This has been a strategy for IBM for many years.  Almost every year, it gets announced that IBM has received the most issued patents for that year, surprising fewer people every year.  While the bulk of the patents IBM received had no value, the few that did more than made up for the expense of the uncommercialized patents.  We can see why China might take this approach as IBM’s case makes the investment less risky.

What this means is that there will be more low-quality patents in national patent databases.  These databases would now require more search time to determine if an innovation is patentable.  This directly affects inventors by making them wait longer for search results and paying more for that service.  Also, it means that inventors must be aware about foundational or standard-setting patents that precede their invention that may come from China.  Patent Searches are still a great way to see how dense the industry is and to get confidence on the issuance of a patent, even with the increased cost of patent searches the activity is still worthwhile.

An entrepreneur or business that may be blocked by existing patents can consider two things – freedom to operate their business, and the ability to patent their idea.

Firstly regarding freedom to operate, the entrepreneur or business should check if the maintenance payment requirements of the conflicting patent have been met.  If the patent is “dead”, not kept up, then it becomes public domain and can be commercialized by anyone.  If a patent is maintained but was not filed in the jurisdiction of the entrepreneur or business wishes to operate in, then the business is free to operate in that jurisdiction. There is a statute of limitations on the international filings of patents with deadlines varying from one year to thirty months. If the deadline to file the patent has lapsed for any given jurisdiction, then there is freedom to operate in those countries without fear of patent infringement. We recommend that all start-up businesses should ensure they have freedom to operate as a first step in their business planning.

The quick steps one needs to take are:

• Conduct a patent search to identify conflicting patents
• Find out where and when those patents were filed
• Determine if the patent has been maintained or has expired
• Compare the length of time since the initial filing to the filing deadlines and determine which countries it is possible to operate in.

Secondly regarding patentability, the main thing to consider is prior art. If prior art (similar ideas) have already been patented anywhere in the world, then patentability in the entrepreneur’s jurisdiction, or any other jurisdiction, is not possible. If an entrepreneur or business does not have freedom to operate in their chosen jurisdiction, they may be able, with the help of a patent agent, to apply for an improvement patent. An improvement patent needs to be novel such that the improvement is very significant and is not obvious to experts in that business. If an improvement patent cannot be obtained, then the entrepreneur or business will need to negotiate licensing terms, or offer to acquire the patent outright from its owner.

Patent Rights Group is well versed in these matters and can provide you guidance and execution ensuring your freedom to operate and help you with your patentability options.

There are two types of patent applications; Provisional Patent Applications and Full Patent Applications.  A provisional patent is a document that contains the basics of the idea to be patented and it time stamps the date of the invention as the date the provisional patent is filed, a very important factor in the event of subsequent litigation. This provisional patent will allow the inventor 12 months before they have to file a full patent and allows the inventor to modify and improve their idea over that timeframe.  A Provisional Patent also allows the inventor, business, or entrepreneur, to see if there is a demand in the market prior to investing in patent protection..  A full Patent Application, sometimes referred to as a non-provisional patent or just a patent, offers the inventor 20 years of intellectual property protection from the earliest date of filing.  This can be a large investment that must not be taken lightly.

Prior to filing either a Provisional or Full Patent Application, Patent Rights Group advises getting a patentability assessment first.  A patentability assessment consists of a patent search and then an assessment of the possibility and cost of being granted a complete patent in the future. This service, when provided by knowledgeable professionals, is the best first step an inventor, entrepreneur, or business a person can take.   By spending a few thousand dollars on this service, an inventor can assess the required investment to obtain a patent.  Patent Office responses to claims can be a big source of expense if the patent agent is not aware of the existing patents before hand. The patentability assessment also identifies others with similar patents who may be future competitors.

Most businesses spend a considerable amount of time and money obtaining market research and constructing business plans before they launch their business, so why not also spend some time and effort to obtain a patent assessment. In doing so, you can assess your investment cost to obtain a patent, and at the same time, get an advance view of who you will be competing against in the future. In situations where the investment to obtain a patent is high, it may make more sense not to file your own patent and instead try to partner with the owners of existing patents, or consider buying or licensing their rights. Where a patent assessment indicates the likelihood of receiving a patent is high, and the costs of going through the process is low, consider filing a provisional patent to take advantage of those 12months to further assess your situation more fully.  File a full patent only when all the features of the invention have been finalized and you know that a patent is attainable at a reasonable cost.  In short, a patentability assessment can be thought of as an ounce of planning that can prevent a pound of pain.

This portfolio will provide PRG two forms of future revenue, one by way of licensing and the other by way of litigation. According to published GDP statistics, the North American Road Transportation Industry is worth $136 Billion in the US and $23.8 Billion in Canada each year.

“These assets are especially valuable because of the tremendous number of licensing prospects in this very large industry sector,” said Tony Canapini, CEO of PRG, “and by acquiring this portfolio, it keeps PRG on track with its aggressive patent acquisition strategy launched earlier this year.”

PRG is actively identifying manufacturers, distributors and retailers throughout the transportation industry that are interested in licensing these newly acquired rights. PRG will focus on North American manufacturer’s and distributor’s since the products are of high quality and industry dealers are already familiar with these brand names.

About Patent Rights Group Inc.

Founded in Toronto, Canada, Patent Rights Group Inc. is an intellectual property management company that buys, sells, licenses, and defends patents. We focus on inventors, entrepreneurs, small and medium sized businesses, non-profit enterprises, and innovation labs in Canada and the US. Our markets include, but are not limited to Manufacturing, Mobile/High Tech, Health Care, and Green Energy. Please visit www.patentrightsgroup.com for more details.

For press inquiries, please contact:

Patent Rights Group Inc.

Ph: 416 722 2274

Email: info@patentrightsgroup.com

Semantically, re-inventing the battery seems very similar to re-inventing the wheel.  The wheel has been around since our cave man days and the connotation of redeveloping an invention that’s been around for a while may still hold water.  We have seen the shift from stone wheels to wooden wheels as used originally in Ford Model T that were replaced later with steel-spoked wheels in 1920s. Then came the polymer revolution of the 1930s and 40s which saw nylon stockings, toothbrushs, and more importantly the modern tires we know today.  The solid wheel became a thing of the past and now synthetic tires are ubiquitously used. The same question applies to the battery with its history starting in Mesopotamia circa 200 BCE, to the voltaic cell, lead-acid cell, and now the newly patented lithium ion batteries, to name a few.

We think it makes sense to push for new innovations on existing inventions in order to receive the benefits of owning the next generation of patents. These new generation of patents are considered family patents when you own a bunch of them, they are very valuable business assets. A family of successively granted family patents outlast the lifespan of a single patent and are much more powerful when asserted collectively against infringers or used as defence against aggressive competitors or patent trolls. At PRG we advocate incorporating family patents into your patent portfolio and are willing to explore these types of IP strategies with you.

Kodak is appealing this decision, as they should.  Any person who grew up with photographic film, also known as analog film, knows the obviousness of this idea was not so clear prior to digital cameras and mobile phones.  The innovation of preview images on digital cameras and phones does deserve to be protected as it was innovative many years ago.

The outcome of this case, pending appeal, is an example one of the worst case scenario outcomes from patent litigation.  The most common outcomes are settlement, court awarded damages, dismissal with/without prejudice, and in this case, an invalidated patent.  While there are many ways to end a lawsuit, the judgement of rendering a patent invalid means that the lawsuit is thrown out, the expenses of obtaining the patent were a waste, legal costs are not recouped, and the future value of the patent asset is now zero.  Many patents are awarded, but one needs to be careful when asserting their patents, especially ones with long life spans because getting your patent ruled invalid is like finding out your technology is obsolete.  The result of course is negative because your investment has been rendered useless.  This is one reason why Patent Rights Group looks closely at litigation strategy because the possible invalidation of your patent requires patent assessment before, during, and after litigation action is initiated.

For more info visit:  patentrightsgroup.com

http://news.yahoo.com/kodak-patent-deemed-invalid-fight-apple-rim-052608930.html;_ylt=AlOZGgV0OKNnlXZYYEfgK5MjtBAF;_ylu=X3oDMTNmajVka2RlBG1pdAMEcGtnAzJjNDUwYTI3LWI0NTktMzFlMy1iZmNkLWJlODBlOTU0ODBjYQRwb3MDNgRzZWMDbG5fR2FkZ2V0c19nYWwEdmVyAzA5ZGFkNjgwLWEzY2YtMTFlMS04MWRmLTBhNTZhZDdiZTE3Nw–;_ylv=3

http://www.pcmag.com/article2/0,2817,2382644,00.asp

http://www.thestar.com/business/article/1181885–kodak-loses-patent-case-to-rim-apple

http://www.techspot.com/news/48686-itc-deems-kodak-patent-invalid-favors-apple-and-rim.html

http://www.slashgear.com/kodak-patent-used-against-apple-and-rim-invalid-22229330/

PRG was pleased to see industry leaders like Norton Rose are advocating that patents have evolved from being a form of legal redress into a business model unto themselves.  These intangible assets have value that can be monetized in a variety of ways.  As noted in the seminar, patents are now becoming an incremental source of capital for many companies and in many ways patent monetization has parallels with venture capital.  The driving factors in patent acquisition are licensing, litigation, jurisdiction, potential infringers, market trends, exclusivity, defensive litigation strategies, regulatory changes, timing, encumbrances, and the nature of technology, which are generating huge returns.  For example, Norton Rose handled the Nortel patent auction, which had a patent inventory of over 6000 patents. Their value remained hidden until the portfolio sold for $4.5 Billion, multiples above the estimated market value that Nortel assigned to their own patents.  The competition for this portfolio, in addition to the above driving factors, saw a similar purchase of Motorola and its patents, by Google, for $12.5Billion.  The large price tags of these assets show a precedent for the value of similar portfolios in the Technology sector.  Investors are now seeing intellectual property as assets that can be used to increase returns, or deter litigious action.

Kodak fell into bankruptcy recently with a large portfolio of patents under their name.  With the current state of the intellectual property industry one would be right in posing the question, “If Kodak sold, or licensed, part, or all of their portfolio, would they be in receivership?”  Unsurprisingly, the monetization of such a portfolio of patents could have saved Kodak from receivership and provided the company with income potentially greater than their worth.  For example, Norton Rose has a client who earns $1millionUSD per annum licensing his issued patent for LED candles.  Who would have thought that a novelty item like this would generate such huge returns from associated patent; Patent Rights Group would!

For more info visit:

http://www.nortonrose.com/

Every year since 2001, Intellectual property, licensing and business development professionals gather around the world to celebrate World IP Day and the importance of IP to the global economy.  World IP Day is a celebration about  how intellectual property fosters and encourages innovation and creativity.

World IP Day 2012  focuses on Visionary Innovators – individuals whose ingenuity and artistry have broken molds, opened new horizons and made a lasting impact.

Patent Rights Group Inc. shares this passion for innovators and proudly recognizes inventors everywhere who change the world by bringing forward new ideas.

How World IP Day began

To increase general understanding of what IP really means, the World Intellectual Property Organization (WIPO) members chose April 26, the day on which the WIPO Convention came into force in 1970, as World IP Day.

Since then, World IP Day offers an exciting chance each year to join with others around the globe, to highlight, discuss and demonstrate how the international IP system contributes to the flourishing of music and the arts and to driving the technological innovation that helps shape our world.

PRG welcomes your thoughts, ideas and contributions!

To simplify your monetization strategy, it is best to consider litigation and licensing scenarios separately;

When a litigation scenario is involved, the strategy is to focus on your patents more than your software. Court cases for software disputes are difficult and expensive to prove because today’s software tools are so advanced that it is relatively easy to reverse engineer around the software application without copying the original source code. However, the underlying ideas and methods are not so easy to copy and patent law is specifically designed to protect ideas and methods. We believe it is easier to assert your patent than to sue an infringer for copying your software. Therefore our suggested approach for monetizing your rights when litigation is involved is to lead with patent infringement, and back up the patent litigation with a software suit. This way, those who get away with reverse engineering the software are still liable for paying damages under patent law.

When a licensing scenario is involved, the focus is more on your software than your patent. Since quickly getting the capabilities and functionalities to market is most important, our suggested approach is to lead with a software license and back it up with a patent license. The additional patent license is necessary because licensees can use it to protect themselves from anyone who could reverse engineer around the software. In addition, when speed to market is important, the original software provider can generate incremental revenue by customizing their software to meet the specific needs of the licensee because it is faster and more efficient for the original software provider to make the required modifications.

Therefore, when software and patents are co-mingled, monetizing your rights is simplified by following these three strategies:

• when litigating, lead with your patents
• when licensing, lead with your software
• when speed to market is key, do required software modifications yourself

Of course, when implementing any strategy involving protecting or licensing intertwined patents and software, we recommend the use of appropriate legal agreements, legal counsel, and an experienced business advisor like PRG.

Patent Rights Group Inc. (PRG) and R&D Funding Management Inc. (RDFM) announced today a new business
partnership to enable Canadian companies to monetize their patent rights and simultaneously secure government tax credits and grants.

This partnership enables Canadian companies to monetize innovation by licensing and defending their patent rights and to secure cash incentives by accessing Canada’s Scientific Research and Experimental Development (SR&ED) program, Industrial Research Assistance (IRAP) Program,and Ontario’s Interactive Digital Media Tax Credit (OIDMTC) program, among others.

“Many companies leave huge sums of money on the table without even realizing it,” said Brian Hartman, Founder and Principal of RDFM, “Finally Canadian companies can rely on our partnership to maximize their refund claims and to monetize their patents simultaneously.”

“Our partnership is a natural alignment for our combined client base,” says Tony Canapini, CEO of PRG, “We know that  companies that qualify for tax credits by developing new innovation also want to protect their investment by filing patents and defending or licensing their rights.”

Companies that prefer to pay only after success is achieved, will be attracted to this partnership. The fee structures of PRG and RDFM are predominately contingency based, and include other creative pricing and financing options to suit specific circumstances if needed.

All Canadian companies researching or developing new methods and products are now able to leverage the combined expertise of this partnership and experience working with a wide array of dedicated scientists, engineers, legal experts, and consultants. Clients of PRG and RDFM will gain new insights about their intellectual property while leaving the details surrounding their refund claims and licensing or defending their patents to these successful and competent industry leaders.

About Patent Rights Group Inc.

Founded in Toronto,  Canada, Patent Rights Group Inc. is an intellectual property management company that buys, sells, licenses, and defends patents. We focus on inventors, entrepreneurs, small and medium sized businesses, non-profit enterprises, and innovation labs in Canada and the US. Our markets include, but are not limited to Mobile, High Tech, Health Care, and Green Energy. Please contact us at info@patentrightsgroup.com or visit us at www.patentrightsgroup.com

About R&D Funding Management Inc.

R&D Funding Management Inc. is a focused team of scientists and accounting professionals that specialize in the Scientific Research and Experimental Development (SR&ED) and Ontario Interactive Digital Media Tax Credit (OIDMTC) tax incentive programs. We also consult on other government programs such as IRAP, other provincial media tax credits, among others. We have more than 300 years combined experience and are experts in unearthing eligible work and preparing successful applications. Please contact us at info@rdfm.ca or visit us at www.rdfm.ca