to data and information, obtained through legal process, regarding the chosen competitor or business area. Patent searching and analysis is done based on the objective. Patent data can be used for the completive intelligence in different ways as mentioned below:o Theme Search: Theme searches provide the overview of patents related to your field of interest. These searches are helpful to detect the recent trend of your technology area and to establish your R&D direction. As these searches are fully client-oriented, the point of our work and report format is supposed to be various according to your needs.o Patentability Search (Novelty Search): Patentability search is the first step of patenting process. A patentability search surveys patents filed in each national intellectual property office to check whether there exist inventions similar to yours. If you have a plan to file your invention to other countries, this search is essential because the foreign application is quite costly.o Search by keyword (Assignee, Inventor, etc): This search provides the information of patents retrieved by specific keywords including assignee, inventors, or IPC, etc.o Family patent / Legal status search.o Current Awareness Search: This search is to report new development in particular technology or patenting activity of competitors regularly. You can keep in touch with recent technology as well as detect your rival’s R&D achievement and legal status of a particular patent with which you should consider continuously. This search is performed at interval specified by your requirement: weekly, monthly, or quarterly. Category.o Legal Status report – Keep informed the current legal status and expected legal action of a particular patent.o New Patent report – Keep informed the newly published or granted patents categorized in specific technology area defined by your searching queries.o Patenting Activity report – Keep informed patenting activity of a particular assignee or inventor who you are interested in.o Infringement Search: Infringement search is to check whether patent which can be infringed by your product being supposed to launch newly in a certain country exist or not in that country.o Invalidity Search: When you intend to make some claims of a particular patent invalid, the invalid search can provide some prior art references that disclose claims that are infringed by the subject disclosure.o Patent Map (Patent Analysis): Quantitative analysis based on statistical data of bibliographic information (country, assignee, IPC, etc). Qualitative analysis of core patents, Technological road map, multifarious analysis.o Right-to-Use Searches: Right-to-Use searches are conducted, prior to marketing a new product, to confirm that the new product does not infringe on an existing patent or potentially infringe on a patent application.ConclusionThese types of searches are primarily done using the different patent database and are very useful for competitive intelligence in the today’s global prospective. Patent analysis and mining in combination with market research and financial assessment can build up a strong competitive environment for the competitors for the industries.
An applicant for a software patent has a duty to disclose information that is material or relevant to the patent application. This means that if the applicant knows about another invention that is similar to the applicants own innovation, the applicant must disclose the other invention. If the material information is not disclosed and a patent is issued, the patent may be found unenforceable for inequitable conduct.When a patent holder sues to enforce a patent, the defendant will often look for evidence of inequitable conduct in order to invalidate the patent and end the patent enforcement action. Typically this will involve combing through mountains of documents that the inventors or their attorneys had knowledge of in order to find information that could have been disclosed during examination of the patent. If the defendants can find evidence of inequitable conduct, they can escape paying damages for their infringement.The information that must be disclosed is defined by 37 C.F.R. 1.56(a) which states that the information is material if:”(1) It establishes, either by itself or in combination with other information, a prima facie case of unpatentability of a claim; or
(2) It refutes, or is inconsistent with, a position the applicant takes in (I) Opposing an argument of unpatentability relied on by the Office, or (ii) Asserting an argument of patentability.”The danger to patent holders is that disclosure requirements provide a way for an infringer to invalidate an otherwise valid patent. The infringer doesn’t have to show that he didn’t infringe the patent. Instead he need only show that the patentee engaged in inequitable conduct while obtaining the patent. This is a real danger because inventors in their professional activities are exposed to mountains of potentially relevant information. In addition, the patent examination process, particularly when multiple applications are filed in many different jurisdictions, also brings forward much potentially relevant material.The test for inequitable conduct is whether a patent would not have issued “but for” the alleged inequitable conduct. Thus if a patent examiner would have allowed patent claims anyway had he known of information that was known to the inventors, there is no inequitable conduct. This is significant because it is almost impossible for an inventor to disclose everything she knows in her area of expertise with a remote chance of being material. If the test were whether everything the inventor knew remotely bearing on the subject of the patent was disclosed, most patents could be invalidated for inequitable conduct.Patents can still be invalidated for egregious misconduct, such a filing a false affidavit. And patent applicants must disclose all material information. However, software patentees need not be concerned if they do not disclose the many documents that mentions a common software operation or structure used in their invention, but that is not an inventive element or relevant to the patentability of their invention. This is also a great benefit to the United States Patent and Trademark Office, as examiners are spared from reviewing thousands of pages of immaterial information disclosed out of fear that during an infringement action the patent holders will be accused of inequitable conduct if the information is not disclosed.