Patent Analysis ServicesTynax is often engaged by organizations to evaluate whole portfolios, or individual patents, in order to identify the most valuable assets. Sometimes the client is looking to acquire patents, so the analysis is conducted on portfolios belonging to potential sellers. Other times the client is looking to evaluate its own portfolio.
There are several levels of analysis performed by Tynax:
Level 1 Portfolio AnalysisWith a Level 1 Portfolio Analysis we look at an organization’s portfolio, performing landscaping and providing a preliminary grading of each patent. We look at the construction of claims and overall construction of the patent and use statistical analysis to assess the overall potential that each patent will result in evidence of use. Tynax provides clients with a report listing each patent in the portfolio, it’s strengths and weaknesses, and an assessment of the portfolio as a whole.
Level 2 Portfolio AnalysisIn a Level 2 Portfolio Analysis we investigate the same grading as a Level 1 analysis but with more detailed scrutiny of the construction of each patent, and a more detailed evaluation of the potential for evidence of use. Tynax provides clients with a report listing each patent in the portfolio, it’s strengths and weaknesses, and an assessment of the portfolio as a whole.
Level 1 Patent AnalysisWith a Level 1 Patent Analysis, an expert reviews the patent, reads each of the patent claims, assesses the scope of the patent, its litigation potential, and evaluates whether the patent could match the criteria of the buying client. A Level 1 Patent Analysis will usually assess whether the patent has any potential for licensing or counter-assertion. Tynax provides the client with a report and buying recommendation.
If claims charts exist, and are provided for evaluation, the charts are noted and the companies charted are checked against the buyer's targets. At this level the charts are not studied or validated.
An estimate of the likelihood that the patent is practiced is provided to the client (see Tynax Level 1 EOU).
Level 2 Patent AnalysisA Level 2 analysis is often used to determine if the patent has the quality and characteristics necessary to be used in assertion or counter-assertion. With a Level 2 Patent Analysis, an expert reviews the patent, reads each of the patent claims, assesses the potential scope of the patent, its litigation potential, undertakes a preliminary review of any claims charts, undertakes a preliminary review of the chain of title, encumbrances and looks for any obvious issues concerning validity and evaluates whether the patent could match the criteria of the buying client. A Level 2 Patent Analysis will usually assess whether the patent has the potential to withstand the rigors of litigation. Tynax provides the client with a report and buying recommendation.
- EOU—if claims charts exist, and are provided for evaluation, the charts are reviewed to see if the charts are complete and the evidence appears to be compelling. If claims charts are not available, Tynax will perform Tynax Level 1 EOU and Tynax Level 2 EOU analysis.
- Prior Art—Tynax will investigate the age of the patent relative to similar patents and will estimate the likelihood that prior art might exist.
- Validity—patents in some classes could be subject to validity attacks (related to Bilski, Alice, etc.). The chance of such an attack is estimated based on the classes to which the patent is assigned.
- Encumbrances—Tynax will inquire with the patent holder as to the status of licenses, liens and any other encumbrances that might effect clean title to the patent.
Level 3 Patent AnalysisThe information gathered in a Level 3 analysis is intended to help a client assess whether an offer to purchase the patent can be justified. A Level 3 Patent Analysis is a Level 2 plus the following:
- EOU—existing claims charts are studied in some detail and a Level 3 EOU search is undertaken to identify potential target products or services.
- Prior Art—art that might have possibly been overlooked by the examiner is researched by looking at art that was cited by parents, divisional and continuation family members. (Note: we appreciate the sensitive nature of this information and take steps to prevent the art causing any damage.)
- Validity—issues that might be a point of validity attack, such as overclaiming, sufficiency of disclosure, interpretation of claim terms, etc.) are considered.
- Encumbrances—inquiries are made with the patent holder to understand the scope of licenses, liens and other encumbrances. Acquiring this information often involves sensitive negotiations and creative arrangements to address confidentiality concerns. License contracts are not reviewed until the Level 4 due diligence stage.
Level 4 Patent AnalysisA Level 4 Patent Analysis is the type of comprehensive due diligence that a buyer would request prior to closing the purchase of a patent and covers all the points in the "Factors Considered" section below. All the aspects of the patent are examined including patent construction, evidence of use, chain of title, encumbrances, prior art and prosecution history. Tynax provides the client with a detailed due diligence report.
Claims charts and other forms of evidence of use provided for evaluation is studied in some detail. Level 4 EOU is researched and gathered for a Level 4 Patent Analysis.
A review of the file wrapper is conducted to search for any potential "skeletons in the closet". Prosecution arguments are analyzed to evaluate how they might affect they way claims and terms are interpreted. Possible inequitable conduct in the prosecution process is investigated, such as the mischaracterization of prior art. Potential failures of the duty to disclose, such as failure to cite art that was cited in foreign counterparts, is also considered.
Factors ConsideredHere are some of the criteria we evaluate when appraising a patent. The level of investigation of these factors depends on the patent, the client and the level of patent analysis requested (Level 1, 2, 3, etc.).
- Claim Strength—we evaluate the claims to determine how they might translate to evidences of use, how they might be interpreted, and where the claims might be challenged when asserted.
- Evidence of Use—this is a key factor to consider when evaluating any patent. We evaluate if the patent might be practiced in the marketplace, we analyze claims charts, and estimate the extent of potential infringement.
- Patent Construction—here we are looking at the overall construction of the patent to see if the components, such as claims, citations, description, etc., are assembled in a manner that will withstand scrutiny when the patent is challenged.
- Age—the remaining life of the patent is an important factor to consider. Operating company buyers, acquiring for counter-assertion, are often looking for patents with a several years of remaining lifespan. Buyers running licensing and assertion programs might not be so concerned about the remaining life, but all buyers have age considerations.
- Chain of Title—at some point in the evaluation process, it’s important to check that the patent has clean title, or at least title that can be clean at the time of assignment (when perhaps a security interest is removed). Each link in the chain of title is usually checked in the final step 4 due diligence phase.
- Encumbrances—we investigate the status on licenses, covenants, liens and other security interests affecting the potential scope and potential targets for the patent.
- Standards Body Declaration—usually the patent holder is aware whether the patent has been declared to be essential to a standard but sometimes the status of a patent, with respect to a standard, requires some investigation. The determination of whether a patent is indeed essential to a standard is one that requires a good understanding of the standard and technical skills. Many patents that are declared essential are not found to be essential, and on the other hand, many patents that are essential are not declared.
- Standards Bodies Encumbrances—the value of a patent can be seriously affected by its status with respect to standard bodies. We have to investigate if the patent has been committed to a standard.
- Prior Art—we investigate prior art to assess the chance of the patent being invalidated in future.
- Validity—validity is, of course, investigated through the search for prior art, but depending on the type of patent, there are other reasons that a patent could be at risk of being invalidated.
- Prosecution History—before purchasing a patent, it’s important to review the prosecution history to see if there are any issues that could affect the scope or life of the patent.
- Terminal Disclaimers—terminal disclaimers are sometimes posted on the face of the patent, but often require a thorough review of the prosecution history to find if the life of the patent is determined by the lifespan of another patent.
- Recommendation—when working for buying clients, we will provide the client with a recommendation as to whether the buyer should pass, pursue the patent or postpone the decision until a later date, perhaps when the market has developed.