If you have been searching for a comprehensive guide on how to conduct a patent search, I would like to congratulate you because your search has just ended. This is your one-stop solution where [...]
Intellectual property, especially patents, are one of the most important intangible assets of a business – especially the ones that sustain majorly by inventing and innovating. Given that [...]
There are a hundred different ways to perform a patent search – You can perform it on a commercial or a free patent database. You might choose a conventional way or go totally out of the league – [...]
The choice of patent databases highly depends on the motive beneath it, or in other words, the type of patent search involved. For instance, for a prior art search that is for current litigation, [...]
Recently in March 2021, Intel Vs. VLSI made the news when the Texas court asked Intel to pay $2.18 billion to VLSI for infringing two of their patents. The amount was the second highest patent [...]
Changes in the global economic environment have influenced the development of business models where IP is a central element establishing value and potential growth. With IP playing such a crucial [...]
So, you’re here. You probably want to sell your patents, or maybe you are looking to buy more. Whatever the case might be, you landed on the right page. A lot of our clients find themselves in [...]
You (or your company, for that matter) are working on developing a product. A result of a ton of brainstorming, a dozen or more presentations to senior management, and a couple of approvals [...]
As a litigator, you love killer prior art, don’t you? But sometimes you have to make do with 103-type if you are in the US. The sound of 103-type just made you sigh, didn’t it? It is justified [...]
The patent system that exists today in the US is a result of multiple decisions and verdicts that shaped the course of history for patent laws. Some decisions were minorly significant, while [...]
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? [...]
Joe came up with a great name for his soon-to-be-released product. He is proud of the selection and cannot wait to share it with the world. In this moment of excitement, he makes plans to move [...]
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 [...]
Any Tom, Dick, or Harry (pardon the cliché) can conduct patent searches using Google Patents Search, Thomson Innovation, or Orbit. It takes a power user who is skilled in the art of searching on [...]
If you are planning to conduct a Google Patent Search and want to try your hands on Google Patents, you landed on the right page. This is one of the most comprehensive guides ever written on the [...]
“I have always imagined that Paradise will be a kind of library.” ― Jorge Luis Borges I’ve heard this quote many times, yet hadn’t felt it until now. Recently, I was analyzing the stats of the [...]
“My client wants a fresh search on a patent about LED substrates” emailed an attorney – our repeat client – on a Friday. “Of course, we can help you as this is relatable technology”, [...]
“I don’t know what else I can tell you, it seems nothing good exists,” said the attorney on a conference call. This conversation took place during one of the interim connects in the project [...]
Mark (Amused): How did you do it? There isn’t a single strategy that fits, I’ve been spiraling down and folding back with every other search partner. Aadesh (Me): Feels like an endlessly [...]
Almost every day, multiple patent litigations suits are filed. The increasing frequency of these cases indicates companies are now more inclined to stop competition or get value over their [...]
Imagine a situation where you are collating a patent portfolio for monetization or there’s a plan to acquire patents. This is like investing in gold or platinum, sort of a difficult call, isn’t [...]
Like trial transcripts, birth certificates, and property deeds, patents are supposed to be freely available to anyone interested in reading them. And officially, they are: patents are a matter of [...]
When it comes to prior art searches, among the huge list of resources and strategies explored and employed during the search, searchers generally tend to give a low priority to already cited [...]
In our years of performing invalidation searches, there were often occasions when we found inspiration for prior art from the environment around us. There are way too many to link each of them, [...]
Here at GreyB, we, the editorial team, have an intense love for stories. We try to keep the storytelling animal inside us always at work – be it for sharing relevant strategies with the help of [...]
An attorney fighting a litigation suit is not unlike a soldier on a battlefield. The soldier equipped with sniper or high-tech weapons could give a deadly blow to the enemy, however, that’s not [...]
In the US, while presenting a piece of non-patent literature (NPL) as a valid prior art, the litigators have to overcome challenges of proving that the NPL was publicly accessible and that the [...]
Old times were simple. There was a plaintiff, who tried to sue a company, and then the company asked us to find some good prior art. We logged in to simple patent databases, many of which were [...]
In 2016, a major Chinese smartphone manufacturer came to us with a problem. The company was being sued by a competitor, also based in China, for patent infringement, and they would soon have to [...]
In 2017, we were approached by an attorney representing a large manufacturer of digital and analog computer chips that we’ll call Chip and Dale Corp. The company had recently been contacted by [...]
If you are a person who deals with design patents, then we have written this article for you. This article highlights how conducting design searches using Google Image Search feature could throw [...]
Have you ever been in a situation where your IPR got instituted, but the PTO declared the challenged claim as valid? If a challenged claim(s) is declared valid by the USPTO in IPR, and later a [...]
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 [...]
Many a time, even after multiple rounds of searches – in house, from the client’s side, and using vendors – leads to no results. One reason it happens because the winning prior art is [...]
We received a freedom-to-operate search from John, a decade-old client of ours. We share a pleasant relationship where we could discuss our concerns and requirements straight away. John was [...]
Claim charts play a crucial role in litigation. The strength of mapping can become a deciding factor that could turn the balance of the game in favor of either party. However, it ought to be [...]
If you’re looking to understand everything about prior art search, you’ve landed on the right page. By the time you’ll finish reading this guide, you’ll likely have built a solid understanding of [...]
Patent infringement has become a lot common in the past couple of decades. With increased interconnectivity among technologies and the existence of thousands of patents covering them, it has [...]
In the US, litigation costs anywhere around USD 3-4 Million, with damages awarded, on an average being 8.9 Million USD. The highest award till date being $2.54 billion. As I was reading through [...]
How difficult is it to find a solution to a problem you know nothing about? Difficult? Very difficult? Preposterous, you say? No, we are not being ludicrous. Though less often, there are [...]
Have you come across a situation when the search vendor you hired returned with a report concluding “no reference found”? There could be multiple reasons that your vendor returns with such a [...]
The patent set was already exhausted. Searching on standards for hours started feeling like inside of a spiral that keeps tightening as you go down. In between, some references emerged undeniable [...]
Not all prior art searches are run equally. Some are complex, some are easy, and some test your temperament by pushing you to the dark abyss of self-doubt where you question your abilities and [...]
In IP law firms, partners often face the daunting responsibility of building and implementing a business development strategy for the firm. These ‘Business Development’ (BD) activities are highly [...]
This is the third article of a 3 part series on Smart Business Development Strategies for IP Law Firms which discusses how to use data to build more clients for your IP law firm. The first [...]
This is the second article of a 3 part series on Smart Business Development Strategies for IP Law Firms which explains strategies to get more business from existing clients. The first article [...]
This is the first article of a 3 part series on Smart Business Development Strategies for IP Law Firm which discusses how you can spot your differentiation factor. The second article in the [...]
Breach of contract, unfair competition, and willful patent infringement – The very terms predominant in the complaint filed by wireless manufacturer Zomm against the Cupertino based tech giant. [...]
After a long and hard day at work, I like to come home to a steaming cup of coffee, with toasted marshmallows on top, chocolate chip cookies on the side and some entertainment source to get my [...]
“Not today!” – I groaned as I woke up and saw the clock beside my bedside. It was 8:15 AM already and I had only 45 minutes to get to the office. I couldn’t afford to get late as I had a client [...]
Are you a law firm or an independent attorney who is in search of some out of the box ideas for client acquisition? If Yes, Congratulations! You are at the right place. Without wasting any time, [...]
I’m going to enforce my patent rights” said Joey to Ross. Joey and Ross, both inventors and long-time friends had met for drinks in a nearby pub. Recently, Joey had been struggling, mainly [...]
Drones fascinate me. They are wonderful tools of entertainment and transportation and has so much potential, which, if fully explored can change the way mankind transports. Technology companies [...]
I was leaning in my chair while watching those bees through the steam of my coffee. They were four in number, flying from one plant to another, from one flower to next, collecting the sugary [...]
Prior art can be found in a lot of places. Some conventional, others unimaginable yet a valid source of prior art – the unconventional one. As analysts, we are tuned to exhaust the conventional [...]
NuCurrent has been very active in providing wireless charging solutions since 2009, which were commercialized in 2012, while Samsung introduced a wireless charging kit as an add-on to the Galaxy [...]
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 [...]
Understanding the objective of the client goes a long way in customer satisfaction and retention. At GreyB, we are huge believers in fulfilling the objective of the client – rather than [...]
Invalidating patents is hard. Invalidating a standard-essential patent (SEPs) is even harder. SEPs claim technical solutions that are part of industry standards. Needless to say, they are much [...]
We find prior art in a lot of unconventional places. Sitcoms, Pop culture magazines, FCC ID databases, Internet archives – Well, almost every place where you would least think of finding prior [...]
The purpose of a patent validity search is to validate the enforceability of claims of a patent. If you a plaintiff, a patent validity search will help you know if your patent is going to survive [...]
You would have handled cases where you gave the same search to multiple firms and only a handful returned with the art that you were looking for. Why is it that some search firms find the right [...]
I’m a self-confessed fan of sitcoms and movies. A binge-watcher by nature, I often spend weekends endlessly staring at my laptop screen, with munchies on my side, so that I don’t have to hit [...]
What exactly is the objective of an invalidation search? That’s an easy question. Of course, it is to find a result – one that discloses every aspect of the patent in question (Called as Tier I). [...]
During the course of the past decade, We have worked with various IP counsels, and figured that their strategy towards freedom to operate search can be classified into two major categories – [...]
As 5G technology is approaching realization faster, a surge could be noticed in the patent filing activity by telecom companies. China is at the forefront, in terms of filing numbers, as major [...]
“I don’t want to give a report with zero results to the client.” It was a beautiful, cold October morning. I was sitting at my desk sipping my latte when I received a mail in my [...]
James, a renowned Intellectual Property attorney from the US, works with IP search/consulting partners for assisting him with patent analysis. These IP partners perform analyses like patent [...]
Whether a corporate or a law firm, it relies somewhat or more on different search vendors for IP related searches. Generally, they have to be choosy and pick one or two good search vendors (out [...]
Prior art search is a big part of the work we do. When we started, we were convinced that prior art searches should never be run with a set framework where only the following few defined steps [...]
On May 22nd of 2017, the Supreme court of the US issued its landmark ruling on TC Heartland LLC V Kraft Foods, the decision being credited to have changed the law on venue for patent cases. Few [...]
IP House, a research group of 30 IP professional set up in 2014, analyzed 5022 out of 5432 cases handled by the Beijing IP Court, one of the three specialized IP court of China. Out of these [...]
Visual Memory sued NVIDIA for infringing its US5953740 patent. NVIDIA in a response filed a motion under Rule 12(b)(6) which was granted by the district court. The district court scrutinized [...]
On 8 June 2016, following a proposal from the European Commission, the European Parliament and the Council adopted a Directive that aims to standardize the national laws in EU countries against [...]
Invalidation searches are not a cakewalk. That’s why a lot of time many prior art search service providers or your in-house team fail to return with a result you needed. Weak results or no [...]
At the end of the day, how well do we know our customers, is something that does matter. And, it feels awesome that yeah we do understand people we work for. The last week of August turned out to [...]
Often in business, you need to outsource certain tasks to an external vendor – either a freelancer or firm specialized in your vertical. Coming to the decision that you need to outsource a [...]
You will agree when I say it’s not always the hard work that leads you to success. Experience plays its sweet role by equipping you with abilities to make decisions that optimize and [...]
“Searching prior art is not a process, it is an art.” In my 6 years of experience, I have been a part of ~250 patent invalidation processes. If it has taught me anything, it is that there are [...]
US9320716– An apparent sword in the arsenal of Cosmo Technologies -a subsidiary of COSMO Pharmaceuticals- has been on the battlefield a lot, lately. This weapon of choice, both individually [...]
“Tis’ the era of outsourcing!” And there’s nothing particularly wrong with it. Especially in the case of In-house counsels and Patent Attorneys trying to find prior art to save their client’s [...]
Ask a bunch of patent counsel how do they feel about performing a Freedom to Operate study, and you may hear a collective groan from the whole group. No doubt – performing an FTO is a cumbersome [...]
Of late, we have been performing a lot of invalidation searches on patents of 4G LTE. And I noticed a weird pattern – call it insight if you would like to – that I didn’t discover earlier while [...]
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 [...]
Recently, McCain filed a complaint in the court of Northen district of Illinois alleging that J.R. Simplot used its patented designs USD720916 in its Sidewinders product(as shown below). You [...]
I am very fond of Nokia and its products. Mostly because I feel they have made a huge contribution in developing various 3GPP standards. So when I found out that Blackberry was suing Nokia [...]
“Patent trolls are bad for business.” “Patent trolls hurt innovation and US economy.” “Patent trolls are a threat to competitive markets.” “It’s time to kill patent trolls for good.” You have [...]
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 [...]
Race of finding better prior art that can influence an IPR or patent litigation is the need of the hour. Such searches have become increasingly important in recent times, given the huge increase [...]
On December 1, 2016, Visual Effect LLC filed a lawsuit against NVIDIA Corporation for infringing two of its patents US8864304 and US9167235– for which it demanded a trial by jury. Filed in [...]
Do you know that nearly one-third of the patents involved in litigation were found to be invalid? Well, if you feel this number is high then you will find it difficult to accept our belief – We [...]
Seems like Christmas came early for Samsung! Last week, a landmark ruling in given on one of the most popular patent battles between Samsung-Apple on writ of certiorari to the United States Court [...]
Recent affirmation of an Examiner’s rejection by Patent Trial and Appeal Board (PTAB) in response to an applicants’ appeal (2013-007847 – Ex Parte Randal C. Schulhauser) seem to open a new door [...]
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 [...]
Since 2013, there is one company of bodybuilding supplement industry that has been making rounds in many IP blogs. It has earned some accolades from the industry like the third most litigious [...]
Have you ever had a case where you had to perform an invalidation search and you need a prior art for a claim at the heart of which has a mathematical expression? Needless to say, you wouldn’t [...]
Patent thickets, broad patents, and patents covering vague and combinatorial claims have exponentially increased in number over the past few decades. Cloaking under the name of patent strategy, [...]
The main drawback of the patent system is that it only gives a patent holder a right to exclude without any provision to help them detect patent infringement. It is left on a patent holder to [...]
Organizations, to turn their future for good rely on big decisions. However, more often it’s the small decisions that matter the most. Nearly 100,000 U.S. patients are killed every year by the [...]
With the passage of time, technological terms have evolved drastically. Earlier phones were called radiotelephones, later as mobile stations and now we use term user equipment. Did you also [...]
Have you ever found yourself in a situation where a product was infringing on your patents? But you could do nothing as the product was designed around to avoid infringement? More often, we come [...]
In 2005 the Intellectual Property Owners Association (“IPO”) conducted a survey of its members on the subject of patent quality. At that time, more than 50% of responding IPO members felt that [...]
Do you also believe that a patent protects your invention? Well, Sorry for bursting the bubble but it’s a myth. 90% of patents are valueless and couldn’t be defended. A patent only gives [...]
One of the major challenges faced by a patent licensing manager is to find and prove evidence of an infringement. Not so strong evidence of the use chart can become a standalone factor for the [...]
Failure testing, Statistical control, Total quality management – There isn’t a dearth of approaches followed by Quality Assurance teams of organizations. No doubt, these approaches have proven [...]
Whenever one gets into a problem, the right thing to do is to identify and apply the best solution. However, one can’t decide if a solution is best unless it is compared with other available [...]
Encompassed in beautiful alpine ranges, Germany – the second-largest country in Europe – boasts not only of scenic beauty but is also an important hub of innovation. Home to major pharmaceutical [...]
After traveling together on a long road for 43 years, on 19 Feb 2013, the 25 member states signed a deal to end the regime of the “bundled patent” system by setting up a Unitary Patent Court in [...]
Traditionally, the Australian economy has been highly dependent on mining operations and farming. Although consistent innovation is happening in the mining sector, the other sectors are being [...]
In today’s consumer-centric world, satisfying a clients’ needs is the primary goal of any company. When it comes to prior art searches, there is only one thing that can satisfy a client: a [...]
Every day, as we take a step at making our life more digital, we facilitate digitization of our knowledge. Hundreds of documents, on a regular basis, are getting scanned, listed, indexed and made [...]
Are all prior art searches equal? No. Some only apply to the United States. Some will also include foreign patents. And others will include searching for non-patent literature. As the focus of [...]
Time and again, the prior art searches we conduct teach us new lessons. These lessons not only help us add new rules to our little black book of prior art searching but also point us to the true [...]
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 [...]
You may attest to the fact that a lot has already been written and discussed on the importance of searching in non-patent literature when performing a prior art search. However, not much (almost [...]
But there’s a catch. Patent research is not cost effective for many businesses and they prefer ignoring it. As it doesn’t fit into their budget, they tend to go for low cost solutions. This [...]
I love patent search, not because I’ve expertise in the area or I find them easy to conduct, but because it helps me to make my contribution in making the patent world unambiguous. I get an [...]
How do I find a hidden prior art? – Doesn’t this question bug everyone when we conduct an invalidation search? While some of us try new strategies to excavate one, others explore patent [...]
When we talk about the region having innovative and successful countries, the list can’t go on without having Mideast on it. Apart from a major source of the world’s crude oil and petroleum [...]
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 [...]
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 [...]
OBJECTIVE The patent under study was related to a cigarette filter having gas adsorbing material and certain specific composition requirements. Our objective was to invalidate the patent [...]
We received a request from a client to invalidate a patent that is related to the concept of a random access procedure. More specifically, the patent was talking about a specific equation. [...]
OBJECTIVE The patent that we received from the client was related to Wireless communication and covered the process for handling lower priority communication traffic. STORY This time, we thought [...]
OBJECTIVE: We had to invalidate a patent related to an audio player that had one important feature. Also, the client wanted to make his position stronger in the Inter Partes Review. STORY: This [...]
