Patent Licensing

Our aim is to maximize your business potential by exploring the value of your patents and identifying additional patent licensing opportunities. Before you take that critical decision about monetizing patents, we help you understand the potential of that patent. It may be worthwhile to license a patent instead of buying or selling it. We leverage our experience in corporate strategy planning and technology consulting, to carefully analyze your portfolio and recognize potential technologies or patents, where profits can be maximized.

Infringement Analysis

Locating illegal use of your patented invention

Infringement search identifies third-party products that read onto your strongest patents. We look out for potential infringers or companies operating in the similar technology area and analyze their products w.r.t. the claims of your patent. We dig deep into documents such as whitepapers, product datasheets, standards, videos etc., to identify relevant products/standards and prepare claim charts as evidence for infringement.​

Infringement analysis is typically done under the following circumstances:
  • Patent owner wants to identify the parties that are potentially violating the owner’s patent rights: In this scenario, the patent owner is interested in identifying the companies that are active in the market with products infringing owner’s products. Once the potential infringing products/parties are identified, they would be asked to license product owner’s technology, or sued to stop them from exploiting the owner’s patented invention
  • Attorney involved in a patent litigation wants to understand the level of infringement, if any, to assess the damages: In a patent litigation, parties arguing about potential infringement are very interested in estimating the damages associated with the infringement. In such scenarios, attorneys representing both the plaintiff and the defendant may get infringement analyses done separately to check the level of infringement to support their arguments, and to assess damages from their perspective
  • Company releasing a product wants to understand if there is any potential infringement on active patents: Companies typically get a freedom to operate (FTO) analysis done prior to launching a product in the market. In assessing FTO, professionals analyze the relevant patents for any infringement.

FAQs

An unauthorized use of someone’s property without seeking his/her permission is known as infringement.

In Intellectual Property rights, there are four types of infringements:
  • Patent Infringement
  • Trademark Infringement
  • Design infringement
  • Copyright Infringement

The owner or registered holder who has the right over invention/mark can sue for infringement case.

To know about who is using your mark or similar mark you should need to conduct searches over databases. For this you must approach Researcher/Analyst who can conduct IP search for your mark/invention/work.

There are many types of patent infringement. Most common are listed below:
  • Direct Infringement: Making, using, selling, trying to sell, or importing something without obtaining a license from the patent holder is considered direct patent infringement
  • Indirect Infringement: Indirect infringement includes contributory infringement and inducement to infringe a patent. Under these terms, even if a company isn’t the one that originally infringed on the patent, that company can still be held accountable for patent infringement
  • Contributory Infringement: This type of infringement involves the purchase or importation of a part that aids in creating a patented item. To prove contributory infringement, one must show that the component’s main use would be to create a patented item. A generic item that has other uses usually doesn’t qualify in proving contributory infringement
  • Induced Infringement: This occurs when a person or company aids in patent infringement by providing components or helping to make a patented product. It occurs through offering instructions, preparing instructions, or licensing plans or processes
  • Willful Infringement: Willful infringement exists when a person demonstrates complete disregard for someone else’s patent. Willful infringement is especially damaging to defendants in a civil suit. The penalties are much higher, and typically defendants must pay all attorney and court costs if they are found guilty
  • Literal Infringement: To prove literal infringement, there must be a direct correspondence between the infringing device or process and the patented device or process
  • Doctrine of Equivalents: Even if the device or method doesn’t exactly infringe a patent, a judge might find in favor of the patent holder. If the device does basically the same thing and produces the same results, it could be an infringement

Yes, there are companies with which you can obtain insurance against the risk of patent infringement which may help fund the costs of litigation and if applicable, the damages that must be paid out.

Costs include court filing fees and related litigation expenses. In addition to infringement damages, a patent owner may stop the infringer from continuing to produce infringing products

Patent infringement is not a crime, so there are no criminal penalties.

It is a civil matter, and one of the reasons why patent infringement is so common is because the civil penalties are not severe. If a patent owner sues a manufacturer for patent infringement and wins, the redress awarded by the court is defined by law as “reasonable royalties.” In other words, what the patent owner is entitled to is the royalty he would have charged the manufacturer of the infringing product had the manufacturer licensed the patent in the first place.
You can avoid Patent Infringment when selling your providing by doing the following things:
  • Obtain a portfolio of patents and other intellectual property rights
  • Identify the patents in question, and then work around them
  • Buy your components from sources who have already done Infringement Searches as a part of the process, like American vendors
  • Have a clearly defined patent infringement policy and get the infringement analysis done everytime before launching a product in the market

EoU/Claim chart preparations

Detailed claim charts to cite evidence for infringement

We help you make that important decision about patent licensing, acquisition or sale, by carefully analyzing the patent claims, followed by a detailed analysis of relevant products for infringement. We prepare detailed Evidence of Use (EoU) claim charts, with element to element mapping, to indicate how each element of the patent claim reads onto the product features. Additionally, we also analyze technology standards to include patent-to-standard mapping. Our experts have worked on different standards like IEEE 802, 3GPP, LTE etc.

Patent to product claim charts | Patent to standard claim charts | 4-5 business days turn-around time

FAQs

Evidence of Use (EoU) chart is used to define the extent a claim ‘reads onto’ a product, process, and or standard. Detailed evidence of use charts help in licensing agreements, pre-litigation research, and patent transaction opportunities.

Evidence of Use (EoU) Chart helps you:
  • Recognize potential infringement of your existing patents. If you are selling patent assets, proof of patent infringement can assist strengthen the terms of the sale.
  • Identify vertical technology areas or silos. Lots of technologies make use of common subsystems or techniques of getting their means. So, interim patent and product literature studies seriously help in identifying the right target companies. We, at PatentsKart, work closely with you during this significant phase to make out the number and kind of technology silos that set up the scope of your study.
  • Evaluate potential patent infringement analysts work with your specialist and counsel to analysis your patent portfolio and make out the candidates that have a high potential of being an infringer.
EoU charts are typically generated in the following steps:
  • Searching: Every infringement study starts with search and analysis based on the claims of the subject patent. Unlike a Patent Validity Search, EoU centers around patent literature that postdates the subject patent. As patent literature offers the detail that is frequently lacking in the actual product literature, this initial search provides a landscape of competitive and non-competitive companies. On a similar pattern, we perform a direct Google search for the existing products in the market
  • Claims mapping: Using this information, we perform comprehensive searches of product literature, product catalogs, corporate websites, press releases, and more. We recognize products to pair with related patents and generate claims charts. The claim charts map the product literature, product terms, patents, figures, and pictures to the claims of the patent you are studying
  • Analysis: In some cases, products are bought and reverse engineered. For some technologies, we can also make third-party laboratory analysis services to improve your claims charts further
  • The release of results: We carry this powerful body of information in clear, well-organized reports and claims mapping charts

Yes. Whatever your intellectual property management goals may be (defensive, commercialization, or assertion), routine monitoring of the market for potential infringement, and maintaining a set of infringement-indicative claim charts will serve to increase the marketability and transaction probability of your patent portfolio. The first question that most buy-side parties will ask is: “do your patent assets have claim charts/evidence of use?

The key goal of invalidation search is to identify prior art references that are missed during the time of prosecution by the patent analyst which may put into question the novelty or non- obviousness of the references. Many times, language obstacles and non- availability of prior art references from respective national patent office also results in missing of foreign prior art. Thus, to confirm the validity of patent this search becomes mandatory. The purpose of this type of search is also to determine and estimate the strength of the claims that are granted.

A good Validation/Invalidation Search must include:
  • Analysis of Patent as well as Non-Patent literature published before the priority date of the target patent
  • Global coverage of granted and published patent applications published before the priority date of target patent
  • Classification search of patents viz US classification, PCT classification, ECLA classification
  • Mapping of prior art section with claims of the target patent
  • Claim charting of the target patent with the relevant references listed in the search report

Potential Licensee Search

Opportunities for patent monetization

Opportunities for patent licensing lie not only in tracking companies that are illegally selling your patented technology, but also in identifying companies that are operating in a similar technology domain. Such companies that are not already infringing, might be interested in buying or licensing your patents.

Our technology experts will carefully analyze your portfolio and evaluate different technologies to recognize patents worth licensing. These could be underperforming patents or patents that are not aligned to your core-technologies. Accordingly, we locate potential licensee best suited for driving negotiations.

We work with you to strategize patent acquisitions or cross licensing opportunities. We will evaluate your business needs and the growth of the technology of interest to identify technologies/patents best fit for strengthening your existing portfolio. Multiple parameters are used to estimate the value or worth of a patent.

Planning out-Licensing of patents | Strategic business analysis |

Output – Market analysis of top 10 potential licensees