The Dolcera Blog

Test of enablement - “Any analysis of whether a particular claim is supported by the disclosure in an application requires a determination of whether that disclosure, when filed, contained sufficient information regarding the subject matter of the claims as to enable one skilled in the pertinent art to make and use the claimed invention.”  Source
I have always considered the CAFC judgments as one of the best repository to learn intellectual property. I happened to come across a very interesting case.
Janssen Enablement Alzheimers (pdf) - This case (relating to US Patent No. 4,663,318) goes to prove the necessity of writing very detailed specifications backed with strong experimental data for claims to be upheld in the court of law. In this case, Janssen claimed use of a certain drug ‘galanthamine’ for treating Alzheimers. At the time of submitting the patent for review, the inventor who later on licensed the granted patent to Jansen, did not have sufficient experimental data proving direct probable linkage to use of galanthamine for Alzheimers treatment. USPTO examiner also cited this point, yet issued the patent (this part is weird). Eventually, the claims of this patent were held invalid due to an ‘enablement’ clause - in simple terms, enablement here means the specification did not directly support the claims of the inventor.
The discussions were also adverting to the utility requirement which prevents mere ideas from being patented. As noted in Genentech, Inc. v. Novo Nordisk A/S, 108 F.3d 1361, 1366 (Fed. Cir. 1997), “[p]atent protection is granted in return for an enabling disclosure of an invention, not for vague intimations of general ideas that may or may not be workable.
Being an inventor myself, this case intrigues me that if we find a novel use for a patented compound, we can get a patent for it. From a business perspective, I feel that it would be prudent that pharmaceutical firms keep track of formulation patents/method of use patents filed by competitors over its own molecule portfolio. This is on the assumption that the competitors are trying to find novel uses of a compound patented by the inventing pharmaceutical firm. If successful, the competition would need to pay royalties to the patent holder of the novel compound (assuming the patent holder is willing to license it on fair terms).
For the patent searching fraternity, the hypothesis of determining patent quality based on disclosed experimental data is quite sound. However, it becomes difficult to retrieve if the experimental data paragraphs are added during the later stages of patent prosecution. The US PAIR information workaround to access the office actions will be of little help especially if the number of patents to be examined is large.

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While BP and the government are still floundering in dealing with the catastrophe, we think that a certain look at the patent landscape might guide Mr. Tony Hayword, CEO - BP with a promising business strategy for the future. More often than not, the business decisions involving the patent due diligence / strategic IP kind have had a desired effect on the final outcome.

In addition to the $20 Billion fund dedicated to oil spills, it would also be prudent to look at the intellectual property of companies with deep sea oil capping technology. The immediate steps could also dwelve into mapping its own patent portfolio for potential synergy.

The following graphs shows the top patents assignees companies holding relevant patents of interest to BP at this juncture to seek deep sea oil capping technologies and one of them could be a potential target for BP to acquire or to in-license.

Top IPC Classes with their definitions

Note: The above IP analysis is only a sample derived from the respective IPC classes and we have withheld the comprehensive data for data security purposes. Please contact us for more information while we will be glad to help you.

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SAN MATEO, Calif.–(BUSINESS WIRE)–Dolcera Corporation, a leading information services and technology firm that helps companies quickly and effectively navigate through their entire innovation cycle to achieve successful business outcomes, today announced its new Patent Dashboard, available for the first time as a standalone platform.

Dolcera’s flagship software as a service (SaaS) Patent Dashboard is a proprietary Web 2.0-based collaborative tool that enables companies to visualize, search, and map the relevant competitive patent landscape, determine patent value, and ultimately accelerate the time to commercialize their patents. The new Patent Dashboard v1.1 provides greater flexibility and control as well as enhanced search and reporting capabilities.

Mapping the Patent Landscape

Today, patents are under greater scrutiny, take longer to be approved, and can cost several hundred thousands of dollars from application until grant stage. At the same time, patents represent new sources of revenue through commercialization or acquisition, and are also viewed as points of differentiation and competitive advantage.

The Patent Dashboard’s ease of use and flexibility, along with its collaboration capabilities, make it easy and practical for experts and non-experts to use. It may also be used alone or with other patent tools, such as those for search, intellectual asset management, or research.

Among the new features of the Dolcera Patent Dashboard Tool v1.1 are:

• Custom Taxonomies and Patent Additions by users on the fly, based on their topics of interest;
• Editable Patent Categories that can be easily moved within the Dashboard;
• Enhanced Researching and Reporting, with patent searches (even complex Boolean ones) and information filters; and
• Enhanced Collaboration via relevance rankings, referral tagging, track changes, and data security for selective user access.

The Dolcera Patent Dashboard is sold directly; a single full and functional user license starts from $49 per user per month.

About Dolcera

Dolcera is a leading information services and technology firm that helps companies quickly and effectively navigate through their entire innovation cycle to achieve successful business outcomes. The company’s mission is to deliver high-quality Intellectual Property (IP), technology, and market research services that can be deployed easily and quickly within a company or department. Dolcera’s products and services are used by Fortune 500 and Global 1000 organizations across a wide array of industries including alternative energy, biotechnology, chemicals, oil and gas, consumer goods, food and beverages, manufacturing, medical devices, pharmaceuticals, semiconductors, software and telecommunications. The company is privately held and based in San Mateo, Calif. and Hyderabad, India. For a demo of the Patent Dashboard, please see: YouTube Link.

For more information, please visit: www.dolcera.com

Dolcera and Dolcera Patent Dashboard are trademarks of Dolcera Corporation. All other products and services mentioned herein are trademarks of their respective companies.

Contacts

Creekside Communications
JoAnn Johnston, 650-322-6245
joann@creekside-communications.com
or
Dolcera Corporation
Manikandan B., 650-269-7952
manikandan.b@dolcera.com

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“Is it a bird, is it a plane…” What is the Dolcera dashboard and how does it fit into the constellation of other patent products? Three types of patent applications have been available to IP professionals over the years:

1. Patent search engines: In this category, we have the Thomson tools (Micropatent, Delphion, Thomson Innovation), Questel, Lexis-Nexis, Google Patents, and the patent office’s own search tools (USPTO’s search engine, eSpaceNet, etc.).
2. Patent analytics tools: In this category, we have the desktop tools (VantagePoint, for example), and the online tools such as Aureka, Innography, and PatentInsight Pro.
3. Intellectual asset management systems: In this category, we have FoundationIP, IPMaster, Anaqua, and many others.

Patent professionals and other patent-aware professionals (inventors, scientists, business development/licensing managers) need tools for the following tasks:

1. Search: Conducting patent searches on patent databases around the world.
2. Categorization: Organize patent data (one’s own patents or competitors’ patents or those of a potential acquisition) into categories and groups that can be used for easy access to patent information.
3. Analysis: Analyzing large quantities of patent information to understand trends and to make business decisions.
4. Sharing/Presentation: Share “raw” patent data and the analysis with large teams of people.
5. Collaboration: Obtaining feedback from other stakeholders in the organization, or from partners and collaborators (outside counsel, for example) on the patent data.
6. Docketing: Tracking one’s own portfolio through the prosecution process and beyond.

The existing products do a good job of search, analysis, and docketing processes. While categorization, sharing/presentation, and collaboration are equally important aspects of the patent world, they are underserved by the tools described above. Enter the Dolcera dashboard. The dashboard focuses on the three tasks: patent categorization, patent sharing/presentation, and collaboration. With the dashboard, these three tasks are a breeze: you can take your patent sets and categories, organize patents into the categories, share the results with an interactive presentation platform, and collaborate with your colleagues easily. The dashboard is the Facebook of patents, and not the Google search engine. Dolcera also provides high quality patent search and analysis services as well, using some of the excellent search tools described above, as well as using some of our internal proprietary technologies.

Ranking makes life easier. Be it top 10 companies, top 10 universities to study technology or to choose amongst top 10 sci-fi movies you want to watch on the weekends; ranking allow us to choose the best amongst the available. Time saver, decision influencer and extremely helpful are the ranked material.

At Dolcera, we thought of applying the ranking methodology to patents. We have ranked patents based on a variety of parameters. First factor amongst all remains the client focus, second, sufficiency of disclosed information in patents and third credibility of a patent to perform the same process/art with higher efficiency than any other patent with similar focus.

Let us consider an example, the first table in the image below show patents with similar focus of decreasing tumor volume using RNA interference (RNAi). The patent one has disclosed maximum information in this area and in addition to the desired data, it has also published a lot more supporting information derived from other experiments. Further, as the rank goes down the percentage decrease in tumor volume decreases. Some may argue that patent 2 has disclosed more decrease in tumor volume than patent 1 but then patent 1 has disclosed more supporting data, taking its overall weighted score higher. Of course, if the client is still interested only in comparing tumor volume, patent at rank 2 will come at rank 1. Hence the ranking is customized to suit the client requirements.

The ranking of patents is not that simple as it may sound. The analysis team has to encounter challenges and figure out the ways to overcome them. Graphs, charts, instrumental outputs etc. will not give you data in percentages which can be just copy-pasted to compare. They have to be calculated first using mathematical tools which may vary from calculating areas under the graphs or applying differentiation & integration on instrumental outputs, to allow the reader to compare results before making the final decision. It’s considered an absolute value add to the decision making process by the clients who have sought such a service from us.

Not all experimental data will be quantitative. For people familiar with biotechnology would know that there are experiments (such as gel electrophoresis, staining etc.) that give qualitative or quasi-quantitative results. I am sure, the same will hold true with other technology fields too. Second part of the figure above summarizes few patents which can not be ranked as there is no data yield from such experiments and hence comparison is not possible. But then why miss them? We provide a Dolcera summary table which will give reader an idea as these experiments were atleast conducted and disclosed in patents. This comparison will thus strengthen the decision to be taken from ranking matrices discussed above.

This systemic approach of collecting, sorting, analyzing, and finally ranking the data has the following advantages:

1. Saves time!
2. Easy comparative analysis.
3. Helps in competitive watch
4. Decision on in-and-out licensing can be made.
5. Strong baseline for future scientific investigations.

Who will be benefited?

Scientific community: Extensive experimental data, comparison matrix of data from different patents with same focus is a feast to researchers and scientists as it helps them to choose best technologies.

Patent attorneys: Allows competitor watch, supports their decision on in and out licensing.

Venture capitalists / investors: Patent ranking based on disclosed information helps investors to decide patents to further invest upon.

Which technology fields are covered?

Patents in all the technological fields can be ranked. You just need to tell us the focus area and we will rank the patents for you. The ranking and weighing scores can be customized to suit user’s requirements.

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The results of PG diploma (2008-2009), a course offered by NALSAR - Hyderabad in patent laws, was declared today. With 100 % passing percentage the environment in office was jubilating.What else could be better Diwali gift than this, said the cheered Dolcerians?

Dolcera is first to report online analysis of passing percentage this year. The graph below reflects the trend of how students all over India performed in the exam.

Click here to download the result sheet.

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Call them “patent terrorists” or “paten trolls” they are here to stay. It needs constant vigil and dexterity in analyzing patents to shield those companies that have no tangible assets, products or customers—just a team of lawyers who write demand letters, file lawsuits and watch the dollars roll in. And the trolls are only one of the hosts of issues in-house IP counsel are dealing with right now as IP comes to the forefront of business law. Hence the oft repeated slogan “prevention is better than cure” holds well even in this context.

A quick mention of Dolcera’s patent dashboard is worth mentioning here. The patent dashboard has served as an early warning system for the in-house legal professionals of many Fortune 500 and Global 1000 organizations.

Most of these professionals would acknowledge that the lack of prior art information has led to any patent troll case. The patent dashboard’s collaborative feature makes it possible for sharing the prior art / product clearance searches within the organization.

Further, a regular analysis of patent portfolios of the known trolls within the industry and any closely-related industries can be pivotal in the prevention of a troll impact. The use of patent dashboard during the product design stage can ensure that all patents held by a known patent troll cannot be asserted in good faith against the products. In addition to this prevention measure, organizations can be well informed with the opinions on these patents held by patent trolls. Unlike many other contemporary tools, patent dashboard has been developed with active inputs from legal professionals from various organizations.

The issues sighted above are to prevent any possible attack from a patent troll; hence the need for in-house counsels to sift through a zillion patent documents and other scientific literature is well ascertained. Patent dashboard helps the legal professionals to structure the documents and also provides a solution to read only the relevant documents from the entire set. This aspect of the patent dashboard is critical for a legal professional at every strategic crossroads that seeks a very important decision.

This software has made it historical to exchange patent PDF documents through emails. Dolcera’s patent software holds all the relevant documents of the legal department in a central place for any in-house legal counsel to refer at any given time. The https enabled secure patent dashboard simply opens in any web browser. This award winning patent software helps in easy collaboration amongst geographically distributed teams inside large organizations.

“We had TMI — Too Much Information — going on here. This (Dolcera Dashboard) is a nice hybrid,” says says Michael Jaro, Chief Patent Counsel, Medtronic.

This patent analysis software aka patent dashboard has more to it. The rating and tagging feature of the document makes the future references of a document easy. The drag and drop feature further enhances the usability of the software.

“We have specific futuristic road-map carved out for the patent dashboard so that the lives of patent attorneys are made easy. At Dolcera, we believe that the current version of the patent dashboard is the first step towards making robust patent software” says Samir Raiyani, CEO of Dolcera.

The use of patent dashboard as described by one of the power users Mr Jaro himself “Each month, the Internet-based dashboard culls recent patent grants and applications from around the world and separates them by topic into different “buckets” so attorneys with different specialties don’t have to wade through irrelevant material. The culling is a result of both an automated search algorithm and human review performed by Dolcera’s Indian employees.”

“We have many tools to choose from, but there is more information out there than any single human being can feel comfortable digesting,” Jaro says. “This is just one way we thought we could do a better job of keeping up.”

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The PharmaCI conference is scheduled to be held on 15^th - 16^th September 2009 at New York. Ed Rozenberg, one of the founders of Dolcera will present a talk on “Unlocking the hidden potential from the abandoned molecules. - A systematic CI driven approach!”

 With the advancement of pharma industry there are two trends which we have witnessed that each company is focusing on a handful of therapeutic areas and exiting from other therapeutic areas resulting in “orphaned” and “abandoned” molecules. More so, many other companies are targeting smaller subpopulations in many therapeutic areas based on the latest scientific understanding.

Dolcera will unfold that how competitive intelligence can help to utilize the accumulated knowledge (clinical trials, toxicology analysis etc.) of the abandoned molecules to bring them to the market very quickly. The strategy will be a combination of scientific, market and patent intelligence to help unlock very valuable opportunities.

We sincerely hope that this presentation from us would help the research community from some of the world’s top pharma, biotech and health care companies such as Global Pharma Alliance, Zymogenetics, Pfizer, Boehinger Ingelheim, Roche Diagnostics to name a few.

We welcome all our blog readers to be part of this conference and contribute to the knowledge shared.

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The US India IP conclave on Information technology organized at Taj Krishna, Hyderabad started on a low note with the news of death of YS Rajasekhara Reddy, Chief Minister Andhra Pradesh in helicopter crash on 3rd September 2009.
The two days event organized by CII (confederation of Indian Industry) in association with USPTO Global Intellectual Property academy soon started to blaze as reputed panelist, both Indian bureaucrats and members of US embassy started addressing the audience. Welcome address was given by Shakti Sagar, Vice Chairman CII_AP & MD ADP Inida Pvt LTd. Theme address was given by Dominic Keating, IPR Attaché where he applauded Indian IT industries for their contributions to Indian economy. He mentioned that IT business has grown from 150 million US $ in 1991 to 50 billion US$ in 2007 and is further expected to rise to 900 billion US $ by 2020. Hyderabad alone exports IT worth 163 billion US $ and has shown a growth of 323% from year 2002.

GS Ragahavender, Registrar of copyrights, Copyright office, Government of India in his key note address discussed about legislation, management and enforcement as three pillars to assure working of IP laws. Cornelis M Keur, Consul General, US Consulate admired Andhra Pradesh as third state after Maharashtra and Gujarat in terms of growth in Economy. Concluding remarks of the inaugural session was given by Dr. S Chakravarthy, IAS(R), Advisor-APTDC.

Soon after a short coffee break the conference resumed on special plenary: The digital dilemma: Intellectual property in the information age. Dr. A Garg, Director-IPR department of Information technology, Govt of India emphasized that SMEs (small and medium enterprises) has to play a leading role in innovation. Incubation parks, multiplier grand scheme, SIP-EIT (support international patent protection in electronics and IT) have been started by government to support innovation. Under SIP-EIT, a financial support of upto 50% of total patent processing cost including Attorney’s fees, patent office filling fees, examination fees, patent search cost and additional cost for entering national phase up to grant/issue will be given. The support will be in the form of reimbursement of expenses in actual to the applicant. Support will however be limited to Rs. 15 lakhs or 50% if the total incurred on filling each invention, whichever is less.

Prof M Sridhar Acharyulu, MHRD IP chair professior, NALSAR, Jennie Ness, Regional Inteleecual propery Attaché for South east Asia US embassy Bangkok and Madhukar Sinha, Prof-IPR, center for WTO studies, IIFT shared their knowledge on various dilemmas to be confront in the rapidly growing age of IT.

Third session on strategies for protection of incremental innovation and patentability of software: challenges for IT/software industry started after high-lunch. The session was mainly headed by corporate professionals enlightening on Indian, US and European laws on software patenting and copyrights. BLV Rao, VP- corporate affairs, Infotech enterprise Ltd initiated the session with a focus on incremental innovations. Dawn Jos, Pat Engg-Asia, Texas instrument was next speaker in the session. Himanshu Goswami, IP attorney, Microsoft India and Santanu Mukherjee, lead-IPR attorney, Qualcomm India discussed intrinsic details on IT and Indian patent article 3 (k), European article 52 (2), 52 (3) and US laws on software patenting.

Dominic Keating unfolded the legalities of patenting software and business methods in US. Anil Sharma, Knowledge scientist Dolcera took the stage and discussed one of the most talked about cases in US, “In re Bilski & its implications on software patents.” The presentation kindled interest amongst the audience from the word go. The talk showcased the research work that Dolcera had undertaken in collaboration with Medtronic in Bilski case and its impact on software, medical devices and pharma method patents.

The last session of the day was on open source software: who needs IP, was chaired by Venkatesh Hariharan, Director, corporate affairs, Redhat Asia-Pacific, Prof. KS Rajan, IIIT-Hyderabad and Pavan Duggal, leading advocate in the Supreme Court of India. The panelists presented their views on pros and cons of free software versus paid software in context of IP and public interest.

The conclave was a major success and big boost to the city of Hyderabad. The city being an IT hub and IPR industries and law firms already budding, conferences like such will enhance awareness amongst the professionals. Overall, the conclave was a great experience and CII - USPTO effort to increase IP awareness in India is definitely commendable.

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Dolcera has worked with Mike Jaro, the Chief Patent Counsel, to create the Patent Dashboard platform that is now used by dozens of Fortune 500 companies around the world.

Here is an article on InsideCounsel describing Medtronic’s requirements and the Dolcera-powered solution.

Some quotes:

“We have a lot of different technologies that we work with, and as the amount of patents has been escalating, it became more and more difficult to make sure we had good current awareness,” says Chief Patent Counsel Michael Jaro. “We had TMI—‘too much information’—going on here.”

“We knew we needed to do something different,” Jaro says. “We had tried machine-based categorization, but it was not altogether acceptable, because we were getting overinclusive or underinclusive lists.”

“Human beings are much better at categorizing documents into meaningful topics than machines are,” he says. “This is a nice hybrid.”

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