Inventing I

We were called on to assist with a new venture for a well-established company planning to expand its product and services line. Over the course of several meetings, approximately 40 inventions were conceived, of which Valuetech contributed to approximately 30. The inventions related to quite diverse aspects of the new venture, and were provided to the client in the form of invention disclosures. About 10 of the invention disclosures contributed by Valuetech were selected to become the subject of patent applications, and already one of these has been granted.

Inventing II

We were called on to assist an existing division of a well-established company working in a mature area, which was crowded with intellectual property. After an extensive analysis of existing patents and patent applications, gaps were identified in the prior art and several potential inventions were proposed. Out of these, three were selected for patent protection, and patents for these are currently pending in the US and in Europe.

Litigation Support: Prior Art Searching

Valuetech was called on to provide support for a client that was being sued for patent infringement. A family of several patents was being asserted against some of the client’s products. The exercise Valuetech undertook was to perform in-depth prior art searching in order to uncover patents and other pre-existing references that were not taken into account at the time the asserted patents were granted. After extensive searching, several items of prior art were found, which were directly relevant to the asserted claims. This prior art was then used to argue invalidity of the asserted patents.

Success Rate

We are sometimes asked what our success rate is in getting patents granted. The question is really what our success rate is for those applications that are not prematurely abandoned, and remain with us until the final determination is made. Out of all the patent applications we file, about a quarter of them are abandoned early by the applicant, before a decision is made as to whether they are patentable or not. To name a few, the reasons for this include failing to make the product, deciding not to bring the product to market, taking the product off the market, finding a better solution, deciding to keep the invention a trade secret, depleting the budget, disagreement with business partners, and unfortunately, death of the applicant. For the remaining applications that we see through to the end, our success rate is 97%. For some applicants, even with numerous patents, the figure is 100%. For the few that are not granted, one reason for refusal is a competing patent application that was filed in a patent office before the applicant's filing, but was not public at the time due to it being within 18 months of its filing date. Another reason is prior art that was published at the time of filing, but was not seen by the applicant, which can happen if an application is filed without a search being done beforehand, or if a search is incomplete. Another reason is a change in the law or its interpretation, which, for example, takes what was a patent-eligible application out of the realm of eligibility.