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IP Partner

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Succeed habitually

Your Strategy First®

Transparency

Simplify complexity

Our Purpose

The world judges us based on what they can see and touch. However, at Metayage, we believe in the true value and power of Intangible assets. The entrepreneurial journey of an innovative startup founder can be extremely challenging, especially when very few believe in your inventive ideas, and most people tell you that your ideas are worthless. At Metayage, we act as a friend, well-wisher, mentor, and a strategic IP partner to nurture your idea and protect it by getting you patents that certify that your invention is unique and inventive, and give you exclusivity. We partner with you at each stage of your journey, right from idea, prototyping and launch, fundraising, scaling up to exit.

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Our Services


Metayage acts as an extended in-house IP department and also doubles up as an external IP firm

Our services encompass the entire IP life cycle right from IP Identification to Monetization

International Patent Protection

We get speedy patent grants in all major markets around the world seamlessly.

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IP Due Diligence

We provide clarity on patent portfolio quality, and identify red flags and provide recommendations on reducing risks due to infringement of third-party IP rights.

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Patent Intelligence

We provide actionable intelligence based on patent data for Competitive Intelligence, Freedom to Operate, and Invalidating patents of competitors.

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International Trademark Protection

We enhance your brand value by registering your valuable brand names, logos, and product names as trademarks in key markets.

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International Design Protection

We give you an edge over your competitors by protecting your product's unique aesthetic features in major markets worldwide.

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Strategic IP Partner

We act as your extended IP department and conduct IP Audits, prepare patent intelligence reports and update your IP Strategy periodically.

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Why Metayage

IntellectualProperty.

Case Studies

PI Ventures

Conducted patent due diligence on Freedom to Operate and Patentability prior to Venture Capital Investment in deep tech startup.

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Saankhya Labs

Prosecuted and conducted patent valuation that includes 25 granted US patents, and patents in India, Europe, Japan, and South Korea.

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Niramai

International patent portfolio in the US, EPO, India, Japan, Canada, China etc. 9 US patents granted.

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Numerify

17 US patents granted, related to AI driven data warehousing and analytics for Business Intelligence.

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Kernel LABS

Acted as an in-house patent counsel for their portfolio companies such as Omnivor and Trusted Key (acquired by Workday, Inc).

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Patent Showcase

3D/AR/VR

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Aerospace Engineering

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Artificial Intelligence

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BIO-MEDICAL ENGINEERING

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Blockchain

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Business Intelligence

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Cryptography

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Electric Vehicle

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Food and Beverages

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Healthcare

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Manufacturing

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Network Management

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Polymer Technology

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Telecommunication

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What Our Clients Say About Metayage

“I’ve been working with Metayage in filing the patents and getting the grants for Niramai. As a medical Start-up, it was difficult for us to find the right entity because as researchers we innovate many things but don’t know how to file it. So we engaged Team Metayage and we have filed more than 50 patents and have already got 29 patents granted. We got very good help from team Metayage. "

Siva Teja Kakileti

Director, Founding Member, Niramai Health Analytix

“We have been working with team Metayage and it has been amazing throughout. Every team member knows what they are doing very well, they keep track of all deadlines, we never had to ask for any document, and they bring it to us promptly. We got two major patents, one in the US and one in India. I love their professionalism. They also understand technical details very well. It has been easy for us to explain every detail”.

Rimjhim Agarwal

Co-Founder and CTO, BrainsightAI

"As a tech company focused on innovation, securing IP assets was a priority for us. Over the past year, we made five successful filings with their help, and the experience has been smooth throughout. Their team has a strong understanding of technology, making it easy to communicate our needs. What stood out most was their ability to simplify complex technical jargon into clear, understandable descriptions, ensuring nothing was lost in translation. They’ve been a reliable and efficient partner, making the IP process seamless for us."

Prateep Basu

Founder and CEO, Satsure

Frequently Asked
Questions

Patents have an impact on the R & D, Finance, Marketing, HR and Legal departments of a company. For R&D, it protects their investment and maximizes ROI. For Finance, it increases the valuation, generates royalties and increases profits. For Marketing, it strengthens the branding, differentiation, and competitive advantage. For HR, it enables a culture of innovation, and helps to retain top technical talent. For Legal, it mitigates IP infringement risks and secures the company's valuable assets.

Since patents are territorial/country-specific, the selection of countries/jurisdictions to apply for a patent should be based on which countries are major markets, and which countries the product is likely to be made or used in. Other considerations include, the country of incorporation, likelihood of success in securing patents, ability to enforce successfully, timelines, and costs.

An IP Strategy is a systematic roadmap to align a company's business goals with Intellectual Property related initiatives. The IP strategy depends on what stage the company is in, its short and long term goals, its competitive position within the industry, etc. IP initiatives such as IP Audits. Patent intelligence, Freedom to Operate, IP protection, IPR enforcement, IP licensing and IP valuation are conducted at different stages depending on the company's IP Strategy.

The extent and scope of disclosure in a patent application should be sufficient to successfully obtain patent protection while also preserving key trade secrets to the extent possible. To obtain a patent grant, a patent application must satisfy novelty, non-obviousness, subject matter eligibility requirements, and enablement. For enablement, every element of every patent claim should be described in sufficient detail to enable a person of average skill in the technical field that the invention relates to, to make and use the invention without undue experimentation.

Especially before launching a product in new markets, but preferably even during the R&D stage, conduct a Freedom To Operate (FTO) search in those countries where you intend to launch your product. This helps to identify patents owned by third parties that your product might potentially infringe. Once these patents are identified, analyze the claims of these patents based on the specification to determine their scope of coverage. Then you can reverse engineer your product to avoid infringement, or even look at opposing or invalidating third party patents that pose a significant threat to your business.

Typically the relationship with an IP firm starts fairly early in the journey, during R&D and product development. At this stage, your company will typically not have an in-house IP department or even an in-house IP counsel. Hence, the right guidance on an IP strategy that aligns your company's requirements with IP initiatives is crucial. Transparency and clarity in communication will help you make informed decisions. Expertise and track record in successfully obtaining IP protection is another key metric to consider. Last but not least, expertise in multiple jurisdictions is critical if you want to build an international patent portfolio

Latest Blog & Articles

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04/Aug/2022

5 lies you’ve been telling yourself to delay patent protection

I am too busy – The truth is that if it is important and valuable enough everyone finds time for it.

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24/Jan/2021

What are the patent trends in China as compared with India?

Over the past decade, the volume of patent filing in China has seen a dramatic rise.

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01/Apr/2023

What are the challenges in obtaining patent protection for software-related inventions?

Software inventions are increasingly important today because they enable automation, speed, connectivity, innovation, and effective data management. Businesses who innovate using software gain competitive advantage

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10 steps to obtain a US patent | Metayage

10 steps to obtain a US patent

 

Congratulations on your new invention! You may have done your homework on how patents can be valuable, and you may have decided to apply for a patent in the US since it is a relevant and large market for you. The next question that comes to mind is, “what do you have to do to, not only apply for a US patent, but get it granted?” The process of getting a patent granted involves many steps, and is cumulatively referred to as “patent prosecution”. There are specially qualified professionals called patent agents or patent attorneys who specialize in patent prosecution, and they can take you through the steps, however before you engage your patent attorney, it is also important for you to be aware of what you are getting into. Hence, without further ado, we list out the various steps involved in applying for and getting a US patent here.  

They are:

 

  1. Patentability search
  2. Preparation of the patent application
  3. Submitting the oath & declaration, and Power of attorney
  4. Executing and recording an assignment agreement
  5. Paying the filing, search and examination fees based on entity status
  6. Submitting an Information Disclosure Statement (IDS)
  7. Response to one or more office actions
  8. Request for continued examination
  9. Payment of issue fee on receipt of the Notice of Allowance (NOA)

  10. Payment of maintenance fees

     

The first step is to conduct a patentability search of prior art. Prior art includes any information that is available to the public prior to the date of filing the patent application.  The objective of conducting the patentability search is to determine whether the invention is novel and non-obvious with respect to prior art. By ‘novel’, it means that it should not have been described in any printed publication, information available to the public or on sale prior to the effective filing date of the invention. If the result of the search is that no prior art is found which is close or relevant enough to the invention and makes the invention novel and non-obvious, you can proceed with preparing and filing a patent application. 

 

The patent application can either be filed as a provisional patent application or a non-provisional patent application. If you file a provisional patent application first, you then have to file the non-provisional patent application within one year to get the effective filing date (which is called a priority date) of the provisional patent application.

 

At the time of filing the non-provisional patent application you have to submit the patent specification and drawings. The specification should include claims (which define the scope of legal protection), and a detailed description that describes the invention in sufficient detail to enable a person having ordinary skill in the field of the invention to implement the invention without undue experimentation.

 

In addition to this, you also have to submit an oath and declaration form that is signed by all the inventors. A power of attorney should also be submitted to authorize a US patent agent to represent you before the USPTO (United States Patent and Trademark Office). 

 

In case the applicant is a company, the inventor(s) and assignee have to sign an Assignment Agreement to transfer ownership of the patent from the inventors to the company.  The assignment agreement has to be recorded with the USPTO assignment database. In case the inventors, the applicant, or the patent agent are aware of any prior art that affects the patentability of the invention, they have to submit an information disclosure statement (IDS) to disclose the prior art to the USPTO office. 

 

Fees for filing, searching, examining, issuing, appealing, and maintaining patent applications and patents are reduced by 50 percent for any small entity that qualifies for reduced fees under 37 CFR 1.27(a), and are reduced by 75 percent for any micro entity that files a certification that the requirements under 37 CFR 1.29(a) or (d) are met. Applicants must determine their entity status before making an assertion of entitlement and paying a discounted fee.

 

Typically, a US patent application will be published within 18 months from the priority date (the earliest filing date). If you want to speed up the process of obtaining your US patent, you can avail of prioritized examination by filing a request for Track one prioritized examination along with the requisite fee. It will allow you to get a final disposition within about twelve months. For a regular examination it may take 2 years or longer to get a first Office Action. The office action is an examination report from the US patent office which may include objections, such as on the basis of lack of novelty or due to obviousness, which are covered in sections 35 U.S.C. 102 and 103 respectively.

 

The office action may also include objections due to non- patentable subject matter, which is covered in 35 U.S.C 101 and objections due to insufficient written description, ambiguity or lack of enablement, which are covered in 35 U.S.C 112. The first office action is called a Non-Final office action. The applicant has to respond to the office action within 3 months without late fees. The response may include a claim amendment but should include arguments to overcome the objections.  An office action response that can overcome these objections has to be prepared carefully and submitted within 3 months. The applicant can also request the examiner for a telephonic interview and then submit a written response after the telephonic interview.

 

Upon receipt of the response to the office action with a claim amendment, the patent examiner will conduct a new search if there has been any substantive amendment to the claim.  If the examiner is convinced that the patent application satisfies all statutory requirements including under 101, 102,103 and 112, a notice of allowance will be issued. If the examiner is not convinced, another office action is issued.

 

The second office action is called a ’final rejection’ or a ‘final office action’. At this point, while responding to the final rejection, if the applicant wants to amend the claims, a request for continued examination (RCE) would have to be filed along the 2nd office action response with the amended claims. Then the USPTO may issue a 3rd office action which will be a non-final office action and this process continues until the examiner either issues a notice of allowance or the applicant gives up and doesn’t respond within 6 months, due to which the patent application gets abandoned. 

 

Once a Notice of allowance (NOA) is issued, the applicant will need to pay a one-time issue fee after which the patent will be granted and the applicant will receive the granted patent number. The applicant will also have to pay maintenance fees and any applicable surcharge by the end of the 4th, 8th, or 12th years after the date of issue. Non-payment will result in a lapse of the patent rights and a Notice of Patent Expiration is sent to the fee address or correspondence address on record.

 

We, at Metayage IP appreciate the value that a granted patent can add to your venture. We have supported hundreds of brilliant innovators and start ups and seen them grow in leaps and bounds after creating a portfolio of granted US patents, which are valuable intangible assets for them. If you wish to get onboard this journey of converting your unique idea into a valuable intangible asset, please drop us an email to ip@myipstrategy.com.

 

Metayage