Patent Invalidation Search – Patent Translation

April 4, 2009 by

Invalidation Search is never complete without looking at non-English patents.

Many people face difficulties in analyzing these patents so they never searche and analyze.

If you speak English then you may find it difficult to analyze German patents. BUT we can analyze them using different translation tools, such as

The above translation schemes are used by many people in the industry. So there is nothing new.

However, there is a better translation available by Windows Live.

The best part of this translation feature is that it is integrated in the browser (IE) toolbar. So while you are analyzing/searching patents in other jurisdictions, just by a click of a button you will get their translation in your preferred language.

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Further, it provides a unique interface where the user can see the input and output simultaneously.

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This according to me enhances the speed of analysis. Though, I believe for most people the interface may not make much difference as the main interest is to analyze the translated text and showing the original text may not be useful.

However, this sometimes provides you with new words that can later be used in key strings to obtain patents of other language.

So use patent search in German, French and in any other language you desire. Also, get relevant keywords in other languages to obtain more relevant patents.

Patent Visualization

March 31, 2009 by

XULUS Blog

The following graphic shows us the price of a piece of technology relative to its market penetration over time. As if three variables wasn’t enough, it shows all that for 6 separate pieces of technology relative to each other.

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Landscape Analysis is an art to show the technology on paper

Why being in this field?

October 16, 2008 by

 

Some people want to do things because they are interesting.
Some people want to do things because they work.
Some people want to do things because everyone else is doing them.

www.mysearchstragies.wordpress.com

Invalidation Search – Diversification

October 13, 2008 by

Today I thought that why don’t I diversify my search strategies blog (http://mysearchstragies.wordpress.com) to other areas of IP.

There are lots of areas where we use our strategies to identify hidden data. So from now I would be diversifying the posts in the fields of:

  • Patent Valuation
  • Patent Licensing
  • White Space Mapping
  • Patent Portfolio Analysis
  • Competitive Analysis
  • Landscape Analysis
  • Patent Drafting etc.

This field is so interesting that my mind can’t stop thinking of new ways of doing the old things.

People who love to think, this is the field for you.

ABA Approves Legal Outsourcing

September 26, 2008 by

Well there were lot of people who inspite of an exponential growth in the domain were not believing in it. So here is the answer to all of them:

Legal outsourcing is the practice of a law firm obtaining legal or non-legal support services from an outside law firm or legal support services company. On August 5, 2008, the American Bar Association (ABA) released a formal opinion accepting legal outsourcing as a permissible practice. The ABA opinion supports legal outsourcing so long as there is protection for client confidentiality and preservation of attorney-client privilege.

India is one of the most popular locations for outsourcing administrative tasks related to providing legal services such as word processing, graphics and design, accounting and IT, as well as legal research and advice.

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Patent Outsourcing – Export Regulations

August 5, 2008 by

One more interesting comment on the how to get an Export Regulation that i found as a comment on the blog of the fellow blogger:

Export Control Issues and Patent Process Outsourcing

Every other client we talk to us asks us this question: Is Export Control an issue when filing patent applications for US applicants outside the US? – see Linkedin.

Here’s our answer:

“These are the steps to avoid infringement of Export Control Regulations in considering outsourcing patent preparation to India:

Perform an export-classification assessment in order to determine if the commodity, service or technology about to be exported, i.e., outsourced outside US soil for patent preparation, is controlled for export purposes.

This determination is done in three steps:

1. Determine if the commodity, service or technology is subject to EAR ( Export Administration Regulation) of the BIS ( Bureau of Industry and Security), the enforcement arm of the DOC( Department of Commerce), either by self-assessment of the CCL (Commerce Control List) , or preferably, by filing a CCR ( Commodity Classification request ) with the BIS.

2. Determine if the commodity, service or technology is subject to ITAR ( International Traffic in Arms Regulations) of the DOS-DTC ( Department of State –Directorate of Defense Trade Control ), either by self-assessment of the USML (United States Munitions List) , or preferably, by filing a CJ ( Commodity Justification) with DTC.

3. Screen any parties to the export transaction against the list of US Government’s Prohibited persons, like, the DOC Denied Persons list, the DOC Denied Entity list, the DOC Unverified list, the DOT-SDIE list, and the DOS Debarred Person’s List.

If the patent is export-classified, obtain an export license from BIS or DTC, whichever is relevant. Note that this is not the equivalent of the Foreign-filing license of the USPTO as of now.

For bulk-patents, preferably obtain a blanket export license. Most patents do not fall under these regulations, and an inventor can easily determine if an invention clearly does not fall under export-regulations. Yet, in cases of doubt, it is advisable to go through the additional effort to determine exportability; this is what we always advise our own clients. Even with all that, we keep getting them, because outsourcing is still much cheaper.

There are many companies who are already doing these steps to outsource their work to India. Their legal counsels are very happy with the work done by the Indian engineers. If these engineers would have not been doing this work they would have been instead working in R&D of the same company and inventing themselves. So nobody can question about the quality and technical skills of the people working on patent projects.

Patent Outsourcing – Quality

August 5, 2008 by

In continuation to my ealrier post, I would also like to comment on the fellow blogger who also commented on the quality of the projects done in India:

“I have also heard from some in the corporate world that they know that patent searches done in India are crap, but they are so cheap that if they get a bad search they just pay to get another search done from scratch. Obviously this is alarming if what you are trying to do is actually find prior art. How can you know simply by looking at search results if everything meaningful has been found? Certainly, we can identify crap when we see it, but can quality be identified and results really ever relied upon?”

Amazing. India is already known for its excellent technical skills and knowledge. Based on my experience in IP and the searches that have been conducted by my team, we have been able to invalidate almost 90% patents that have been given to us by US attorneys. I don’t think that should be considered as crap. Our strategies are still counted as No. 1 by Google.

I hope there is nobody in US who can deny the IT expertise of Indians. There have been many big companies that have been founded by Indians in US that are known across the world.

An excellent response by Melanie to the fellow blogger:

“I would like to draw the readers attention specifically to the 10 point bullet post above. This is a correct analysis of the situation.

Gene your own position would come across with significantly more “believability” if you would retract clearly false and inaccurate blanket statements such as:

Quality is crap. Perhaps if you were to admit that in your limited personal experience you have not been impressed with the quality that would not sound to your readers as though this is nothing more than an unjustified “crusade” against outsourcing generally.

You have a definite self interest (you intimated this briefly earlier), given your own “low-cost” US based patent application drafting solution.

The USPTO Notice Ends Outsourcing to India – this is so false, and deep down you know this to be the case. There are numerous technologies that would never fall within the remit of the EAR or appear on the CCL. I would not be so arrogant as to suggest that there are also not numerous technologies that are caught by the regulations, so why can’t you admit that your blanket statement is also incorrect?

Why don’t we all keep things in perspective, thank the USPTO for reminding us all about our requirements, and go about our daily business?

Once again I assure every single reader of this blog that the revenues generated by the Patent Outsourcing to India industry will significantly increase in 2009 as compared to 2008. As and when this happens I expect all of you who have forecast the death of this industry to come on here and publically eat your humble pie!”

Can we now stop misinterpreting these things.

Patent Outsourcing

August 5, 2008 by

These days I am reading a lot about Patent Outsourcing and the new notice issued by USPTO. What I am not able to understand is the uproar that the new notice has made in the community. Nobody has tried to understand the right situation and instead people are interpreting it in different manners, as done by few bloggers.

I was aghast when I looked at the posts from these learned individuals. I would like to quote one paragraph from the blog:

“Outsourcing has be going on in the open in the patent area for at least 5 or 6 years without anyone raising any issues. For a long time I have thought that all of this violated the EAR, but no one seemed to agree with me. I personally think strict interpretation of the EAR is going to prevent the exporting of not only the preparation of patent applications but also the outsourcing of patent illustrations and patent searches. This is because the EAR specifically prevents the sending abroad of any information relating to technology that has been developed in the US. The way I read the EAR there is no patent application exception that would save outsourcing. There is a patent application exception, but it relates to the sending of information from the US outside the US for purposes of obtaining a signature by an inventor not located in the US. There are other patent application exceptions, but these apply to published applications. If you look at the EAR the primary exceptions relate to publicly available information and scientific information that is normally shared within the scientific community. Given that patent applications by their nature need to apply to inventions that are not known to exist previously and because the outsourcing would occur before filing (i.e., well before the information would be publicly available and/or published) in almost all situations there would be a prohibition against sending information related to proprietary information overseas, thus killing patent related outsourcing.”

The above paragraph clearly states that EAR would stop outsourcing. This is completely wrong. There is a very beautiful explanation that has been given in the same blog from a very learned individual who try to clear the misunderstsanding of the fellow bloggers and other lawyers in the community:

Let me get this straight. Export control becomes an issue only in very small numbers of very specialized cases; cases which will probably never be outsourced to India anyway.

why, then, is there such a hullabullo about it?

similarly in client confidentiality measures: the san diego bar opinion on this issue was given because, apparently, an indian lpo put some sensitive client material on the net because said client refused to pay up for services rendered.

that could very well have been done by an US attorney.

so why is the indian lpo industry being chosen as the main threat to US client confidentiality? what can I really do by disclosing the name of some defendant in some case somewhere in the ninth circuit? how can i gain from it? why should i bother?

is this another example of a paranoia whose roots can be traced to an anti-globalisation group?

what arrant hypocrisy!

=======

Gene Quinn Says:
July 30th, 2008 at 5:33 pm

Implying or stating that US export regulations apply only to a small number of inventions is simply wrong. If actually enforced as written and as the United States Patent Office has recently informed US patent practitioners, outsourcing of patent related preparation to India or any other country has come to an end. You simply cannot export proprietary technology outside the US without a proper license or exception.

=====

Dear Mr Quinn,

Thank you for your comment. I had the opportunity to go through the article that you have recently posted on your website. I also had a look at the BIS website and the EAR, and here are my thoughts:

1. Not all patents that have been filed become “publicly available.” There are classified patents, which, due to various security reasons, or otherwise, can never become public knowledge.

2. But most patents, once filed, become public knowledge and their documentations can be sent outside the US. see http://www.bis.doc.gov/deemedexports/deemedexportsfaqs.html#14

3. Therefore there exists a certain difference between patent information that is kept secret and patent information that becomes public knowledge. This difference is in their dual-use capabilities, or lack thereof, or possible defense uses, or lack thereof, or their relation to prohibited exports like encryption technology, high-performance computers etc, or lack thereof.

4. This difference is determined at an individual level, and there are very precise methods of performing that determination. see http://www.bis.doc.gov/licensing/exportingbasics.htm

5. BIS does not regulate the process of this determination, but has an enforcement and compliance wing in case what an exporting entity determines turns out to be incorrect.

6. There is nothing the present author could discover in the entire legislative literature which prohibits export of information pertaining to patent application where said patent would not, once granted, fall under the various export regulations.

7. This makes sense too. It is the prerogative of the inventor to determine, as an honest US citizen, if exporting his invention information will harm his country’s security interests. If, after careful determination, following existing methodology, an inventor determines that the new method of producing macaroni, or disclosure of the new health food made out of south east Asian fiber extracts, does not harm his country’s security interests if exported, why would he not consider saving money by outsourcing part of the patent process? If some American lawyers are loosing jobs through outsourcing, some American inventors are saving a few hard-earned dollars, too. And it is hard to throw macaroni and bring down a building.

8. As to the comment about India’s poor work-product in re US patent work, I have only to say that if all the Indian scientists, professors, managers, software experts, professionals, governors, senators, businessmen, writers, and even grocery store owners left the US shores this fine evening, the US would be a much poorer country indeed with regard to its intellectual assets.

9. Lets not, therefore, make hasty comments about a nation’s intellectual acumen by looking at a few baser instances. If a large number of US citizens are being benefited through LPO/PPO, a very contrary note in a register will probably not be able to stop that industry. Free market is a very realistic concept, and mindless entrenchment paranoia will perhaps not find much of a foothold against the onslaught of such reality.

10. Finally, I appreciate the moderator’s publishing comments which are admittedly un-supportive of the industry. That is how free speech works, and a free market is not an altogether different concept.

Patent Rexamination Search

July 25, 2008 by

Lots of first time inventors and people used to asked me that what is the trend for re-examination? How many applications get clear at one go? and how many faces some friction? etc.

I tried to do some statistical analysis myself but fortunately landed on to Dennis Crouch blog where he had already done this analysis. So I thought of referring to it:

Outcomes: From my sample, 71% of the completed reexaminations resulted in claims that were either amended or cancelled while only the remaining 29% resulted in all claims being confirmed. A much smaller number – 12% – of the reexaminations resulted in all claims being cancelled.

So here you can calculate the probability of your claims being changed.

Suggestion: Do a thorough prior art search before finalizing the set of claims for filing. This not even reduces the chances of amendmends but also reduces the timeframe of examination and grant.

Reformed PCT System

July 23, 2008 by

Workflow of Patent Cooperation Treaty

PCT

There are lot of people who are generally confused about the workflow of their patent if they go through the PCT route, so I thought of finding out a visual timeline view for them.

More about the national filing could be read here>>

Keep the 30 months time period in mind:

The national stage requirements are due not later than at the expiration of 30 months from the priority date.

Happy PCT.


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