FTO Case Study
Recently one of our clients was
looking out for an FTO search for Georgia and Vietnam.
The patents for this jurisdiction are not readily available.
Initially the client had conducted a preliminary search at
his end, but due to scarcity of the available data and
linguistic barriers, no relevant results were found.
Through our wide database coverage and access to machine
translated publications for a huge number of geographies,
including low patent filing nations such as Georgia & Vietnam,
we were able to extract relevant alive patents, necessary to
get the product cleared for marketing.
We conduct country specific searches depending on the
technology domain to uncover essentially relevant prior art
that can help the client to make an appropriate business
decision regarding the commercialization of his product.
A search project in 3 Hours
A client of ours had a sudden and urgent need of finding
prior art which could potentially invalidate 5 patents in a
matter of a few hours. The client got in touch with us late
at night when most of our search teams are not available.
Looking at the situation we gave a suggestion to our client
that we can provide you with a way out with the help of our
Automated First Pass Invalidation Tool XLPAT. For every subject
patent the search tool took around 10 minutes to take out
results which could potentially invalidate it. Thus again
proving that TT Consultants is a valuable ally and a trusted
business partner when our clients face difficulties and tough
Clients Reply - Thank you. Our team
is still going through the results and is finding some promising
references. We appreciate the prompt service and help.
Time and again TT Consultants has proven its worth by building
on foundations of innovation and trust.
We had a client who was looking for a Landscape Analysis on
Strain relief connector; cord grip; cable connector; cable gland
Product Description and Application
Strain relief connectors are used to provide
strain relief for electrical cables/cords that
are connected at to a junction box or access
fitting. They are used to prevent pull-out
damage to cable/cord connections.
Patent Search Requirements
List of patents with specific relevancy to
strain relief connectors with special attention
How the device grips the cable/cord
We are particularly interested in strain
relief connectors that consist of a grommet
(also known as bushing, gland, tube, etc.)
with ‘teeth’ that help to grip the cable/cord
when the cap of the connector is tightened
Regions: Canada and US
Types of Patents: Expired/Non-expired/Applications/Provisional/Non – Patent Literature.
Our Analysis gave him a clear picture about the
patent’s and NPL which were filed under this
domain, top assignees, top players in the
industry. The analysis helped them identify
top Companies who were doing heavy R&D on
gripping mechanism. A detailed report explaining
different types of gripping mechanism. Final
output included an excel sheet of relevant patent
bucket, a pdf file with the graphical analysis
and a power-point presentation for the available
solutions which helped our client get a complete
overview of the different gripping mechanism
Tough Invalidity case and how we cracked it
PROJECT REQUIREMENT AND CLIENT’S INSTRUCTIONS:
A Joint Defense Group (JDG) of 20
companies approached TT Consultants
for performing an invalidity search
for a patented technology in the field
of Internet Security and DRM (Digital
Right Management). It was a short
duration project as Inter-Party Review
(IPR) was to be filed by the JDG in a
few days. They had also performed an
initial search on same case from other
competitor firms but they were not
satisfied with the prior arts found.
They also asked us to exclude the
references which they were already
aware of (around 200+ references).
SOLUTION PROVIDED & CLIENT’S FEEDBACK:
We at TT Consultants follow a very detailed
standard operating procedures (SOPs) defined
individually for different type of searches.
We follow 20-step SOP for doing a normal
validity/invalidity search. We also pay a lot
of attention on searching the foreign prior
arts and non-patent literatures (NPLs).
We started the case by performing an exhaustive
search on variety of databases which cover
machine translated publications for a vast
number of geographies (100+). As a standard
operating procedure of all invalidity searches ,
we performed inequitable conduct search. We also
performed search on patent office websites of
different geographies in native languages. We
did not focus only on identifying the 35 USC
102 prior arts but we also tried to combine
the references on the basis of the broadest
reasonable interpretation. To all these reason,
we were able to identify some good patent
citations which remained untouched by the other
competitor companies. Through our expertise
in NPL searching and access to best search
engines like IEEE, ACM, Research-Gate, etc.
We also uncovered a few relevant non-patent
With 3 updates in 5 days, TT Consultants uncovered
6 relevant references (4 patent+2 Non-patent) in
total which were not known to the client earlier.
Our findings played a major role in IPR proceedings.
It was not easy going at all. But as very well
quoted “the success is more tasteful when
it comes the hard way”. Following the
success of that case, JDG group hired us to do
the follow up searches for 8 more cases. The
original client feedback is as below -
We were quite happy with the results in the
invalidity patent search. The top 6 references
you had identified were all included in our
initial invalidity contentions which were due
on the specific date. I had spoken to you
earlier about another case, one related to
computer graphics. In that case, the joint
defense group did an initial search. We’ve
reviewed those results and are looking to do
a follow-on search. I’ve cc’d my colleague
here, who is leading our effort to organize a
second prior art search in that matter.
It was really a tough project and one of those
that we remember the most. We learned a lot from
that case and grew stronger after that.
Prior Art Search Projects related to domain of Technology Standards
Invalidation Search for an EP patent in the
domain of Wireless Communications and OFDM
scheme in particular.
APPROACH TO JOB:
There are well established search practices in
our field like keyword, classification and
assignee/inventor based search which every
searcher has to perform. In addition to those
practices, we have gained significant
experience in Technology Standards while
working in the field of Wireless Communications.
So, there was a possibility to find certain
IEEE and 3GPP or ETSI related documents relevant
for the claim. We utilized our knowledge while
working in technology standards in the past
and performed the advanced search on the 3GPP,
ETSI & IEEE databases to uncover the technical
documents that are published as a part of
Standard development process. We were able
to drill down our search to a particular set
of specifications and finally map few of them.
Furthermore, working knowledge of Essential
Patents (related to Standards) was also helpful
in conducting a thorough search.
DISTINGUISHING FACTORS & CLIENT FEEDBACK:
We lay lot of importance on non-patent
literature (NPL) in Prior Art search projects
in addition to detailed patent search. This is
the reason we were able to conduct search on
3GPP, ETSI & IEEE databases and find relevant
technical documents in the end. Besides these
sources, we have access to many other paid
databases for non-patent literature. We believe
that non-patent world is not yet structured as
Patent world. Also, Patent examiners have a
comparative disadvantage in searching for
non-patent prior art because of time constraints.
We have exploited this whitespace and become
capable enough over the time to provide relevant
NPLs in our reports. In this project, two
3GPP related documents and one EP patent citation
uncovered using the search techniques mentioned
above were considered as highly relevant by the
client. So, he appreciated us after review of
the report and also asked us about how we reached
those relevant results.
Landscape for Home Automation Solutions Market
A client who was interested to enter into
HOME AUTOMATED SOLUTIONS market wanted to
analyze the patent landscape in this technology
and see who were the top assignees and countries
of most active patent filing. The client was
also interested to see who all were the top
inventors in this technical space and for
which companies they were working. The scope
of this study also demanded us to provide
whitespace areas where the client can focus
his research and development and patent filing
in the coming years.
APPROACH TO JOB:
The project started by conducting a background
study on various technologies related to
automated solutions in home category and
analyzing a number of patents for a general
overview. This was followed by formulating
queries on patent databases to extract patents
in the required field of: Automated solutions
in home management. The parallels like
mechanical industry or automobile companies in
areas of robotics and software’s etc; were also
covered. The study was followed by extracting
patents of top competitors in the field of home
automated solutions and analyzing what they have
done in the area of automation particularly with
respect to improving it, or metrics for reporting
it. Patent filtering was done to remove irrelevant
patents which were not related to our focus area
of landscape review and a relevant patent bucket
was finalized which further covered going through
all relevant patents in detail to understand the
technology in greater depth and formulating
different technical categories to categorize
the patent in different areas of scope. By
categorizing each patent into the number of
technical categories formed with searcher’s
input into the patent novelty, inventive step,
problems addressed and the solutions provided
helped us to bring out intelligence on the
progress of technology in different sectors and
deduction of whitespace areas.
We provided observations and intelligence on the
strategies and technologies which the top
competitors were following. We provided a
detailed presentation of the foreign companies
that were working on automated solutions in home
A list of inventors having most number of patent
applications and the companies for which they
were working was prepared as per the client’s
A summary on available solutions in the foreign
market for the addressed issue was prepared.
Providing a list of all available solutions
related to increasing efficiency and easy
management and what further approaches can be
opted which are efficient and reliable based
on the analysis of the patents and web search.
Final output included an excel sheet of relevant
patent bucket, a pdf file with the graphical
analysis and a powerpoint presentation for the
available solutions and suggested whitespace
areas which helped the client get a complete
overview of the HOME AUTOMATED SOLUTIONS market
all over the globe and strategize his IP in
We had an opportunity to assist a leading Mobile manufacturing company with cross licensing of their portfolio. This involved creating infringement maps and looking out for companies developing around the same technology domain. We provided detailed EoU claim charts, with a list of 20 potentially interested parties investing in similar technologies. Our reports and analysis aided licensing of 50 odd patents from a portfolio of 700 patents.