IT IS SAID THAT A JOURNEY OF THOUSAND MILES BEGINS WITH A SINGLE STEP
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1 Epiphany IP Solutions Pvt. Ltd. CREATE PROTECT PROSPER IT IS SAID THAT A JOURNEY OF THOUSAND MILES BEGINS WITH A SINGLE STEP An 'Epiphany' or the 'Eureka moment' is that proverbial small step triggering the journey of an idea en-route to a path breaking Innovation. At Epiphany IP Solutions, we endeavor to encourage, protect and commercialize Innovations.
2 'Epiphany IP Solutions Pvt. Ltd.' specializes in providing Intellectual Property (IP) solutions to a global clientele. Our core area of expertise is providing patent, trademark and copyright related services. Our collective expertise has been utilized on over 500+ IP related matters for Indian, US and EU clients on domains as varied as Electronics & Communications, Semiconductor/ Integrated Circuits, Computer Science/ Information Technology, Mechanical, Clean Energy and even general consumer good applications. Most of team-members at Epiphany have advanced degrees in their field of specialization and are also registered patent agents with the Indian Patent Office. At Epiphany, we realize that though Quality, Cost and Turn-around time are the principal client requirements, Confidentiality of information is equally paramount. All our IP solutions are designed bearing these corner stones in mind. Our services provide critical support during each stage of the IP lifecycle Ÿ State-of-the-Art Search/ Patentability Assessment/ Novelty Search Ÿ Trademark Search Ÿ Copyright Search Ÿ Patent Analytics including Technology Landscape and Gap or White Space Analysis Ÿ Competitor Technology/ Patent Watch Ÿ Drafting of Patent Application Ÿ Patent Filing/ Prosecution Support Ÿ Patent Litigation Support including Invalidation Search, Patent Proofreading, File Wrapper Review & Analysis/ Claim Chart Preparation & Document/ E-discovery Ÿ Trademark Filing & Prosecution Support Ÿ Copyright Filing & Prosecution Support Ÿ Licensing & Commercialization Support Ÿ IP Valuation including Patent Valuation Ÿ Clearance Search/ Freedom-to- Operate
3 OUR CUSTOMERS INCLUDE Ÿ Fortune 500 Companies Ÿ Small & Medium Enterprises Ÿ Patent/ Technology Licensing firms Ÿ Law firms Ÿ Universities Ÿ Garage Inventors/Technology entrepreneurs TECHNOLOGY DOMAINS Ÿ Electrical Ÿ Electronics (including integrated Circuits) Ÿ Mechanical Ÿ Telecommunications Ÿ Computer/ Software related technology Ÿ Business Methods Ÿ Medical Devices Ÿ Clean Technology Ÿ Chemical & Material Science Ÿ Biotechnology & Life Sciences
4 PATENT SERVICES Prior Art Searches/Patentability Assessment We strongly recommend prior art search to our clients before initiating drafting of the patent application, as it not only helps in ascertaining the novelty of the invention prior to indulging in the expensive process of obtaining a patent but also helps in determining the boundaries of state-ofart so that the patent application can be drafted in an optimal way. We perform varied level of prior art searches depending upon the different requirements of the client in terms of exhaustiveness of search. Scope: Patent & Non-patent literature search on paid/free databases Turnaround time: 3 5 Business days Patent Application Drafting Support The patent drafting team at Epiphany has sizeable patent application drafting experience that it has gained from working with various in-house IP counsel, IP attorneys and R&D heads from Fortune 500 corporations. We are proficient in drafting patent applications to be filed at the USPTO, EPO, Indian Patent Offices, and other patent offices all over the world. Scope: We realize that the needs of our clients from R&D companies to IP attorneys are different. Our adaptability enables us to mould ourselves as per the client's requirements. We provide services from provisional patent application drafting and regular patent application drafting to drafting of individual sections of the patent application, such as drafting of the claims section, the description section or just the illustrations. Turnaround Time: Business days for drafting of non-provisional patent application) Patent Filing/ Prosecution Support We provide patent filing and prosecution support services to our clients. As a part of filing patent applications with different patent offices and providing prosecution support, we assist our clients in: - Preparation of documents (as mandated by different Patent Offices) for filing of provisional/ non-provisional patent application Turnaround time: 1-4 days (depending upon the receipt of relevant information from the client) - Preparation of documents (as mandated by different Patent Offices) for filing of PCT application/ Convention application/ National Phase application Turnaround time: 1-3 days (depending upon the receipt of relevant Information from the client) - Preparation of Accelerated Examination Support Documents (AESD) for filing of patent applications through accelerated examination route Scope: Patent & Non-patent literature search on propriety/free database Turnaround time: 5 8 Business days (reporting as per USPTO guidelines)
5 PATENT SERVICES (contd.) LITIGATION SUPPORT Litigation support offered by Epiphany includes following services: Invalidation Search Invalidation search is conducted to aid infringement litigation. An Invalidation search is focused on invalidation of claims of a patent. A team of experienced professionals develops an understanding of the claim(s) of the patent to be invalidated and conducts a targeted search for identifying patent/non-patent literature relevant to the claims of the patent under consideration. Scope: Patent & Non-patent literature search on paid/free databases Turnaround time: Business days Patent Proofreading Epiphany offers patent proofreading services to identify any errors/discrepancies that may weaken the patent claims and that could put the patent at risk before or after the issue of the patent. Scope: We adopt unique strategies for identifying errors such as grammatical mistakes, antecedent mistakes and consistency of terms in the patent document. Moreover, various checks such as enablement checks for each claimed feature/element in the description section of the patent document are performed. Additionally, the dependency structure of the claims and numbering in drawings are checked. The errors determined during patent proofreading are analyzed for establishing seriousness thereof to be considered for filing a certificate of correction at the patent office. Turnaround time: 2-3 Business days File Wrapper Review and analysis A review of the file wrapper or file history is quiet crucial for litigation proceedings as well as during licensing negotiations. We perform a detailed review of the file wrapper to ensure delivery of insightful results to the clients. Turnaround time: 3-7 Business days (depending upon the number of citations in the file wrapper) Claim Mapping/ Claim Chart Preparation Claim mapping analysis is done to support decision making during litigation proceedings and licensing deals. The claim mapping analysis involves mapping of the claims of a patent to a product description or a technical document. The claim(s) considered for this analysis are usually the independent claim(s) of the patent document. Several elements/features are extracted from the selected claim(s), and each extracted element/feature is mapped onto one or multiple relevant products/ description in the technical document. Turnaround time: 1-2 Business days (if the patent/product information is provided by the client) & 4 5 Business days (if the products mapping the patent claims have to be searched by Epiphany prior to perform Claim Mapping) Document Discovery/E-discovery We understand client's requirements related to the lawsuit, and analyze the pool of documents provided by the client for filtering out the documents relevant for litigation. The filtered documents are thereafter categorized into sub domains and technologies for subsequent use in lawsuit proceedings.
6 PATENT SERVICES (contd.) Patent Analytics A patent analytics assignment is conducted for obtaining an overview of the patenting landscape vis-à-vis a technology domain. Such assignments are also referred to as Landscape studies. Typically, landscape studies are useful for: Identifying the technology curve Identifying the key players operating in a technology domain Deriving insights into the R&D focus of key industry players Identifying seed patents in a technology domain Managing the patent portfolio of the client Identifying licensing opportunities We develop an understanding of the technology under consideration and conduct a search to identify patents and published patent applications relevant to the technology under consideration. The identified patents/ published patent applications are then classified into a broad classification system (also referred to as taxonomy). The classified patents/ published patent applications are analyzed by a team of trained professionals for identifying trends, seed patents, insights into the R&D focus of key players, etc. The findings of the landscape study are collated in a customized search report based on client's requirements. Another key area of patent analytics is Gap analysis (also referred to as white space analysis). It is primarily performed to identify the unexplored gaps or white spaces in a technology area that have a potential for innovation. White spaces in a technology are identified after conducting a preliminary landscape study of the technology. Gap analysis enables a client to identify and exploit areas where R&D may be conducted for generating innovation. Moreover, gap analysis allows the client to gain a competitive edge in the market. Scope & Turnaround time: Depending upon the nature of client's request, technology and budget. Patent Valuation Valuation of an intangible asset, such as a Patent, is a complex process. However, patent valuation becomes mandatory while conducting a variety of transactions such as transfer of ownership (licensing or assignment) of the business or patent, due diligence, collateralized financing, financial reporting and taxation matters. Further, patent valuation may also be needed to support litigation matters, such as quantifying patent infringement damages. Furthermore, patent valuation provides insight into decision making related to allocating the expenditure in the research and development activities. We combine our experience of handling such matters with knowledge of valuation techniques to assist clients in arriving at a 'fair value' for their patent. Turnaround time: Case-specific (depending upon technology area, patent family and client budget)
7 PATENT SERVICES (contd.) Freedom-To-Operate (FTO) Search An FTO study is conducted to determine whether introduction of a product in geography would infringe upon valid IP rights of an entity residing in that geography. An FTO study is typically conducted by identifying active patents or patent application publications that could pose as commercial barriers in the jurisdiction targeted for the manufacture, sale, use or export of the proposed product. Therefore, FTO study serves as an effective risk assessment tool for assessing commercialization of a given product at a given time, and in a given jurisdiction. Our team of experienced professionals first develops an in-depth understanding of the product features, and, thereafter conducts a detailed search for identifying active patents or patent application publications that map on to the product features. The claims of the identified active patents or patent application publications are then analyzed for potential infringement by the product features. The findings of the FTO study are collated in a customized report based on client's requirements. Scope: Patents Specific to a country Turnaround time: Business days (depending upon the product's features) Patent Illustration Our team of patent illustrators utilizes state of the art software to produce high quality patent drawings from rough client sketches, photographs, prototypes and sometimes even from plain description. The high quality patent drawings supplement the content described in the description section to bring out true flavor of the disclosed invention. Scope: AutoCAD/ Visio drawings as per jurisdiction specific guidelines Turnaround time: 2 3 Business days
8 TRADEMARK SERVICES One of the most valuable assets of a business or a product is the name and goodwill associated with it. Business houses and people today are more aware of the importance of a registered trademark and therefore, are readily investing in marks that may have millions of dollars worth of goodwill. However, applying for a trademark does not guarantee that the mark will be registered. This may be due to many reasons such as adoption of a trademark confusingly similar to a trademark currently in use by other. Business houses invest heavily for advertising their name and products and sometimes falter at the most crucial phase in getting their marks registered. Our team of professionals is specialized and dedicated to protecting the innovations and names that drive businesses around the worldwide. Protecting the name may very well be the most important business decision to be made and as such, before the business houses spends time and money investing in their business, we make absolutely sure that the name is not already owned by someone else and that it is available for use. Some of the services we offer in this regard are: Trademark Search Trademark Filing and Prosecution Support Trademark Enforcement Support Copyright Services Copyright protects expression of thoughts and ideas in the literary, scientific and artistic domain, in any mode or form of expression. Copyright provides protection to the authors of "original works of authorship" including literary, dramatic, musical, artistic, and certain other intellectual works, both published and unpublished. Copyright protection provides benefits in the form of economic rights, such as by making copies, issuing copies to the public, performing in public, broadcasting and use on-line and to obtain monetary benefits therefrom. However, it may be pertinent to mention here that there is no formal registration process required in order to obtain a copyright protection. Once a work has been created, it is automatically protected by copyright laws. However, some national laws allow for registration of works, which in turn serves as prima facie evidence in court of law in case of infringement. Some of the services we offer in this regard are: Copyright Search Copyright Filing and Prosecution Support Copyright Enforcement Support
9 CASE STUDY I CASE STUDIES Patent Portfolio Management/ Claim-Chart Mapping Client: A US-based Fortune 500 company Scope of Assignment: Identify revenue-generating opportunities from its patent portfolio Epiphany Solution: The study was conducted in three phases: In the first phase, Epiphany developed a multi-tier taxonomy for categorizing patents into groups. On ascertaining the structure of the taxonomy with the client, the patents from the portfolio were bucketed into the categories of the taxonomy. In the second phase, technology standards applicable to the pool of patents in each category of the taxonomy were identified. Based on the identified technology standards, a substantially comprehensive list of products in the market adhering to these technology standards was identified. The products were grouped based on the company offering these products. In the third phase, products of select companies were chosen for further study based on consultation with the client. The features of the products of the selected companies were mapped onto claims of selected patents for estimating the extent of overlap/infringement. The analysis provided by Epiphany enabled the client to build a case for licensing and thereby monetize a portion of their dormant IP. CASE STUDY II Freedom-to-operate Search Client: An India based glass-manufacturing company Scope of Assignment: Perform a clearance search for Glass manufactured by a particular process for US & India Jurisdiction Epiphany Solution: The process of manufacture of the glass was studied in minute detail in conjunction with the R&D Engineers at the client location. Important process steps that can be retraced from the end product were identified. A patent search restricted by Jurisdiction was conducted for India and US Jurisdiction, respectively and relevant patents for each of these important steps were identified. Identifying relevant patents for the Indian Jurisdiction comprehensively is a sizable challenge as the digitization of the records at the Indian Patent Office is still a work in progress. Records only after 2005 are available for search on the Indian Patent Office website and further the search is limited to certain sections. For example, no full text search is possible. In addition to performing a search on third-party database for results prior to 2005, team members visited the Delhi Patent Office library and manually checked records of publications for identifying relevant results. Further, a check was performed on Ekaswa CD records maintained by the Indian Patent Office to ensure that no record was left unchecked. On identifying the patents relevant to the study, claims of the identified patents were mapped to the process steps for identifying the extent of overlap and the analysis provided to the client. The analysis provided by Epiphany enabled the client to identify potential IP bottlenecks and accordingly design necessary work-around techniques for manufacturing glass by tweaking aspects of the particular process.
10 CASE STUDY III Invalidation Study Client: A UK-based law firm Scope of Assignment: Conduct a validity study of three patents that were used for constructing an infringement case against a client of the law-firm Epiphany Solution: The claims of the three patents in question were studied and an in-depth search was performed to identify results relevant to the patent claims. The patent literature search was conducted on Thomson Innovation patent database. The patent literature search included various searching techniques, such as Keyword based search, IPC/US Class/ECLA based search, Assignee/Inventor name search, Citation Analysis based Search and File history based search to ensure comprehensiveness. The non-patent literature search was conducted on technology specific databases like IEEE, ACM, Scirus, ScienceDirect, CiteSeer using keywords, author name and citation analysis. Further, sources like Internet Archives (also referred to as the Wayback machine) were searched to identify expired/cached web pages citing the relevant references. A strong case for invalidating each of the three patents was built around the identified references. Further a visual mapping of the identified references and individual elements of the claims were provided to the law-firm. Epiphany deployed a large team to complete the invalidation search of three patents within 8 working days enabling the law firm to meet the end client's deadline. Further the law firm was able to pass on sizable cost savings (~40%) to the end-client.
11 EPIPHANY - CLIENT ENGAGEMENT MODELS: Epiphany employs various collaborative set-ups for engaging with the client. These include - the On-demand model, the Full Time Equivalent (FTE) model and Offshore Research Centre (ORC) model. A client can chose any of these engagement models based on the desired extent of requirement. On-demand Model For one-time project requests or irregular work assignments, the On-demand model may be most suitable for the Client. The Client typically provides a request for proposal (RFP) to Epiphany, which will outline the requirements and scope of the assignment to be performed. Epiphany responds with the proposed project methodology, cost estimate and timeline for executing the assignment. After finalizing the scope and the timeline, and receiving an approval, Epiphany will proceed with the execution and the delivery of the assignment. Full Time Equivalent (FTE) Model For regular workflow of assignments, the FTE model may be most suitable for the client. In this model, the client commits to a certain volume of work for desired duration. Epiphany and the client mutually decide on a number of associates required for executing the assignments. Epiphany will then provide a set of suitable profiles for the client to choose from. On receiving the selection, Epiphany ensures that the selected associates are exclusively available full-time for the client. The benefits of this model are several. The client benefits from the continuity in team executing the projects, as the know-how of technology/processes is not lost after execution of a particular assignment. Further, the charge-rates for the FTE model are substantially discounted as the benefits for Epiphany is passed on to the client. Offshore Research Center (ORC) Model The ORC model offers a full time dedicated team to execute all requests sent by the client. The team may initially visit the client facility to understand the scope of the work, the processes to be followed and client-specified best practices. The team may then exclusively respond to the directives of the client for execution of assignments. The benefits (including the discounted charge rates) of the FTE model are applicable to the ORC model as well. Advantages of engaging Epiphany Team - Professionals in charge of executing projects hold advanced degrees in their respective field of specialization, are registered patent agents with the Indian Patent Office and have substantial experience in handling of IP matters for a diverse array of clientele Quality The wealth of experience gained from servicing global IP clientele and the know-how of industry best practices accrued from working for some of the top industry players enables Epiphany to provide best-in-class services Cost The technical know-how of our professionals and the wealth of collective experience combined with the proprietary tools and methodologies enable Epiphany to provide substantial cost savings (sometimes to the tune of 50%) to our clients and improve turnaround time Adaptability - We recognize that our clients have unique requirements and no 'one-size fits all' solution exists. We deal with Innovations and there is no reason why we cannot be innovative with our solutions. So, we creatively adapt to various client requirements and preferences, be it cost consideration, an impossible deadline, requirement for a dedicated team of Epiphany team members or even relocating to on-site location for confidentiality requirements.
12 REACH US: Located in Bangalore, India Registered address: Epiphany IP Solutions First floor, Earthen Phoenix, 10th E Cross, Nagvarapalya, C. V. Raman Nagar, Bangalore, , India Phone: / mail@epiphanyipsolutions.com Website:
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