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.

The patent attorney at IP Legal Services 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

A validity search for a patent application is typically performed to find prior art or reference(s) to invalidate some or all of the claims of an unexpired patent. For a finding of invalidity, the claims in the prior art or reference must read upon or anticipate the subject matter claimed in the unexpired patent; or if the prior art shows that the subject matter of the patent as a whole would have been obvious at the time the invention was made to a person having ordinary skill in art to which the subject matter pertains.

A validity search of a patent is typically undertaken by a manufacturer/user/seller of a product when the manufacturer/user/seller of the product has concerns that his product may infringe a patent or when the manufacturer is given notice by the patentee that his manufacture/use/sale or offer for sale infringes patentee's claims.

Patentee (i.e., patent holder) sues the manufacturer of a certain product or provider of a service for infringing the claims of his patent. Invariably, the defense of the manufacturer is that his product (or process) does not infringe the patent claims, but even if it does, the patent claims are invalid. The manufacturer or service provider will now proceed to have a patent validity search performed of the patent in question, seeking to invalidate the claims of the patent.

The patent search process will identify prior art in patents, publications, product literature, sales catalogs, trade journals, etc., that anticipate the subject matter of the patent in issue or that render the subject matter of the patent obvious to a person of ordinary skill in the art. The patent attorney will also review whether the subject matter at issue was published, displayed in public or sold or offered to be sold, more than one year prior to the patent's filing date.

In the above scenario, an opinion of patent invalidity may result in withdrawal or settlement of the suit brought by the patentee or may support a counterclaim of patent invalidity by the manufacturer.

In addition to the above, the patent attorney has experience in conducting a patent infringement search, also referred to as a clearance search or freedom to operate search, primarily for two purposes:

Another reason for conducting a patent infringement search and obtaining a patent infringement opinion is to indemnify (hold harmless) a licensee of your patent. Where a licensee is using your patent to manufacture, use or sell a product, the licensee will require that the patentee include, in the license agreement, a warranty of non-infringement.

Like a patentability search, a patent infringement search is an essential component of the Due Diligence Process. Prior to funding approval, investors and financial institutions will likely inquire whether a clearance search was completed at project start.

Furthermore, the patent attorney at IP Legal Services has experience in conducting a clearance search, also called a freedom to operate search, which may be viewed as a patent infringement search and a patent validity search of a product that may or may not be patented prior to the start of manufacture, sale or offer for sale of that product or process. The patent search is typically conducted during the conceptual phase of a new product introduction; it should certainly be completed prior to product launch. A clearance search shows any intellectual property barriers and risks to market entry and where appropriate may point in the direction of licensing or cross-licensing a technology. Like a patentability and patent infringement search, a clearance search is an essential component of the Due Diligence Process. Investors and financial institutions will likely inquire whether a clearance search was completed at project start.

The clearance search identifies if the product or process infringes any patent; and if the product is patented, the patent search also checks for and reaffirms the validity of the patent in view of the prior art which includes unexpired and expired patents, literature and public use and sale of the product bars under Title 35, Section 102.

A state-of-the-art patent search involves the identification of all patents and literature relating to a particular product, process, specific art or area as defined by the client.

An objective of a state-of-the-art patent search is to determine the current state of development in a technology so as to preclude the proverbial reinvention of the wheel and to avoid unnecessary trial and error experimentation. Typically the patent attorney will search for all patents and literature found in that art, even if the patents and literature are redundant or comprise cumulative information.

A state-of-the-art search is another important patent search that should be performed at the conceptual phase of new product introduction. It is often a component of the Due Diligence Process and a subject of investor inquiry. The patent search also appraises the company of all prior art in that technology, and points the company in the general direction that it needs to take in areas such as research and development, licensing, etc.