Well tailored value creation methodology combined with patent prosecution strategy can develop new patent portfolios for maximum ROI from existing patents. Many patent applications and newly issued patents can be further developed for creating new values by amending and creating claims and generating family patents to encompass emerging technology and products/services trends, market demands, and strategic exploitation goals (e.g. cross-licensing, monetization etc.).
Step 1: Portfolio Review & Candidates Selection
A client’s patents are reviewed and categorized as standard relevant and application specific patents. The categorized patents are evaluated to select good candidates for value creation.
Excel file for the relevant standards (e.g. 802.11, 3GPP LTE etc.) and applications (e.g. mobile health care, smart home etc.) and list of candidates for value creation.
Step 2: Analysis for Selected Candidates
Project Scope for Standard Relevant Patents
The selected patents are further analyzed to find candidates for standard essential patents (SEPs) and development as SEPs with respect to the specific standards. For the SEPs candidates, the claim-standard specification mapping is performed to generate EoU claim charts. For the development candidates as SEPs, the model claims are constructed which can make a candidate as a SEP with respect to a specific standard. Additional claims are constructed to capture the unclaimed embodiments in the candidates’ detail descriptions.
EoU claim charts for the SEPs candidates and model claim charts for the development candidates as SEPs. Suggested claims that can capture the unclaimed embodiments.
Project Scope for Application Specific Patents
The selected patents are further analyzed to find candidates for commercial essential patents (essential for commercial product/service implementation), patents for market platforms (dominant designs), and patents for disruptive technologies (for future market generation potential). Existing claims are amended and additional claims are constructed to capture the unclaimed embodiments in the candidates’ detail descriptions to reinforce the protectability (against invalidation), enforceability (against potential infringement), and marketability (for monetization, new products/services etc.)
Report for brief explanations regarding candidates for commercial essential patents, patents for market platforms, patents for disruptive technologies. Amended claims and suggested claims that can create new values.
Step 3: Strategic Prosecution
In collaboration with engineers, business professionals, in-house counsels, and outside prosecution counsels, the optimal prosecution strategy is developed, final claims and methods of prosecution (continuation, divisional, reissue etc.) are devised, and all prosecution activities are managed and carried out.
Coordination of prosecution processes.
TechIPm’s technology expertise includes:
Mobile Computing & Wireless Communications Technology: LTE, CDMA (CDMA 2000, WCDMA, HSPA), WLAN, WPAN, RFID, NFC, WSN, Cognitive Radio/SDR, Optical Wireless, Mobile TV, Mobile Cloud Computing, RF MEMS, RFIC etc.
Smartphone Applications: Biometrics, Location Base Services/Indoor Navigations, Mobile Payments, Augmented Reality, Wireless/Mobile UI, IoT (Internet of Things) applications etc.
Green ICT: M2M, Smart Grids, Green Wireless Technologies, Electric Cars etc.
Bio & Medical IT: Mobile Healthcare (IEEE 11073 PHD, WBAN), Biometrics, Digital Imaging and Communications in Medicine (DICOM) etc.
For more information, please contact Dr. Alex G. Lee at email@example.com