Benefits
- Risk Management
- Identify Barriers in Product’s Commercialization
- Identify Blocking Patents
- Decision on Redesigning the Product/ Process
- Licensing Option
- Avoid Risk of Litigation
- Infringement Risk Analysis
- Decide on Investment
- Hidden Competitor Detection
- Combo Cost
Venn diagram approach
Concept 1
Concept 2
Concept 3
BUNDLING FTO + INVALIDITY
|
|
Patent 1
|
Patent 2
|
Patent 3
|
|---|---|---|---|
|
Concept 1
|
HIGH
|
HIGH
|
HIGH
|
|
Concept 2
|
HIGH
|
MEDIUM
|
LOW
|
|
Concept 3
|
HIGH
|
HIGH
|
MEDIUM
|
Case Study – Unique Approach
FTO + Invalidation (Expired Patent)
CLIENT: A Fortune 500 client
Client Requirement
- To conduct an FTO study related to a bicycle system with a vibration switching means as a feedback. The vibration switching means must come from DC Motor.
- Jurisdictions- US, DE and CN
MCRPL's Unique Solutions
- A Venn diagram approach was taken to provide multiple options to the client during proposal stage.
- Option 1 - Broad approach - Any mechanical cycling system not restricted to bicycle and switching means done through any motor (not restricted to DC motor)
- Option 2 - Narrow approach - Restricted to the client's scope.
- Patents in the domain were extracted from multiple patent databases - Orbit, Derwent, PatSeer
- Problem- Solution approach for better understanding of the target domain
- Search was also conducted for EP Patents designating DE as well, along with searching for alive PCT applications
Further Suggestions Provided
- An innovative approach was suggested to the client to invalidate the risky patents identified from the FTO study using expired patents
- Legally, expired patents indentified from the invalidity search could still give freedom to operate to the client for launching their product without any risk being involved.
- Based on the suggestions provided, the client agreed for invalidity search to avoid any risk in launching their product
- Value Proportion for client : FTO combined with the invalidity search were synergistic in providing a complete clearance for the product
