Conducting Patentability Analyses & Developing Design-around Strategies
To avoid wasteful and unnecessary invention filings and to strategically direct research and development (R&D) budget, a careful patent search of existing intellectual property rights owned by others can help determine:
- the potential of infringing on someone else’s intellectual property rights
- the potential for a successful patent prosecution
- the landscape of patents from competitors in the area of the invention
- the most effective areas of research and development
We conduct extensive searches on patents and non-patent literature. Our methodology for searching in deeply technical/scientific fields is unique and draws upon our commitment to quality and service. Over the years, we have developed a unique process of prior art search that guarantees the best patent search results. In particular, we take advantage of our extensive expertise in various technological and scientific fields in performing our searches. The methodology requires a pair of experts working as a team, one expert in searching, and one in the subject matter. The iterative approach they take in conducting the search will ensure that not only the searches are performed thoroughly and time-efficiently, they are also on target and produce quality results. After all, no client is interested in receiving a long list of irrelevant or remotely relevant prior art.
Patent Search Types
The types and extent of each patent search we conduct varies depending on client requirements and goals. However, these patent searches may include a patentability search, a patent validity (or invalidity) search, an FTO or clearance search, or a state-of-the-art (landscape) patent search. The following categories illustrate in more detail what each of these patent search types include.
To obtain U.S. patent protection, a potential invention must be new (novel), useful, and non-obvious. In addition to determining novelty and non-obviousness, a patentability search could
– help during patent drafting to write a patent application that better defines the inventive contribution of the new product over the prior art,
– facilitate prosecution by preempting examiner rejections, and
– improve the defensibility of the future patent by ensuring that the examiner considers the most relevant prior art during prosecution.
The depth of any type of Patentability Search is a function of available time and budget. A complete Patentability Search conducted by GHB Intellect will cover all granted patents, published patent applications, and non-patent literature published anywhere in the world. It would also uncover any evidence of past public use or sales.
Our Basic Patentability Search limits the Search to all properly classified U.S. patents and published patent applications. This prior art database search is not exhaustive but generally provides a reasonable set of results on which an analysis can be performed. In a Premium Patentability Search, we will also search European and Japanese patents and applications. The patents issued or patent applications published by the USPTO, EPO, WIPO, and JPO cover more than 90% of patents and applications filed worldwide. GHB Intellect can also customize the patent search to fit a client’s needs.
Patent Validity Search & Patent Invalidity Search
At GHB Intellect we conduct patent validity searches to either validate the claims made by a patent or to invalidate one or more claims of a competitor’s patent. An invalidity search is the first step taken by a company when faced with a patent infringement lawsuit. An Invalidity Search is a prior art search done after issuance of a patent. The purpose of an invalidity search is to find prior art that the patent examiner overlooked so that a patent’s validity may be challenged.
Patent validity searches are also conducted to check the strength of a granted patent while exploring the available licensing options. Our search experts are paired with subject matter experts in order to create a highly efficient and effective team digging deep into the domain to find critical prior art overlooked by the patent examiner. These subject matter experts may also testify as a technology expert witness as part of our patent litigation support services.
As part of the report, GHB Intellect prepares a claim chart to compare the claims of a patent to potential prior art to show if the patent is valid/invalid.
If needed, our subject matter experts may also act as a testifying expert (technology expert witness) in support of a patent dispute (see our patent litigation support services).
Freedom to Operate (FTO) Patent Search & Clearance Search
The purpose of a Freedom to Operate (FTO) patent search, or patent clearance search, is to identify in-force patents or published patent applications with claims that cover the trageted technology, process, or product. Our FTO Search service helps identify potential patent barriers to commercializing our clients’ products or technologies. This due diligence process examines the claims language of third-party, in-force patents as a means of assessing clients’ risks of potential infringement.
GHB Intellect takes its responsibility in advising its clients very seriously. For each clearance search assignment, we create an FTO search team, consisting of a search expert and a subject matter expert. Such a team is trained to perform the task using an iterative process that has proven much more efficient and effective in searching, finding, and examining relevant prior art.
State-of-the-Art Search & Landscape Search
A state-of-the-art search, or landscape search, is designed to provide a general idea of the existing prior art in a particular area. It is essentially an information collection and presentation methodology, and can be as comprehensive or limited, as necessary. This category of patent searches is conducted for the purposes of identifying gaps in IP coverage, technical assessment, tracking the competition, patent mining, etc. It assists our clients in business and product planning. It also helps guide their R&D planning.
Our team of experts at GHB Intellect provide state-of-the-art searches along with indispensable patent analysis.