Patent Drafting & Prosecution:

Today’s complex technology issues that confront many of our clients are being addressed in a number of jurisdictions around the world. Managing and protecting intellectual property has become increasingly complicated for global companies, which often have huge IP portfolios and operations in multiple jurisdictions with varied IP laws and levels of enforcement. Rapid technological advancements have enabled infringers to become more sophisticated, and the rise of intellectual property as a main driver of mergers and acquisitions has made developing strategies to protect these assets even more important. Here at GHB Intellect, we have the experience and the capabilities to support our clients protect their invaluable intellectual property cost-effectively.

GHB Intellect can also undertake efforts to ensure our clients their IP portfolio development funds efficiently by performing strategic searches that help them determine the value they will receive from their IP filngs. Whether it is searching for existing rights holders, helping to assess whether a competitor is filing for registration or to monitor for specific filings, GHB Intellect can guide and execute the most cos-effective services to achieve the desired goals.

The following services are provided by the GHB Intellect:

Patent Drafting & Prosecution: Acquiring durable patents in the U.S. that afford commercial advantage and withstand third-party challenges

A utility patent covers the useful features of an invention, such as a machine, process, or composition of matter. Utility patents include the rights to manufacture, sell, use, or import the invention.

Patent protection is available for a limited time, and periodic payments are required to keep a patent in force. In the United States, for utility patents filed on or after June 8, 1995, the term of the patent is 20 years from the earliest filing date of the application on which the patent was granted and any prior U.S. or Patent Cooperation Treaty (PCT) applications from which the patent claims priority, regardless of the time it takes for the patent to issue.

We offer our clients our expertise in developing, drafting, filing and prosecuting patents the combination of legal, in a variety of technical and scientific fields, This ranges anywhere from software and hardware, wired/wireless communications, security, multimedia, and semiconductors, to chemical and material sciences, biotechnology, medical devices, etc..

Patent Search: Conducting patentability analyses and developing design-around strategies

To avoid wasteful and unnecessary invention filings and to strategically direct research and development (R&D) budget, a careful search of existing intellectual property rights owned by others can help determine

  • the potential of infringing on someone else’s intellectual property rights
  • the potential for a successful patent prosecution
  • the landscape of patents from competitors in the area of the invention
  • the most effective areas of research and development

A Unique Search Approach

We conduct extensive searches on patents and non-patent literature. Our methodology for searching in deeply technical/scientific fields is unique and draws upon our commitment to quality and service. Over the years, we have developed a unique process of prior art search that guarantees the best search results. In particular, we take advantage of our extensive expertise in various technological and scientific fields in performing our searches. The methodology requires a pair of experts working as a team, one expert in searching, and one in the subject matter. The iterative approach they take in conducting the search will ensure that not only the searches are performed thoroughly and time-efficiently, they are also on target and produce quality results. After all, no client is interested in receiving a long list of irrelevant or remotely relevant prior art.

Search Types

The types and extent of patent searches we conduct vary depending on client requirements and goals.

1. Patentability search

To obtain U.S. patent protection, a potential invention must be new (novel), useful, and non-obvious. In addition to determining novelty and non-obviousness, a patentability search could

– help the patent drafter to write a patent application that better defines the inventive contribution of the new product over the prior art,

– facilitate prosecution by preempting examiner rejections, and

– improve the defensibility of the future patent by ensuring that the examiner considers the most relevant prior art during prosecution.

The depth of any type of Patentability Search is a function of available time and budget. A complete Patentability Search conducted by GHB Intellect will cover all granted patents, published patent applications, and non-patent literature published anywhere in the world. It would also uncover any evidence of past public use or sales.

Our Basic Patentability Search limits the Search to all properly classified U.S. patents and published patent applications. This prior art database search is not exhaustive but generally provides a reasonable set of results on which an analysis can be performed. In a Premium Patentability Search, we will also search European and Japanese patents and applications. The patents issued or patent applications published by the USPTO, EPO, PCT, and JPO cover more than 90% of patents and applications filed worldwide. GHB Intellect can also customize the search to fit a client’s needs.

2. Validity/Invalidity Search

At GHB Intellect we conduct patent validity searches to either validate the claims made by a patent or to invalidate one or more claims of a competitor’s patent. An invalidity search is the first step taken by a company when faced with a patent infringement lawsuit. An Invalidity Search is a prior art search done after issuance of a patent. The purpose of an invalidity search is to find prior art that the patent examiner overlooked so that a patent’s validity may be challenged.

Validity searches are also conducted to check the strength of a granted patent while exploring the available licensing options.

Our search experts are paired with subject matter experts in order to create a highly efficient and effective team digging deep into the domain to find critical prior art overlooked by the patent examiner.

As part of the report, GHB Intellect prepares claim charts to compare the claims of a patent to potential prior art to show if the patent is valid/invalid.

3. Clearance/Freedom to Operate (FTO) search

The purpose of an Freedom to Operate (FTO) search is to identify in-force patents or published patent applications with claims that cover the technology, process, or product that clients are targeting. Our FTO Search service helps identify potential patent barriers to commercializing our clients’ products or technologies. This due diligence process examines the claims language of third-party, in-force patents as a means of assessing clients’ risks of potential infringement.

GHB Intellect takes its responsibility in advising its clients very seriously. For each FTO assignment, we create an FTO search team, consisting of a search expert and a subject matter expert. Such a team, trained to perform the task iteratively, has proven much more efficient and effective in searching, finding, and examining relevant prior art.

4. State-of-the-Art/Landscape search

A State-of-the-Art/Landscape Search is designed to provide a general idea of the existing prior art in a particular area. It is essentially an information collecting method and can be as comprehensive or limited as needed. This category of searches is conducted for the purposes of resolving a definite quandary, discovering technology to license, and tracking the competition. It assists our clients in business planning as well as product programming. It also helps our clients plan our clients’ R&D initiatives when starting a new business or developing a new product/ process.

Our team of experts at GHB Intellect provide State-of-the-Art searches with indispensable results no matter what the portfolio is based on.