Prospective patent applicants are given a list of granted patents having a similar inventive concept. A patentability opinion is provided if the client requests such an opinion. Each client is provided with the results of the search through a password protected link to an IP Legal Services webpage only accessible to the client.
IP Legal Services performs prior art searches to determine the patentability of the invention.
In order to proceed with a prior art search for a patent application, the patent attorney requires the following information:
If the invention involves a method or a process, a description of every step of the method or the process needs to be provided to our patent attorney. If the invention includes a system, a description of each working component of the system needs to be provided to our patent attorney. A description on only the functional (method or process) and architectural (system) aspects of the invention. If one or more individual steps or a combination of steps of the method/process of the inventive concept is novel this must be highlighted in the description provided to our patent attorney. If the individual components or a combination of components of the system is novel, this must also be highlighted in the description provided to our patent attorney.
Patentability SearchA patentability search, also called a novelty search, will be performed by our patent attorney for two primary purposes:
To determine whether the inventive concept is new over the prior art and therefore contains patentable subject matter, and To define the scope or breadth of the claims in the patent application to enable procurement of appropriate property rights for the patentee.
The objective of a patentability search is to find prior art that is material or relevant to the inventive concept claimed by the inventor, and also to find prior art at least as comprehensive as the prior art that the U.S.PTO patent examiner will find when he conducts his patent search. Prior art is material that the U.S.PTO patent examiner will more likely than not rely upon to make a finding of novelty or obviousness of the subject matter that the patent applicant regards as his invention.
In the context of patent applications, it is prudent for the patentee to conduct a thorough and comprehensive prior art search prior to the preparation of a patent application in view of recent Federal Court and U.S. Supreme Court decisions.
The patent attorney recommends performing a patentability search for the following reasons. First, if the patentability search shows that the invention is disclosed or anticipated in the prior art, or is obvious to a person of ordinary skill in the art to which it pertains, the inventor has, at this point, two options at his disposal. (S)he may choose to discontinue the normally time-consuming and expensive patent filing and patent prosecution process; or, the inventor or patent drafter, where possible, may attempt to design around the prior art prior to filing of the patent application. Second, a patentability search may find an unexpired patent that may be a patent infringement risk; knowledge of the patent infringement risk may allow the inventor or the patent drafter to design around the infringing claim. Third, changing the scope of the claims during the patent prosecution in response to an Office Action issued in view of the prior art may result in patent prosecution history estoppel. Patent prosecution history estoppel is a limitation on the disclosure or claim that the patentee has accepted or admitted to during the prosecution of the patent application to get a claim allowed. The Supreme Court held that an amendment narrowing the scope of a claim for "a substantial reason related to patentability" creates the rebuttable presumption that the patentee surrendered the scope of the claim between the original claim limitation and the amended claim limitation, thereby precluding the application of the Doctrine of Equivalents and therefore a finding of patent infringement for an alleged equivalent that falls within the scope of the claim surrendered. This presumption can be overcome by a showing by the patentee that the amendment does not surrender the particular equivalent in question. Festo Corp. v. Shoketsu Kinzoku Kogyo Co., 535.
Patentability opinion of the InventionAfter conducting extensive patent searches on the inventive concept in patent databases, the patent attorney provides a patentability opinion of the inventive concept and also provides suggestions on developing the invention and designing around a valid patent.
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