PROBLEM SOLUTION/ROOT-CAUSE ANALYSIS

PATENT INVALIDITY STUDY

When to Invalidate Patents?

Purpose Details
Patent Assertion/EnforcementValidate Enforceability – Before filing an infringement lawsuit, make sure that the infringer doesn’t have a rope to rescue.
Defense against InfringementFirst Line of Defense – When confronted by allegations of patent infringement, proof of invalidity based on prior art is the first line of defense.
Licensing INa) Product Improvement: License a patent that can improve your product & help you capture additional market share.
b) Litigation: Identify prior arts of successful products, their rights & challenge in district court litigation OR destroy using PTAB.
Licensing Outa) Needy Customer: Before you License your to those that really need it.
b) Cross License: Cross-License your patent(s) in order to lower development costs.
c) Fund: To accelerate projects on hold/generate revenue for future projects.
Patent BuyingDefensive Patent Aggregation: Before purchasing patents or patent rights from patent holders so they don’t end up in the hands of an individual or enterprise that can assert them.
Patent SellingMarketing: Serves as a marketing material to sell the patent at a higher price.
Patent Commercialization
Risk Identification before commercializing a technology
Patent CollateralizationGet Loans using patents from banks, equity investors and even angel investors –
a) Lenders should conduct the search before approving loans to negotiate/grant the loan.
b) Patent owners should conduct the search before applying loans to ask higher loan amount.
PTAB Proceedings – IPR, CBM & PGRChallenge Patents in AIA – Companies challenging patents in America Invents Act reviews can present additional evidence of invalidity.
Opposition ProceedingParties to formally challenge the validity of a pending patent application (pre-grant opposition), of a granted patent (post-grant opposition)

Consequences:  When failing to diligently search for patent validity before enforcement or patent invalidity for defense of infringement can result in heavy legal costs which is at least $2 million even if the patent is valid or non-infringed & the final exposures could be more than 10 times of the legal cost.


Possible Damages: (R&D Cost + Patenting Cost +/ Commercialization Cost +/ Litigation Cost).


Mson ‘s Invalidity Search: Mson is combining the art and science of searching to maximize value for clients. By creatively harnessing the power of experienced subject matter experts & multiple search engines, we deliver bespoke results that meet requirements by following a unique and systematic methodology to invalidate a Patent called 360° Approach. Mson IP’s approach includes 360° Document Study + 360° Search procedure & systematically analyze hundreds & thousands of references to invalidate one patent missed by examiners, applicants, attorneys and competitors. Morever, the identified references must be better than the prior art of records listed in citations.


Hundreds & thousands of references are reviewed to identify references missed by applicants, examiners, attorneys & competitors

  1. Mson IP’s 360° Doc Study – Experienced team spending at least 16 hours understanding the technology from multiple perspective.
  2. Mson IP’s 360° Search – Search strategies are formulated from multiple perspectives to avoid missing any relevant art in the database (Database also allows us to search in translated full text of non-english languages).
  3. Mson IP's Systematic Analysis Approach – Mson IP’s team with vast experience systematically reviews and picks all the references with atleast 10% relevancy & later analyze them in detail.

For Live Demo of the report - Please reach out to us at sales@mson-ip.com 

TESTIMONIAL

Shuqian Yan
(Senior Patent Attorney)
NXP Semiconductors

Mson's team has successfully delivered hundreds of prior-art searches for NXP in the past

Kevin Feng
(Director, IP Division)
Mediatek 

Mson's team has successfully delivered many prior-art searches for Mediatek in the past. I believe their experts follow a systematic metholody that helps them identify the relevant art from one way or the other.

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