Patent Portfolio Management

I’ve seen docketing systems missing lots of basic checks that can be programmed in a day. For instance, I’ve experienced IDS filing systems that do not check if cited references are in sync with [...]

“At the end of the day I can get the work that I need, but if I would have done the work myself, I would have done it differently.”, relatable? This is the problem that some of the best in-house [...]

As a researcher, What is one of the biggest challenges faced by you in your organization? We asked this question both internally and to some of our clients and here’s one of the most common [...]

In recent years, Standard Essential Patents (SEPs) have been the hot topic of interest for the R&D-Sales and Marketing departments of various companies.  After all, confirming the patent as [...]

If I tell you, you could customize your internal patent tools with additional information, do you know the kind of possibilities it can open up? Depending on the tool and the customization, you [...]

Are you an IP counsel who is looking for tools for handling various facets of your job – Be it patent prosecution, litigation, monetization, or patent portfolio management?  If yes, this article [...]

Do you use Salesforce in your organization? If yes, this write-up is for you. Excuse me for starting the article abruptly, but I don’t want to waste a second and directly jump on to help you with [...]

How do you tell apart an abstract idea from another? More importantly, in this post-Alice era, how do you identify patent abstract ideas which determine the subject matter eligibility for claims? [...]

Before you go running to the patent office to get a patent, there’s a lot you need to know. Getting a patent is not as simple as getting a copyright/trademark, it’s much complicated, [...]

To stay operational in times like this — when the Coronavirus epidemic is forcing offices to stay shut — is a challenge of unprecedented magnitude for all firms, big or small. [...]

Does the idea of getting approximately 7.2 times the return on investment OR reducing legal spending by 20% OR saving 28% (80% in a few cases) in contract reviewing time appeal to you? If yes, [...]

It was the onset of the new millennium. Three different entities- a cardiologist, a university, and a non-practicing entity (NPE), at three different points of time, committed a similar mistake [...]

How much does a patent cost in … the US? Canada? Europe? China? Japan? South Korea? India? All right, one can always Google and find the cost of filing a patent in each of these countries. But [...]

In the previous article of this series, we talked about the need for an IDS management system. We focused on various problems and solutions related to IDS management our clients discussed with [...]

Information Disclosure Statement (IDS) puts a heavy administrative burden of ‘Duty of Disclosure’ on IP professionals, both in corporations and law firms managing US patents. This duty to [...]

You might agree with me when I say that Terminal disclaimer calculations are confusing. Terminal Disclaimers are known for tangling the already tangled expiry date calculations. In the last [...]

For big companies with active R&D departments, keeping track of the many thousands of individual patents that often make up their patent portfolios frequently represents a daunting task, the [...]

Talk of budgets and the very first question that comes to the mind is — Given a certain amount of money, how much should be allocated to various expenses?   Should you abandon few patents from [...]

The patent world has changed a lot over the past couple of years. Critical court decisions and an increasing number of patent invalidation have made patents complex, harder to grant, and [...]

At GreyB, companies often approach us with the broad objective of having us help them strengthen their IP position. It’s a challenge that incorporates elements of the three core IP research [...]

The utility as well as the supply and demand of IP has seen a significant shift in the last decade and so has the way leading companies are viewing IP. A decade ago companies wielded IP more as a [...]

Imagine you’re in a meeting or making a presentation to a prospect/client, or are in an important meeting with your boss and other senior executives, and all of sudden, you’re asked a question [...]

You are an inventor. You have with great efforts secured a patent which has cost you a good quarter of your bank balance. You want to make the most out of your newly granted patent and decide to [...]

This article, authored by Shikhar Sahni, first appeared as a guest article on IPWatchdog.com Patents, for a long while, have been an integral part of the business development strategy. Companies [...]

While working in the IP industry, I got a chance to work with a lot of corporate patent counsels from SMEs to Fortune 500. I learned that the job and responsibilities of an IP counsel are way [...]

Digital Equipment Corporation, once a leader in the computer market for decades does not exist today. Why? Because they failed to grasp the trends. Instead of continuing in the direction of [...]

Running a successful organization is not an easy task. There are multitudes of goals to track, competitors to beat and a product line to build and protect to survive in the cut-throat race. [...]

Would you believe me if I said patent abandonment strategy of companies like Delphi, Hewlett-Packard, and Xerox have resulted in the loss of millions of dollars for their respective [...]

Joe is the owner of an IP law firm. His firm is popular among clients for his smart prosecution strategy. His clients claim that he understands the minds of examiners at the PTO and is well aware [...]

Technologies, nowadays, are so dynamic they often overlap multiple fields and application areas. For instance, virtual reality, a branch of computer technology has applications in healthcare, [...]

We all know that studying patent citations can reveal a lot of insights – Be it understanding the strength and potential of a patent, or figuring out the strategies being followed by companies. [...]

Have you ever wondered how Apple, Samsung, and Microsoft emerged as market leaders, despite having thousands of competitors in the technology domain? The popular notion of their success is [...]

Did you know that licensees pay huge licensing fees for Standard Essential Patents (SEP)? Unfortunately, not all those patents qualify for the criteria of being a SEP. Hence, in many licensing [...]

NuCurrent Inc., a Chicago-based wireless charging equipment manufacturer earns millions in patent licensing every year, its licensees including the likes of Apple and Motorola. Did I mention they [...]

A couple of decades ago, patent portfolios were considered to be one of the most indispensable assets of an organization. It was the time when quality was given more importance and filing patents [...]

“It is great to be the owner of hundreds of patents, but it is not a simple task to obtain and maintain these patents.” – Legal Counsel at an Inc. 5000 Company The cost to file patents is an [...]

Corporate leadership is squeezing IP budgets across the country. This impacts both staffing and overall IP creation efforts. In-house IP management is being asked to file more applications with [...]

Before we move ahead to the topic – importance of checking patent strength, for the uninitiated, here is a definition of the term: What is patent strength? Patent strength, in simplest terms, [...]

The gist of the verdict: Claims having a mathematical formula or an application of laws of nature are patent eligible if they improve a particular process. If you don’t know, the Joint Strike [...]

IBM received more than 8000 patents last year but at the same time, they also abandoned more than 4000 patents from their portfolio. For the last few years, their patent grant to lapse ratio has [...]

Imagine the world where you’d be clicking pictures on your Kodak DSLR and uploading them on Instagram with hashtag #KodakMoment while checking comments on the post on your revolutionary [...]

By the time the Alice decision marked its second anniversary, more than 8400 applications got abandoned while 60,000+ applications got rejected due to the decision. The district court decisions [...]

Back in the early 1980’s, I used to watch the BBC show “Danger UXB”. For the uninitiated, Danger UXB chronicled the post-war exploits of a British bomb disposal unit called to defuse and [...]

Having a sound prosecution strategy is as exigent to the growth of a portfolio as is the necessity of a sound patent strategy for the development of a business. And like every business has its [...]

Someone not so famous once said — If something helps you get better, leverage it. The “it” varies from person to person, based on needs and priorities. For IP counsel, one such “it” could be [...]

The Alice v. CLS Bank has had a tremendous impact on how the patent office treats applications for business method inventions. Indeed, since the Supreme Court’s decision in Alice, the allowance [...]

A few months ago, there was a post on LinkedIn by a renowned IP strategist expressing her repugnance on the falling quality of patents being drafted by IP attorneys. In her words, Just had to [...]

The beauty of a crown is enhanced by its jewels. The gold, no matter how pure, just gives structure to the crown. It is the precious stones that make a crown, a crown. The same applies for a [...]

Corporations continuously invest in R&D to maintain their competitive edge. A good portion of this investment further goes into building a patent portfolio that helps the company in a number [...]

Have you ever thought how much does a single patent actually cost? Of course, it’s easy to calculate the average filing and maintenance cost of a patent but here I’m discussing the actual cost [...]

Surviving in this cut-throat business era is not an easy task. It takes a visionary whose thought process and efforts can take a small concept to a great success. Faster is not faster if everyone [...]

Chess, when played beyond a basic skill level, is not a game about pieces; it’s about reading your opponent. This saying is very much applicable to patent prosecution where each written has an [...]

Joe is an inventor. Like most inventors, Joe has worked obstinately and carefully towards designing an invention which he believes is going to revolutionize the world. Joe wants to claim the [...]

Getting a patent application granted on the first go is a rare phenomenon. According to statistics, of all the patent applications received by the USPTO, over 90% are initially rejected. Thus, [...]

After several years as a commercial litigator, a few more years with a prominent IP (intellectual property) firm in Washington, D.C., I spent a fair amount of time as in-house patent counsel to a [...]

Stephen King once said, “Good books don’t give up all their secrets at once.” Some books are written in such a way that the more times you read them, the more secrets you uncover. One of those [...]

The recent verdict of Motio Inc. vs. Avnet Inc. has come up as an accurate example of bypassing invalidation based on the Alice decision. Background – Avnet challenged Motio’s U.S. Patent [...]

Claiming what you haven’t invented can get you a patent granted. Surprised? Well, this could be true. Want to find out how? Read on: First of all, let me shed some light on what a Negative [...]

Do you know how smart devices work? They do many things even before you instruct them to do so. For example, Google Assistant can set a reminder automatically after reading your email about [...]

Over the past few years, the Patent Office has taken multiple initiatives – Track One examination, Accelerated Examination (AE), Full First Action Interview Pilot Program, and Patent [...]

In a lawsuit of 7 patents, Apple passed a motion asserting 2 of Ericsson’s patents as invalid based on 35. U.S.C.§ 101. In the light of Alice ruling, Apple stated that PROTOCOL patents are [...]

Innovation often starts with a “light bulb moment”. One works on their idea and then from idea, s/he moves to invention, and in the end to a patent application. Thereafter it’s up-to [...]

An examiner of USPTO hosted an AMA (Ask Me Anything) session on Reddit where he and Reddit users discussed multiple patent-related topics. For the uninitiated, AMA or Ask Me Anything is a feature [...]

Alice Corp. v CLS Bank is fast becoming a landmark decision for patent analysis in the United States. Many applications are being rejected by examiners based on 35 U.S.C. 101 rejections of the [...]