Patent Searches

Prior to filing a patent application or selling a product, there are two common questions.  The first question is “How do I know if someone else came up with my idea?” or “ How to Find Out If Something Has Been Patented?” That question intuitively gets to the crux of the patent examination process, which centers around the notion of an idea being “novel,” and not being previously described in a publication available to the public (known as “prior art”).

The second question is “How do I know if my idea is going to infringe somebody else’s patent?”  Even if an inventor does not want to patent his or her idea, this question could be crucially important because significant expenditures (manufacturing, sales, etc.) may be at risk if there is infringement of someone else’s patent.

To address the foregoing questions, different types of patent searches may be performed. Patent Ingenuity is a patent law firm that performs searches and prepares opinion letters on behalf of clients at their request.

To answer the first question, Patent Ingenuity may perform a “patentability search,” also called a “prior art search,” to help determine whether or not an inventor’s idea has been described in a printed publication prior to preparation of a patent application.  As an example, various public databases, such as US Patent & Trademark Office and US Patent & Trademark Office, Patent Full Text and Image Database, are used to search for granted U.S. patents as well pending U.S. patent applications that have been published prior to preparation of a patent application.  However, prior art is not limited to just patents and published patent applications: it may also include published articles, books, blogs, online forums, etc.  Therefore, a patent law firm will also search online databases that do not encompass patents by.

At the completion of the patent search, a USPTO registered patent attorney at Patent Ingenuity may prepare a patentability opinion, which presents a formalized analysis as to whether or not the potential idea to be patented is different enough from the prior art to potentially obtain a granted patent if filed with the USPTO.  This patentability opinion may be used by a patent applicant for a variety of reasons.  For example, an investor such as a venture capitalist may ask a Startup to perform due diligence on an idea prior to initiating the patent application process. 

No, the USPTO does not require that a patent search be performed.  In fact, often times your patent attorney may determine that you are so immersed within a particular technological field that you are one of the most likely people to be aware of potential prior art. 

Furthermore, even if a prior art search is performed, it is almost impossible to be exhaustive for a few reasons.  Firstly, a prior art search will not be able to access unpublished patent applications that may become prior art at a later time; this is because the USPTO typically does not publish pending patent applications until 18 months after filing.  As a specific example, a prior art search may be performed today, but would not uncover patent applications filed within the last year and a half that could be directed to a similar idea.  Those unpublished patent applications could be subsequently published after an inventor files a patent application, but would get the benefit of an earlier filing date, and thus be considered prior art.  A patent search would not have been able to discover such prior art. 

Secondly, the standard for being considered a “publication” for prior art purposes is not that high.  To be clear, the standard is not that the mass general public has to be able to access the publication via the Internet.  As an example, paper copies of a lecture handout given to a small number of students in a college classroom may even suffice as a publication.  How would a prior art search discover such a publication?  It’s unlikely that it would. 

To summarize, there are certain instances in which a patentability search and patentability opinion are necessary, and others where its value is questionable.  At Patent Ingenuity, a patent lawyer can help you determine whether a patentability search and a patentability opinion are right for you and your company.

To answer the second question of whether or not your idea potentially infringes the patent rights of another, a “clearance” search may be performed by your patent lawyer.  In contrast, with a patentability search, a clearance search is solely focused on searching patents.  In other words, a published article is immaterial for purposes of patent infringement because there cannot be any patent infringement unless there is an actual granted patent.

A clearance search will typically be accompanied by a Freedom to Operate letter from a seasoned patent attorney.  The Freedom to Operate letter may be used by a client to substantiate that he or she consulted with a patent lawyer prior to developing or selling a product.  In other words, the client performs his or her due diligence when performing a risk analysis for product or service development.

In addition, published patent applications may be part of the clearance analysis.  Your patent lawyer may perform an analysis on patent applications that have been published by the USPTO to determine whether there are any patent applications that pose potential infringement concerns.  For example, your patent attorney may review the “prosecution history” of a published patent application to determine whether the USPTO has issued any rejections for a particular patent application, and assess the likelihood of that patent application being granted and posing any infringement concerns. 

Although unpublished patent applications are not part of a typical clearance search, Patent Ingenuity is a patent law firm that may perform updated clearance searches to account for patent applications, which were previously unpublished, later getting published.  For example, an experienced patent lawyer may update a clearance search every six months during a product life cycle to determine if any new patent applications have been filed and published since the last clearance search.

Accordingly, Patent Ingenuity can help you determine any patent infringement concerns, and negotiate a possible license from a patent holder on your behalf if a license is deemed necessary by an experienced USPTO registered patent attorney.

A service offered by Patent Ingenuity combines both a patentability and a clearance search.  Although a patentability search and a clearance search have two different purposes, there is often overlap between the results of each.  Given such commonality, an experienced patent attorney at Patent Ingenuity can perform a combined patentability and clearance search, which still outlines the search results for each.  Further, the patent lawyer may prepare a Combined Patentability and Clearance Opinion, which will still include independent patentability and Freedom to Operate analyses.

Please contact the Newport Beach, Silicon Valley, or Los Angeles office of Patent Ingenuity to speak with an experienced Registered Patent Attorney that is admitted to the State Bar of California and registered before the USPTO.