Evalueserve Credentials Pack:
Intellectual Property Services
for International Society of Primerus Law Firms
Your Alliance Executive:
Paul N. Hoagland
Evalueserve North America
Tel: +1 315 655 2262
[email protected]
www.Evalueserve.com
April 2008
© Evalueserve, 2007. All Rights Reserved - Privileged and Confidential
How robust is your IP Strategy?
How global? How scaleable?
How effective? How expensive??
© Evalueserve, 2008, All Rights Reserved.
Presentation Plan
Evalueserve Overview
Evalueserve IP – An Overview
Services Provided by Evalueserve IP
Case Studies of IP Services
Confidentiality and Client Feedback
© Evalueserve, 2007, All Rights Reserved.
Presentation Plan
Evalueserve Overview
Evalueserve IP – An Overview
Services Provided by Evalueserve IP
Case Studies of IP Services
Confidentiality and Client Feedback
© Evalueserve, 2007, All Rights Reserved.
Evalueserve – Your Global Knowledge Partner
 Evalueserve is a Knowledge Process Outsourcing (KPO) firm that provides custom research and analytics
services to companies in the US and worldwide
 Our services include: Legal Process Services, Intellectual Property Research, Market Research,
Business Research, Data & Financial Analytics, Investment Research, and access to a global network
of domain and Industry experts through Evalueserve Circle of Experts.
 The firm was founded by IBM and McKinsey alumni, and has completed over 12,000 client engagements.
 We currently employ over 2,100 full-time professionals located in research centers in India, China, Chile,
New York, and Romania.
 Evalueserve has won several recent awards, including: 2007 CIO-100; 2006 Red Herring Asia Top 100
Private Companies; 2006 NASSCOM IT Innovation Award for Business Model Innovation; Wall Street
Journal (Asia) Top Six Innovative Emerging Companies in Asia; Outsell Top 50 Research, Reports and
Services Companies Worldwide; and Deloitte Top 150 High-Growth Companies in Asia-Pacific.
© Evalueserve, 2007, All Rights Reserved.
A Full-Service Global Research Firm
 Evalueserve has various competencies— Legal Process Services, Intellectual Property,
Investment Research, Business Research, Data and Financial Analytics, Market Research,
and Circle of Experts.
 Our research teams are comprised of highly skilled professionals including Lawyers,
Paralegals, MBAs, PhDs, Engineers, MDs, Chartered Accountants, Scientists, Architects,
Industry Experts, etc.
Evalueserve Value Proposition
Quality
→ Attention to detail in every element of
client interaction
→ Disciplined project management and
communication
→ Accurate and insightful analysis
→ Extensive research infrastructure
Global Coverage
→ Operation centers in India, China, and
Chile
→ Multi-lingual capabilities (50+)
→ Research conducted in the Americas,
Asia Pacific, and EMEA
→ Local ‘in-country’ support
→ 24x5 coverage
Custom/Cost-Eeffective
Fraction of traditional cost
100% customized projects
Access to experts in your field
Multi-industry experience (10,000+
completed projects)
→ Highly scalable/rapid response
→ Flexible working relationship
→
→
→
→
© Evalueserve, 2007, All Rights Reserved.
Synergistic Competencies
Circle of Experts
Fast access to frontline industry experts with unique opinions on markets,
companies, products; 360° view of market due diligence on long-term
investments
‘Executive confidante’ for one-on-one discussions on strategic issues
Elicitation training on most effective and compliant methods to interview experts
Investment Research
Validation of investment ideas
Corporate finance
Equity research support
Industry landscape and company profiles
Fixed income research
Target identification
Quantitative Analysis
Financial modeling and valuation
Data and Financial Analytics
Data cleansing, validation, and treatment
Dashboard solutions and reporting
Statistical modeling and forecasting
Data-driven strategies including profitability analysis, channel assessment,
product affinity analysis/cross selling
Segmentation and cluster analysis
Market Research
End-to-end market research services
Design, conduct and analysis of surveys: B2B, B2C
Data processing
Survey analytics
Market research solutions: employee satisfaction, customer satisfaction, brand
perception, new product development, advertisement effectiveness
Business Research
Market sizing and estimation
Industry and company profiling
Benchmarking
Value chain analysis
Newsletters
Custom list generation
Marketing and sales operations support
Legal Process Services
Paralegal and litigation support services
Legal research
Contract related services
Intellectual Property
Patent application drafting and filing with USPTO, EPO, etc.
IP asset management
Other IP analysis, e.g, licensing of valuable patents,
Infringement analysis (preliminary)
Technology Assessment
© Evalueserve, 2007, All Rights Reserved.
EVS Serves 1,100+ Leading-edge Clients
Automotive
Financial Services
100+ Fortune 1000 Companies
Energy and Utilities
Asia Pacific
Chemicals
Consumer Goods
Europe, the Middle
East, and Africa
Latin America and
the Caribbean
Retail
200+ Research, Consulting, and
Law Firms
Life Sciences
Information
Technology
Manufacturing
North America
Media and
Entertainment
800+ Small and Medium Businesses
Telecommunication
Logistics and
Transportation
© Evalueserve, 2007, All Rights Reserved.
Growth Milestones
Aug ’07:
2,000+ Professionals; 1,000+ Clients
Feb ’07:
Acquired Nitron Circle of Experts
Dec ’06:
1,400+ Professionals; 1,000+ Clients
Nov ’06:
Commenced Chile Operations
2007
2006
2005
Dec ’05:
800 Professionals; 800 Clients
Sept ’05:
Commenced China Operations
2004
Dec ’04:
400 Professionals; 500 Clients
2003
Dec ’03:
240 Professionals; 200 Clients
Dec ’02:
100 Professionals; 50 Clients
Mar ’02:
Achieved Profitability
2002
2001
Jul ’01:
First Major Client Signed Up
Jan ’01:
Commenced India Operations
Dec' 00: Founded
© Evalueserve, 2007, All Rights Reserved.
Evalueserve Language Capabilities
Asia Pacific
Europe










Bulgarian
Croatian
Czech
Danish
Dutch
English
Estonian
Finnish
Flemish
French










German
Greek
Hungarian
Italian
Latvian
Norwegian
Polish
Portuguese
Romanian
Russian








Bangla
 Burmese
 Cantonese
 Chinese
 Hindi
 Indonesian
 Japanese
 Korean
 Malay

Serbian
Slovak
Slovenian
Spanish
Swedish
Turkish
Turkmen
Ukrainian
Middle East
Americas



English
Portuguese
Spanish
Mandarin
 Mongolian
 Punjabi
 Sinhalese
 Tamil
 Telegu
 Thai
 Taiwanese
 Urdu
 Vietnamese

Arabic
 Hebrew
 Persian

© Evalueserve, 2007, All Rights Reserved.
Intellectual Property and Legal Research
Services Spectrum
Prior Art Search



Patentability assessment
Freedom to operate
State-of-the-art searches
Patent Drafting and Filing




Patent drafting, filing and prosecution in the US, EP,
PCT, Indian Patent Offices, etc.
Office action responses
Foreign filing permits
Translation services
Patent Licensing Support

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Patent out-licensing analysis
Patent in-licensing analysis
Patent valuation
Technology valuation analysis
Competitive Intelligence

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Patent landscape analysis
Portfolio analysis
Patent watch
Patent Litigation Support

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Overlap analysis
Claims charts
Invalidity search
Legal Process Services



Paralegal and litigation support services
Legal research
Contract reviewing
Technical Writing



Courseware drafting
User manual preparation
Brochure preparation
© Evalueserve, 2007, All Rights Reserved.
Circle of Experts
Services Spectrum
For Institutional Investors
For Corporations

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Fast access to industry experts with unique opinions
on markets, companies products
Enhance channel-check surveys with insights from
experts in the field
360° view of market due diligence on long-term
investments
Phone consultations, in-person sessions
or surveys
Relationship-building dinners with market trend
experts, your clients, and staff


For Small to Medium Businesses

For Law Firms


Expert witness testimony from fresh, senior &
knowledgeable business leaders
Opinion on uniqueness of IP & competitive
response by an expert in the field
‘Executive confidante’ for 1-on-1 discussions on
strategic issues
Product/Operations/Financial insights via
Q&A/analyses from 1 hour to several days
Enhance market research or business research with
industry expert insights
Build an advisory board with full range of relevant
talent, available when needed
For All Clients


Elicitation training on most effective, compliant
methods to interview experts
Incorporate expertise in any Evalueserve project
© Evalueserve, 2007, All Rights Reserved.
Business Research
Services Spectrum
Market Assessment Studies
Competitive Analysis
 Market situation including metrics, such as market size,
market growth, forecasts
 Product and value chain analysis
 Competitive scenario
 Identification of strategic partners
 Regulatory environment
 Internal and external communication strategy
 Consumer behavior
 Supply chain and distribution strategy
 Brand perception study
 Pricing strategy
 Commercialization and business plan
 Innovation and R&D focus
 Financial analysis
 Newsletters
Marketing and Sales Support
Innovation Search
 Sales lead generation
 Identification of innovation
 Custom sales collateral
 Benchmarking against existing innovations
 Custom proposals
 Study of innovation networks and identification of best
practices
 Identification of partners
© Evalueserve, 2007, All Rights Reserved.
Investment Research
Services Spectrum
Corporate Finance
Sell-side
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 Company/Sector research
Comparable companies analysis (comps)
Precedent transactions analysis
Company profiles
Industry landscape analysis
Accretion/Dilution modelling
LBO modeling
Target identification
→ Valuation modeling
→ Preparation of equity research notes

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

Industry research
Product support (newsletters, databases)
Editorial and desktop publishing support
Fixed income research
Buy-side
Private Equity/VC

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In-depth industry studies
Portfolio analytics
DCF and relative valuation
Back testing of strategies
Fund manager screening/style analysis
Credit research
Identifying acquisition targets
Validation of investment ideas
Market sizing studies
Valuation of portfolio companies
Comps, company profiles
© Evalueserve, 2007, All Rights Reserved.
Market Research
Services Spectrum
End-to-end Service Offerings
 Market trend studies
 Reseller/Channel partner satisfaction studies
Survey
Design
 Go-to-market/market potential studies
Data
Collection
Data
Processing and
Analysis
 Customer/Partner segmentation studies
→ Attitude
→ Usage
→ Behavior
 Brand perception studies
 New product/concept evaluation
 Market sizing and market segmentation
 Industry analysis
 Awareness, usage, and attitude testing
 Customer satisfaction loyalty/churn
 Competitive intelligence
Surveys

Experience of more than 100,000 interviews

B2B and B2C

Telephonic, online and face-to-face

Experience of 50+ languages

Latest communications equipment (IP telephony) and
survey tools
© Evalueserve, 2007, All Rights Reserved.
Data and Financial Analytics
Services Spectrum
Financial Analytics
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Data Analytics
Fixed-income modeling
Pricing of financial instruments
Mark-to-market pricing of portfolio
Portfolio optimisation
Back-testing of investment strategies
Market risk
Credit risk
Asset liability management
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Customer segmentation
Profitability analysis
Channel assessment
Product affinity analysis/cross-selling
Target marketing/Response modeling
Customer lifetime value
Churn analysis
Fraud detection/risk scoring
Mathematical Modelling

Operations research problems
→ Neural Nets, Simulated Annealing, Learning Algorithms, Markov Chains, Queuing Theory, Bayesian Analysis, Martingales, and
Stochastic Modelling

Decision support problems
→ Finite Element Analysis, Monte Carlo Simulation and other simulation techniques
© Evalueserve, 2007, All Rights Reserved.
Take advantage of our proposal development process…
WITH JUST A SHORT PHONE CONVERSATION AND A LITTLE BACKGROUND
INFORMATION ON YOUR NEEDS AND CHALLENGES, I CAN DEVELOP A
DETAILED CUSTOM PROPOSAL FOR YOU OR YOUR CLIENT.
(PLEASE PLEASE LET ME KNOW IF YOU’D LIKE US TO SIGN
A NONDISCLOSURE AGREEMENT WITH YOU OR YOUR CLIENT.)
PAUL N. HOAGLAND – PRIMERUS ALLIANCE EXECUTIVE
OFFICE: 1-315-655-2262
MOBILE: 1-315-491-7060
[email protected]
Prior to joining Evalueserve, Paul was founder and CEO of AWC Business Coaches, a nationwide
consortium of cross-industry professionals. While at IBM Consulting Paul held several titles, including
Global Market Development Executive with the Global Marketing Strategy Practice, and Principal with the
National Strategy Practice. Prior to IBM, he was a Principal with Computer Sciences Corporation. He has
sold, planned, managed, and quality-assured complex strategic projects in various industries over the
past 25 years. Paul earned his Bachelors degree (magna cum laude) from University of MassachusettsAMHERST, and his Masters degree from Columbia University in New York City.
Let me put together a custom proposal for you!
© Evalueserve, 2007, All Rights Reserved.
Primerus Members can rely on Evalueserve
for many types of custom research projects!
The default location for all work is India. The India hourly pricing rates for the term of this Agreement for Evalueserve’s various service lines are tabulated below.
COST
PER HOUR *
EVALUESERVE LINE OF BUSINESS
Legal Process Services (Legal Research, M&A Due Diligence Back-End Research Support, Paralegal and Litigation Support Services-- including Document
Discovery and Compliance with e-Discovery Rules, Contract-Related Services, Legal Organization Benchmarking, Contract Review & Negotiation Support, InHouse Tool Development to Streamline Contract Management, Legal Data Extraction and Entry, Secretarial Assistance for Legal e-Filings and Application
Processing, CRM Database Setup / Entry / Cleanup / Maintenance, etc.)
Intellectual Property Research (Patent Landscapes, Patent Infringement Studies and Ongoing Monitoring, Patent Filing, Research for Investment Banks & Future
IP-Based Valuations, Patent Proofreading, IP Organization Benchmarking, Legal & IP Opportunity ‘White Space’ Identification, Patent Mapping, etc.)
Circle of Experts (Expert Witnesses, Industry Experts, Retired Executives from Client’s Competitors, Advisory Board Members, Strategic Advisors, etc.)
Business Research (Industry & Market Studies, Competitor Profiles, Identification of - and Outreach to - Target Clients / Suppliers / Distributors / Channel Partners
/ Partners / Buyers / Sellers, etc.)
Investment Research (Newsletters, Financial Profiles, Sector Reports, News Flows, Target Scouting, Equity Research, Company & Industry Report Updates, etc.)
Market Research (Phone/Web Market Surveys, Quantitative and Qualitative Expert Interviews, Member Firm/Customer/Employee Satisfaction Studies, Brand
Perception Studies, etc.)
Data and Financial Analytics (Econometric/Quantitative Modeling, Back Testing Strategies, Forecasting Volatility, Monte-Carlo Simulation, Data/Financial
Analysis, Proof of Concept Validation, Cash Flow & Balance Sheet Models, etc.)
Knowledge Technology (KT) (Sales Dashboards, Management Cockpits, Knowledge & Research Portals, File Conversion, Data Validation and Scrubbing,
CRM/Supplier /Vendor File Maintenance, etc.)
Marketing & Sales Support (ListGen, Updates & Maintenance -- Potential Clients, Investors, Suppliers, Vendors, Business Partners, Partners; Warm Lead
Generation Phone & Mail Campaigns, etc.)
Desktop Publishing & Technical Writing (File layout, formatting, color/logo schemes, document setup, template development, newsletter/marcom collateral/slide
deck reformatting, etc.)
Other (Administrative Support, File/Letter/Marcom Collateral Printing, Hand-Addressed Mailings, etc.)
TBD
* P*Please Contact Paul N. Hoagland ([email protected]), or 1-315-655-2262 for special Primerus pricing options.
lease Contact Paul N. Hoagland ([email protected]), or 1-315-655-2262 for special Primerus pricing options
** Evalueserve will provide access to frontline industry experts-- in any industry vertical, any geography-- through its subsidiary Circle of Experts (CoE). CoE introductory fees are
waived for Primerus & Member Firm projects per this Agreement.
NOTE: Evalueserve will provide fixed pricing for individual on-demand projects upon request.
© Evalueserve, 2007, All Rights Reserved.
Presentation Plan
Evalueserve Overview
Evalueserve IP – An Overview
Services Provided by Evalueserve IP
Case Studies of IP Services
Confidentiality and Client Feedback
© Evalueserve, 2007, All Rights Reserved.
Evalueserve's IP Team
A dedicated team of 204 professionals in Intellectual Property (IP) division
1.
Electronics &
Telecom
2.
3.
Electronics &
Telecommunication
Electrical
Software
Masters
Bachelors
36%
Biotech &
Pharma
40%
Others
24%
DOMAIN
1.
2.
3.
4.
5.
6.
1.
2.
3.
4.
Biotechnology
Pharmacy
Bio medical
Engineering
Chemistry
Chemical Engineering
Medicine
Mechanical
Civil
Industrial
Material Science
PhDs
Masters
Bachelors
Medical Doctors
Masters
Bachelors
BACKGROUND
© Evalueserve, 2007, All Rights Reserved.
EVS IP – Client Base Analysis
Technology
Start-ups
63%
+ Legal and IP departments of:
Law Firms
4%
–
9 Fortune 100 companies
–
7 Fortune 500 companies
–
4 Fortune 1000 companies
+ 38 Technology start-ups
+ 53 SMEs
Fortune 1000
2%
Fortune 500 Fortune 100
3%
4%
SMEs and
other
organizations
24%
+ 8 US Law firms
Clear record of customer delight: repeat business from most of the clients
© Evalueserve, 2007, All Rights Reserved.
Synergy across Service Lines
EVS IP utilizes the expertise of other divisions to provide value-added services
IP + MR
IP + IR
IP professionals conduct
technology intensive
interviews:
+ Interviews with Professors
+ Interview with technical
heads at various companies
IP + BR
IP expertise required for
projects involving:
+ IP valuations
+ Technology intensive reports
BR expertise used for:
+ Analyzing market potential of a
technology
+ Developing company profiles
+ Understanding regulatory
environment
Investment Research
Financial Analytics
Intellectual Property
Business Research
Market Research
© Evalueserve, 2007, All Rights Reserved.
IP Services in China



EVS has started Shanghai
Operations Center in
September 2005
Currently 30 members team
working
Can perform searches in
Chinese and Taiwanese patent
databases, and are building
capabilities in Japanese and
Korean languages

Prior Art Search
 Three key search services:
–
Patentability
Assessment
–
Invalidity/Validity
–
Freedom-tooperate/use
IPAMs
 IPAM or Intellectual Property
Asset Management includes
services such as:
–
Landscape Analysis
–
Portfolio Assessment
IP related projects undertaken in China:
–
Performed two patentability assessment projects
–
Performed A Competitor Patent Portfolio Analysis
for a global pharma company
© Evalueserve, 2007, All Rights Reserved.
Some of the Databases EVS uses in IP
Patent Databases
• Scientific and Technical Information
Network (STN)
• Delphion
• Micropatent (Patent Web)
• Patent Café
• Japanese Patent Office (JPO)
Non-patent Databases
• Institute of Electrical and Electronics
Engineers (IEEE)
• Association for Computing
Machinery (ACM) Digital Library
• Pubmed/Medline
• SPIE (The International Society for
Optical Engineering) Digital Library
• IP.com
• Scirus
• Citeseer
• Find articles
• Science Direct
• Google scholar
• The Society of Automotive
Engineers (SAE)
• California Digital Library
• Stanford Digital Library
• IIT Delhi Library
• Forest Product Journal
• Forest product laboratory
© Evalueserve, 2007, All Rights Reserved.
Presentation Plan
Evalueserve Overview
Evalueserve IP – An Overview
Services Provided by Evalueserve IP
Case Studies of IP Services
Confidentiality and Client Feedback
© Evalueserve, 2007, All Rights Reserved.
IP Services Required at Different Stages of the Invention’s Lifecycle
Pertinent IP Services
Ideation
Early-stage
valuation
Patentability
Assessment
Licensing
Potential
Assessment
Freedom to
Operate Study
Business Impact
Assessment
R&D
R&D Program
and Process
Assessment
State-of-the-art
Studies
IP
protection
Value
extraction
Patent Drafting
Commercialization
& Licensing
Services
Patent Filing and
Prosecution
Litigation Related
Services
Patent
Prosecution
(Office Action)
IP Valuation
Target Audience
Funding /
Insurance
Researchers
Business
Managers
Researchers
Business
Managers
Patent Attorneys
Researchers
Patent Attorneys
Patent Attorneys
Business
Managers
© Evalueserve, 2007, All Rights Reserved.
Patentability Assessment
Description
+ Objectives
– Evaluate patentability/novelty of an
invention with respect to patents/
publications/products already existing
in the domain
+ Role of EVS
– Identify patents/publications/products
having features similar to the invention
– Detailed analysis of the
patents/publications/products
– Determine whether the invention can
be protected under the patent
protection law in a particular
jurisdiction
Process
+ Understanding the invention disclosure
+ Conducting patent search to identify
possible prior art
+ Conducting a product and non-patent
search to identify possible prior art
+ Performing technical analysis of
patents/publications/products identified as
possible prior art
+ Recommending the patentability of the
invention based on the technical analysis
– EVS has conducted more than 600
patentability assessment searches
© Evalueserve, 2007, All Rights Reserved.
Patent Invalidation Study
Description
+ Objectives
– To evaluate whether the
claims/features of a patent are
mapping onto prior art (patent and
non-patent literature) for invalidation
of the patent
+ Role of EVS
Process
+ Understanding the subject patent
+ Conducting literature search to identify
possible prior art
+ Providing technical recommendations for
invalidation of the patent in light of the
identified prior art
– Conducting prior art search for the
subject patent
– Analyzing the identified prior art (s) to
invalidate the subject patent
– EVS has conducted more than 250
invalidation searches
© Evalueserve, 2007, All Rights Reserved.
Freedom to Operate (FTO) Study
Description
+ Objectives
– To determine whether a product,
when launched, has a potential risk of
infringing on some active patents
+ Role of EVS
– Identify active patents that the
product can infringe
– Perform detailed legal status analysis
and technical analysis of the identified
active patents
– EVS has conducted more than 375
FTO searches
Process
+ Developing an understanding of the
product/invention
+ Identifying key features of the
product/invention
+ Identifying technology on which the
product/invention is based
+ Searching patent databases based on the
key features and technology
+ Identifying active patents on which
product/invention might infringe
+ Analyzing family members and citations
of the active patents
+ Performing detailed legal status analysis
and technical analysis of the identified
active patents
© Evalueserve, 2007, All Rights Reserved.
Overlap Analysis / Claims Mapping
Description
+ Objectives
– To determine if a competitor
product/invention overlaps on Client’s
IP or vice versa
+ Role of EVS
– Mapping of product features/
information onto the claims of a
patent
Process
+ Developing an understanding of the
product/invention
+ Identify key features of the
product/invention
+ Detailed mapping of product features
onto the claims of a patent
+ Presenting the results in form of a matrix
of overlap with evidence for the overlap
© Evalueserve, 2007, All Rights Reserved.
IP Landscape Analysis
Description
+ Objectives
– Determine relevant trends and gaps
in competitors’ portfolio and a
technology domain
– Extract inferences from the
determined trends
+ Role of EVS
– Analysis of the IP landscape of the
technology and the key players
– Identification of gaps in the
technology landscape
Process
+ Generate a taxonomy
+ Analyse the IP landscape covered by
the technology features
+ Determine the key players, in terms of
their IP portfolio
+ Determine the IP trends
+ Gap Analysis – determine the “gaps” in
the IP landscape
+ Determine the best patents in terms of
technology and/or commercial value.
– Identification of opportunities for
alliance and research
– EVS has conducted more than 300
landscape analyses
© Evalueserve, 2007, All Rights Reserved.
IP Portfolio Management
Description
+ Objectives
– Assessment and organization of
patents
– Leverage potential gains offered by
patents
+ Role of EVS
– Identify active patents in various
technology domains (IP Audit)
– Assessment of
strengths/weaknesses of protection
offered by patents
Process
+ Generate a taxonomy
+ Analyse the IP and business landscape
covered by the technology features
+ Generate the most important factors that
determine the strength of a patent
+ Analyse each patent accordingly
+ Organize/Prioritize the patents
accordingly
+ Identify key patents
– Identify the most relevant patents in
the portfolio (through a well defined
patent mining process)
© Evalueserve, 2007, All Rights Reserved.
Patent Valuation/Licensing support
Description
+Objectives
Process
Valuation
– To build a patent valuation model to estimate
the value of a patent by qualitatively analyzing
the strength of the patent
+ Performing research to obtain revenue figures
of the licensees, estimate the contribution to
earnings and project the future revenues
– To determine the ‘in-licensing need’ and ‘outlicensing opportunities’ for a company by
analyzing its patent and product portfolio
+ Estimation of contribution of earnings of
products for the selected licensees
+Role of EVS
Valuation
– Ascertaining the past financial returns and
estimating the future values of the IP
– Applying DCF to calculate value of the IP
Licensing support
– Identify the licensing potential for a patent
– Identify cross-licensing opportunities in a
technological domain by analysis of IP of the
client’s competitors
+ Development of a DCF model to estimate the
potential earnings and performing sensitivity
analysis
Licensing support
+ Identifying the major companies having product
portfolios relevant to the domain
+ selecting a set of potential licensing targets
based on product portfolios, market presence
and financial information
+ Performing a ‘Potential Earnings Study’ for the
patent based on a Discounted Cash Flow
(DCF) model
© Evalueserve, 2007, All Rights Reserved.
Commercialization Studies
Description
+ Objectives
– Assessment of commercial potential
of technologies vis-à-vis existing
technologies and market players
+ Role of EVS
Process
+ Identify key market players and existing
technologies
+ Extract market trends of products offered
by key market players and existing
technologies
– Analysis of market trends of products
offered by key market players and
existing technologies
+ Analysis of market trends of products
offered by key market players
– Assessment of commercial potential
based on the analysis
+ Analysis of market trends of existing
technologies
+ Assessment of commercial potential of
the technology under study and
comparing that with estimated market
potential of key market players and
existing technologies
© Evalueserve, 2007, All Rights Reserved.
Patent Drafting & Filing
Description
Process
+ Objectives
– Draft and file a patent application for
an invention with claims providing
optimum coverage
+ Understanding the invention disclosure
+ Role of EVS
+ Upon approval of claims, drafting
specifications for the invention according
to USPTO/EPO/IPO guidelines
– Drafting the claims based on the prior
art provided by the client to cover the
maximum scope
– Drafting the specifications for the
invention based on the claims
approved by the attorney
+ Drafting a set of claims to provide
optimum coverage to the invention
+ Filing the patent application in different
jurisdictions
+ Translating patent applications for filing, if
necessary
– EVS and its legal partners have written and
filed over 1000 patent applications
© Evalueserve, 2007, All Rights Reserved.
Presentation Plan
Evalueserve Overview
Evalueserve IP – An Overview
Services Provided by Evalueserve IP
Case Studies of IP Services
Confidentiality and Client Feedback
© Evalueserve, 2007, All Rights Reserved.
EVS Case Studies: Patentability Assessment
+
Patentability search in the field of semiconductor fabrication
A US Law firm had wanted Evalueserve to conduct a patentability assessment study for an invention in
the field of metallization of semiconductor wafers.
Project effort (hours): 25
+
Patentability assessment for an add-on software
The client, based in US with a research centre in India, is a leading provider of software tools. It deals in
customizing available software to suit the requirements of customers. The client wanted Evalueserve to
conduct a patentability assessment study for an add-on software in field of ERP. The software was
developed based on SAP.
Project effort (hours): 30
+
Patentability assessment in the field of torsion bars
The client, based in Nordic region, is a leading producer of automotive parts. The client wanted
Evalueserve to conduct a patentability assessment study for an invention in the field of torsion bars also
known as anti-roll bars for vehicles.
Project effort (hours): 45
Methodology
© Evalueserve, 2007, All Rights Reserved.
EVS Case Studies: Invalidation Studies
+
Invalidation search in the field of data encoding methods in networks
The client is active in the domain of integrated circuit design. The client wanted Evalueserve to conduct
an invalidation study for an invention in the field of data encoding methods in unreliable networks.
Project effort (hours): 100
+
Invalidation search in the field of materials for medical equipments.
The client is a US based law firm. The client wanted Evalueserve to conduct an invalidation search for
use of shape memory alloys in field of medicine and medical equipments.
Project effort (hours): 110
+
Invalidation search in the field of digital hearing aids
The client is a US based law firm. The client wanted Evalueserve to conduct an invalidation search in the
field of digital hearing aids with an acoustic digital transducer.
Project effort (hours): 325
Methodology
© Evalueserve, 2007, All Rights Reserved.
EVS Case Studies: Freedom-to-Operate Studies
+
Freedom-to-operate search in field of manufacturing of vehicle tires
The client, based in Europe, is a leading manufacturer of vehicle tires. The client wanted Evalueserve to
perform a freedom-to-operate study for a new design of tire studs to be used in Scandanavian countries.
Evalueserve identified the regulations on such products and performed a patent search to identify relevant
patent literature.
Project effort (hours): 40
+
Freedom-to-operate search in the field of ballast water treatment to kill organisms
present in the ballast water
The client based in Nordic region is active in the domain of petroleum and energy. The client wanted
Evalueserve to conduct freedom-to-operate study for ballast water treatment method in ships and other
navigation systems. The focus of this study were Europe, Canada, Mexico, Australia, Japan, Korea, India,
Brazil, Vietnam, China, Nigeria, and Typical ship registration countries (Panama, Liberia, Bahamas, Malta,
Cyprus, Bermuda, Marshall Island, British Virgin Island, Vanuatu)
Project effort (hours) : 120
+
Freedom-to-operate search for a network appliance based solution
The client is a US based firm active in the domain of network security. The client wanted Evalueserve to
conduct a freedom to operate study for its network appliance based product for providing network
performance monitoring and management. The focus regions of this study were the US and Europe.
Project effort (hours): 140
Methodology
© Evalueserve, 2007, All Rights Reserved.
EVS Case Studies: Overlap Analysis/ Claims Mapping
+
Claims mapping in the field of information retrieval
The client is US based company active in domain of web search and contextual advertisements. The
client wanted Evalueserve to conduct an overlap analysis for its patent portfolio.
Project effort (hours): 120
+
Patent overlap analysis in the field of wireless communication technology
The objective of this project is to perform a broad level patent coverage study for the product portfolio of a
client’s competitor with respect to the patent portfolio of the competitor and the patent portfolio of the
client. The patent coverage study aims to identify the relative strengths and weaknesses of the patent
portfolios of the competitor and the client for the various product families of the competitor’s product
portfolio.
Project effort (hours): 130
+
Patent overlap analysis related to power management in processors
The client is a global leader in the domain of wireless, broadband and automotive communications
technologies and embedded electronic products. The client wanted Evalueserve to analyse a group of
products belonging to a competitor against a number of the client's patents for assessing potential
infringement.
Project effort (hours): 750
Methodology
© Evalueserve, 2007, All Rights Reserved.
EVS Case Studies: IP Landscape Analysis
+
Technology based classification of patents/published patent applications in the field
of Mobile WiMAX
The client is a leading global provider of telecommunications equipment and related services to mobile
and fixed network operators. The client wanted Evalueserve to perform a technology based classification
of patents/published patent applications in the field of Mobile WiMAX.
Project effort (hours): 55
+
IP landscaping in the domain of location based search technology
The client is a telecommunications firm based in Europe. The client wanted Evalueserve to conduct a
landscape analysis in the domain of location based search technology for use in networks.
Project effort (hours): 110
+
IP landscape analysis in the field of Satellite Digital Audio Radio Services (SDARS)
The client is an electronics manufacturing service provider. The client wanted Evalueserve to conduct a
patent landscape analysis in the field of SDARS. Further, the client also wanted Evalueserve to profile key
companies, which are active in the field of SDARS.
Project effort (hours): 250
Methodology
© Evalueserve, 2007, All Rights Reserved.
EVS Case Studies: IP Portfolio Management
+
Patent portfolio analysis in the field of wireless software
The client develops wireless software solutions and specializes in the field of synchronization. The client
wanted Evalueserve to study and classify its patent portfolio into a customized taxonomy.
Project effort (hours): 100
+
Patent portfolio analysis of a competitor in the domain of micro-arrays and gene
chips
The client is a company involved in developing state-of-the-art technology, acquiring, analyzing and
managing complex genetic information for use in biomedical research. The client wanted Evalueserve to
provide an analysis of the IP portfolio of a competitor.
Project effort (hours): 180
+
Patent-product portfolio analysis in the domain of electronic design automation
The client is an industry leader in the area of Electronic Design Automation (EDA). The client wanted
Evalueserve to conduct a patent-product portfolio analysis of its portfolio.
Project effort (hours): 280
Methodology
© Evalueserve, 2007, All Rights Reserved.
EVS Case Studies: Patent Valuation/Licensing Support
+
Licensing Opportunity Analysis for a Patent Portfolio Related to Bio-enhancers
The client is an R&D organization. The client wanted Evalueserve to identify the licensing
potential/opportunities for a patent portfolio related to bio-enhancers.
Project effort (hours): 190
+
Valuation of a patent related to data storage devices
The client, based in the US, is a leading provider of storage solutions. The client wanted to determine the
value of a patent that it holds. The client wanted Evalueserve to build a patent valuation model and value
the patent using the current market scenarios in the domain of data storage devices.
Project effort (hours): 300
Methodology
© Evalueserve, 2007, All Rights Reserved.
EVS Case Studies: Commercialization Studies
+
Technology commercialization feasibility study related to manipulation of micro
particles
The client is a technology transfer group of a University. The client wanted Evalueserve to conduct a
feasibility study for the commercialization of a patent-pending technology, developed by its researchers. A
patent application was provided to Evalueserve for the analysis.
Project effort (hours): 100
+
Identification of high potential research opportunities at the intersection of
nanotechnology and specialty chemicals
The client is a fortune 500 chemicals company. The client wanted Evalueserve to identify the top three to
four high-potential research opportunities at the intersection of nanotechnology and specialty chemicals.
Project effort (hours): 400
+
IP commercialization study for a technology related to cardio-vascular tissue
engineering
The client had developed a technology for cardiac tissue engineering. The client wanted to commercialize
this technology. For this, they wanted to identify application areas having maximum potential.
Project effort (hours): 700
Methodology
© Evalueserve, 2007, All Rights Reserved.
EVS Case Studies: Patent Drafting
EVS and its legal partners have written and filed over 1000 patent applications in
various domains:
Electronics & Telecommunication
Software and business methods
Computers and networking
Mechanical
Medical devices
Pharmaceutical formulations
Chemicals and Chemistry
Methodology
© Evalueserve, 2007, All Rights Reserved.
Presentation Plan
Evalueserve (EVS) Overview
EVS IP – An Overview
Services Provided by EVS IP
Case Studies of IP Services
Confidentiality and Client Feedback
© Evalueserve, 2007, All Rights Reserved.
Evalueserve Confidentiality Management System
Legal Measures




Dedicated Teams
 Chinese walls
 Staffing rules
 Independent expert
opinions
NDA
Western jurisdiction
IP of projects belongs to Client
Compliance officer(s) + outside
counsel monitor regulatory
compliance requirements
Confidentiality




Clean desk
“Need-to-know”
IS0 27001 certification
Confidentiality as element of
quality
 Pre- and post-involvement
confirmation of expert’s role
 Strict “ethical research”
guidelines
Process Measures
 Secure transmission
 Secure storage
 Registration/Opt-out
records for 3rd-party
experts
 Data access for
team members only
Technology
© Evalueserve, 2007, All Rights Reserved.
Client Recognition of Evalueserve Quality
“…EVS is the finest professional services organization I
have worked with in my 40 years in business.”
“…by leveraging EVS, we have seen significant cost
savings and improvement in delivery time to our Clients.
This is a dependable company, responsive to our
needs…”
“…I was very pleased with the work, I have referred
you to several patent attorneys at my firm.”
“[Circle of Experts] has delivered the most relevant
experts for our needs, without fail, from engineers to
managers.”
“…You exceeded our expectations in each area. We
truly appreciate your clarity, professionalism and
devoted organizational management.”
“Your proposals and reports are (in my opinion) second
to none.”
“…Always a pleasure working with the EVS team,
always thoroughly professional, I look forward to
working on many more projects together.”
“…The EVS team was well organized and operated in a
highly disciplined manner.”
“…Wonderful job on this project; thank you for being
flexible and finishing on time (even under pressure).”
“I was impressed with the speed, follow up and value of
deliverables. I will recommend evalueserve to many of
my collaborators.”
© Evalueserve, 2008, All Rights Reserved.
Thank you…
for considering us as your
Global Knowledge Partner
Paul N. Hoagland
Alliance Executive
Evalueserve North America
Tel: +1 315 655 2262
[email protected]
www.Evalueserve.com
© Evalueserve, 2007. All Rights Reserved - Privileged and Confidential
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Evalueserve: An Introduction