Patent Search

A patent search is often your best first step when deciding whether to file a patent application as well as whether to commercialize an invention. A patent search can help identify similar products, patents and published patent applications for similar inventions, or published articles describing similar inventions. Once these prior art products, patent documents, and publications are located, differences between your invention and the prior art can be identified. The extent and value of these differences will determine whether filing a patent application and bringing your invention to market are worthwhile.

You can begin with a simple Internet search. However, an Internet search will be limited by the terms used in the search. Different authors may describe similar concepts using different terms. Certain fields of technology may include terms of art for certain concepts which, if not used, may result in a search which fails to uncover similar products.

A professional patent search is performed by identifying the classes and subclasses in which similar inventions are categorized. The use of classes and subclasses increases the likelihood that the most relevant patents and patent applications are found.

Most patent searching is performed to determine whether an invention is patentable. Search results will therefore typically contain expired patents as well as currently enforceable patents and non-patent publications. I will provide these references along with a report summarizing the prior art, identifying any differences0 between your invention and the prior art, and will help you decide whether commercially meaningful protection is likely to be available if a patent application is filed.

A patent search also helps strengthen a patent application. Once the closest prior art has been identified, the patent application can be drafted to emphasize the differences between the invention and the prior art. The specific details of your invention which provide its unique advantages can be emphasized in a way which distinguishes it from the prior art. Legal arguments can be built into the patent application to help overcome any anticipated rejections based on the prior art. Claims can be drafted to avoid the known prior art. A patent search not only helps with decisions to proceed with patent applications, but potentially increases the likelihood of success in obtaining an issued patent.

Please do not hesitate to contact me to discuss your invention as well as your likelihood of obtaining patent protection.

Freedom to Operate Search

If bringing your invention to market will require significant investment, then a freedom to operate search should be considered. This search is also known as a right to use search or clearance search. A freedom to operate search is more extensive than a typical patent search. The goal is to identify any presently enforceable patents or published patent applications which could potentially contain claims which could potentially be infringed by commercialization of your invention. References which impact the patentability of your invention but do not raise infringement issues, such as expired patents, abandoned patent applications, non-patent publications, and other products, are not included in this search. However, since the goal is to identify any presently enforceable patents which could raise infringement issues, the number of patents provided from the search results is typically greater than the number of patents provided from a patentability search.

Once relevant patents are identified, the claims are analyzed. A summary of the results are provided in my report. For each patent, I point out the specific elements of the independent claims which are not found in your invention. Specific features which should be avoided to avoid infringement can be identified. To the extent that infringement cannot be avoided, I can assist with license negotiations, with the goal of obtaining any necessary licenses prior to any activities which would risk patent infringement.

A freedom to operate search can help avoid wasted research and development efforts which would have led to patent infringement. Product development can be guided towards products which can safely be marketed. If you plan to seek investors, the report can also make your invention more attractive by demonstrating that you have taken the appropriate steps to avoid patent infringement.

Please do not hesitate to contact me to discuss your ideas as well as any potential patent infringement concerns.