Patent Search, Patent Searching, Leading IP Search Firm, Patent Watch, patent Drafting, Patent Filing, Patent Lanscapse, Online Patent

  • 1. General

    1.1 What is Prior Art?

    *The prior art for a patent application is any publicly available information (in any form) that is published before the filing date of the patent application.

    Prior art can be of two types:
    Patent Prior Art: - All patent literature (patent applications, granted patents, expired or discarded patents) published anywhere in the world
    Non-Patent Prior Art:- Any publicly available information, including technical journals, websites, products, conferences, etc. The information may exist in freely available sources or in commercial databases
    Note: Unpublished patent applications, which are not publicly available, are not considered as prior art until they are published.
    1.2 What is an Assignee?
    Under US laws, the ownership of a patent or patent application initially lies with the inventor. The inventor can assign ownership rights to an entity, referred to as the "assignee". Typically, an assignee is an organization that may have employed the inventors - or at least compensated them in some manner - when the invention was conceived/ reduced to practice.
    1.3 What is an Office Action?
    An office action is a communication from the patent office examiner to the patent applicant, which objects to, rejects or allows at least one claim in the patent application.
    1.4 What is a File History (or File Wrapper)?
    A file history is a collection of documents maintained by the USPTO, which includes the patent application and the official communication between the applicant and the USPTO with respect to the patent application (including the office action). The file history can be ordered from the Patent Application Information Retrieval (PAIR) system in the USPTO website.
    What is a Request for Continued Examination (RCE)?
    An applicant who gets a final rejection notice from the patent office can make a request for continued examination by paying additional fees. The RCE allows the applicant to keep the examination process alive.
    1.6 What are Patent Citations?
    Patent Citations are similar to references in scientific papers. The inventors are legally bound to disclose prior art references (they are aware of) to the patent office, to indicate prior similar or related technology on which their invention improves. In addition, during the examination process, the patent examiner may cite prior art references that could 'oppose' the patent application on grounds of novelty or non-obviousness.
    There are two types of citations:
    Backward Citations Backward Patent Citations: These are the patent prior art cited by the applicant or the patent office during the patent examination.
    Backward Non-Patent Citations: These are the non-patent prior art cited by the applicant or the patent office during the patent examination.
    Forward Citations Forward Patent Citations: These are the patents that cite the particular patent as their Backward Citations.
    1.7 What is Patent Opposition?
    Patent Opposition is a process that provides a mechanism for third parties to oppose the validity of a patent.
    There are two types of Patent Oppositions:
    Pre-grant Opposition
    In certain countries, e.g., India, once a patent application has been published, a third party can oppose the granting of the patent application by providing evidence of a close prior art and arguments challenging its grounds of patentability. There is no pre-grant opposition in USA or Europe.
    Post-grant Opposition
    *Under US patent law, Post-grant Opposition is known as the re-examination process. In this process, a third party can have a patent re-examined by the patent office at any time during the term of the patent, to verify the patentability of the claims. The third party must submit prior art evidence that challenges the grounds of patentability - novelty or non-obviousness.
    1.8 What is a Provisional Patent Application?
    A provisional patent application is a type of interim utility patent application, which helps to establish an effective early filing date. Filing a provisional patent application requires a description of the invention, without claims or drawings. It cannot mature into an issued patent unless a non-provisional utility patent application is filed for the invention within a year.
    1.9 What is a Patent Family?
    A patent family is a set of related patent applications that are filed for either the same or a minor variation of the same invention. The patent family may include Continuation, Continuation-in-Part and Divisional patent applications, as well as International patents filed in foreign jurisdictions.
    1.10 What is a Patent Portfolio?
    The patent portfolio of a company comprises the set of patents and patent applications that are owned by the company.
    1.11 What is a Divisional Patent Application?
    A Divisional patent application is the type of patent application that is filed during the office action stage when the examiner finds that multiple inventions are present in a patent application. In this case, the patent examiner may issue a "restriction" requirement, which requires the applicant to "elect" one of the multiple inventions. The applicant can either withdraw the non-elected claims or file a Divisional patent application claiming the non-elected claims. A Divisional application retains the priority date of the first parent application. Hence, the exclusionary rights of the Divisional application start from the priority date of the parent application.
    1.12 What is a Continuation Patent Application?
    A Continuation patent application is the type of patent application filed by an applicant who wants to pursue additional claims for an invention disclosed in an earlier patent application of the applicant (the "parent" patent application). It gives the applicant a chance to claim other embodiments and unclaimed subject matter in the parent patent application, and retains the filing date of the parent patent application. It must be filed while the parent application is pending for grant. If the parent application has been granted or abandoned, the continuation application cannot be filed. The additional claims must find full support in the parent patent application, since no new subject matter can be added in the Continuation application.
    1.13 What is a Continuation-in-Part (CIP) Patent Application?
    A CIP patent application is the type of patent application filed by an applicant who wants to pursue additional claims for an invention disclosed in an earlier patent application of the applicant (the "parent" patent application). It is similar to a Continuation application, except that a new subject matter and improvements to the earlier invention can only be added in a CIP application. The claims corresponding to the new subject matter have a new priority date, i.e., the date when the CIP application was filed.
    1.14 What is the Patent Cooperation Treaty (PCT)?
    The PCT is an international patent law treaty that makes it easier to file a patent application in multiple countries. Under the PCT, a patent applicant can delay the filing of a patent application to 30 months (31 months in some countries) in up to 137 countries, without losing the Advantage of using the priority date. The PCT has two phases: the International Phase and the National Phase: International Phase A patent applicant, wanting to file a PCT application, can first file it or file it within 12 months of the first filing in a member country. An International Search Report (ISR) is provided to the applicant nine months after the first filing (or 16 months from the priority date, in the case of a subsequent filing). The ISR contains the relevant prior art search results and a brief opinion pertaining to patentability. Eighteen months after the filing date (or the priority date), the International Bureau of WIPO publishes the PCT application with the ISR. The applicants can also make a request for an optional preliminary examination, which provides a detailed report on the patentability of the invention. National Phase The patent applicant can file the patent application within 30 months (31 months in some countries) of the first filing date.
    1.15 What are the critical dates associated with the lifecycle of a patent?
    The critical dates associated with the lifecycle of a patent are described below:
    *Conception date*- This is the date on the innovative idea was generated.
    *Reduction-to-practice date*- This date can either be the date when the invention was actually practiced for the intended purpose, when a working model of the invention was created, or when the patent application was filed.
    *Filing date*- This is the date when the patent application with an innovative idea was filed. The filing of the patent application can be construed as reduced to practice.
    *Priority date*- The priority date of a patent application is the date on which the patent application was first filed (in any jurisdiction). In other words, if a patent application claims priority to an earlier filed related application, the priority date of the patent application is the filing date of the earlier application.
    *Publication date*- This is the date on which the patent application is published (typically within 18 months of the filing date).In the US, the patent application is not published until the grant stage if a non-publication request has been filed.
    *Grant date*- This is the date on which the patent application is granted by the patent office -The average time taken by the USPTO is 31 months.
    *Expiry date*- This is the date on which the term of the patent application expires (typically 20 years from the filing date).

  • 2. Capabilities
    2.1How many clients do we have and who are typically our clients?
    We have over 100 clients in various technical domains. These include Fortune 500 companies, Fortune 1000 companies, law firms, licensing firms; Patent holding firms, Patent brokerage firms, Venture capital firms and technology start-up companies.
    2.2What services should be offered to different types of clients?
    The following table depicts the various IP services that are likely to be interesting for the various types of clients.
    • IP Department of Companies
      • Patent Drafting and Filing
      • Office Actions
      • Patentability Assessment
    • R&D Department of Companies*
      • Patent Landscape
      • Freedom-to-Operate Study
      • Patentability Assessment
      • Innovation Watch
    • IP Law Firms
      • Invalidation Searches
      • Overlap Analyses, Claims Charts
      • Patent Drafting
    • IP Asset Management and Consultancy Companies
      • Patent Landscape
      • Patent Valuation
      • IP Portfolio Analyses
      • IP Licensing Support
      • Overlap Analyses, Claims Charts Venture Capitalists, Investment Banks, Private Equities
      • IP Valuation
      • Patent Landscape
      • IP Portfolio Analyses
      • IP Licensing Support
    2.3 What are our language capabilities?
    We mainly conduct research and analyses by using information available in English and machine translations of non-English languages.

    For German, Chinese, Korean and Japanese, we typically take the help of our partners. For other languages, depending on the quantum of work and timelines, we hire translators/interviewers locally or outsource work to partner agencies in different countries. Regarding our patent-drafting services, we do not draft patent applications in languages other than English. However, we can undertake drafting of non-English patents and translations of patents, with the help of our partner law firms in the relevant countries.
    2.4 Do we provide a legal opinion, example, e.g., in patentability assessment or freedom-to-operate studies?
    The IP Research and Analysis services provided by Aeren are purely technical in nature.
    2.5 How do we ensure the attorney-client privilege?
    The attorney-client privilege protects confidential communication exchanged between clients and their attorneys. In this concept, a court of law cannot force any party to reproduce any confidential information exchanged between clients and their attorneys.
    We can ensure the attorney-client privilege by involving clients' attorneys in all our communications with clients. All email communication is marked with an appropriate header, e.g., Attorney Client Privileged.
    2.6 Which are the specific technologies areas in which we do not provide IP services?
    We do not work for any clients who deal with inventions, products and services that are related to military or are classified as "Dual Use" by the US Department of Commerce. "Since our Intellectual Property specialists are located in India, clients are advised not to send any material that is restricted under US Export Laws, i.e., has a "Dual Use Restriction" or are categorized as "United States Defense Use"".
    2.7 What are the circumstances in which an applicant needs to obtain an FFP from the USPTO?
    If a patent application (for an invention that originated in the US) needs to be first filed outside the US, a foreign filing license from the USPTO needs to be obtained.
    2.8 What are the circumstances in which an applicant needs to obtain an FFP from the IPO?
    If a patent application (the inventors of which are Indian residents) needs to be first filed outside India, a foreign filing license from the IPO needs to be obtained. This situation can occur when an Indian subsidiary of a US company needs to first file a patent application in the USPTO. More specifically, an FFP is required if any of the inventors is a resident of India, if:
    • Any of the inventors has resided in India for more than 365 days in the last four years, subject to the conditions that:
    • the inventor has resided in India for more than 182 days in the last one year, if the inventor is a citizen of India
    • the inventor has resided in India for more than 60 days in the last one year, if the inventor is not a citizen of India
    • any of the inventors has resided in India for more than 182 days in the last one year
    The FFP is not required if an application for a patent for the same invention has been made in India, and the applicant has not received any direction from the patent office in six weeks (from the date of filing), prohibiting the foreign filing.
    2.9 How do we manage a conflict of interest?
    We have a strong conflict-of-interest system in place. Whenever a new request for a project arrives, an independent IP team checks the possibility of conflict with existing clients and projects. The team utilizes a conflict-check database that contains records of existing clients, their competitors, types of projects, and project-specific keywords.
    In addition, we strive to maintain strict confidentiality of client information. Knowledge about each client confined to a particular unit. There is a different IT infrastructure for each IP unit, and the interaction between different IP units is minimal, except for training and seminars.
  • 3. People
    3.1 What are the profiles of the people working in IP?
    All our employees attend and participate in stringent training programs. The major training programs are listed below:
    • Patent Drafting
    • Two months' training to introduce and familiarize professionals with patent drafting, and present to them an overview of IP Rights
    • Patent Search and Analysis
    • Three-week training on an introduction to prior art searching and various aspects of IPAM
    • One-week training on Freedom-to-Operate (FTO) searches
    • Database Training
    • Introduction to all the search interfaces and extensive training on ways of using them
    • Patent Agent Training
    • One-month comprehensive training on every aspect of IP law in India
    • Specific training modules for sequence searches, structure searches, patent watches and non-patent literature searches through STN
  • 4. Data Bases
    4.1 Which patent databases do we use?
    We subscribe to the following patent databases:
    • MicroPatent
    • Delphion
    • Espacenet
    • Scientific and Technical Information Network (STN)
    • Questel Orbit
    • The databases we use are commercial paid databases such as Delphion, Derwent, Thompson innovation for patent search. We also have subscription to non-patent databases such as IEEE, Science Direct, ACM etc. Apart from the mentioned databases, we also use domain specific databases.
  • 5. Quality Control
    5.1 How do we ensure quality in our projects?
    We have appropriate processes in place that routinely perform quality audits to check the quality of ongoing projects, and take necessary action promptly to improve quality.
    We follow four levels of quality checks before conveying the results to clients. Each level adds quality and value to a project:
    • QC by Research Analyst
    • QC by Project Manager
    • QC by Team Leader/Group Manager
    • QC by the Operations head
    • In addition, we incorporate and learn from client feedback, and maintain a quality checklist and detailed guidelines, which are followed in every project.
  • 6. Definition
    Identify general and background art for a particular technology Patents and non-patent literature. Not exhaustive. Gives a broad picture to help guide research
    Patentability Search
    Identify art which may affect the patentability of an invention Patents and non-patent literature.Multiple data sources. Narrower in scope than State-of-Art. Recommended before writing patent application
    Identify prior art which may impact the claims of a specific patent
    Patents and non-patent literature. Employ creative strategies to elucidate previously undiscovered art before filing date of patent.
    Helps remove blocking patents by anticipating claims of an invention. Establishes solidity of patent portfolio, e.g. for licensing or company acquisition
    Infringement, Freedom-to-Operate, Right-to-Use, Domination
    Identify patents or applications which may cover a proposed product or process Covers patents only and which are still in force. Include both narrow and broad concepts Often country specific.Analysis of claims.