There are many parts that go into patent searches and the opinions that are involved with them. Having a patent lawyer on your side is the best way to ensure you know everything that goes into the patent you may be wanting to file.
A Patent Lawyer Can Help You When it Comes to Patent Searches
A patent is the exclusive right given by the Government for sole ownership of any process, design or new invention, for a defined period of time. It also allows the patent-holder to commercially utilize that invention until the patent validity is over.
Before a patent is issued to the inventor, a patent search must be carried out. This is done to determine whether the invention is unique or not. Only then will the invention be qualified to receive a patent. A patent search is usually conducted by a patent lawyer through the database of formerly issued patents.
Getting a patent opinion will give you an idea of the chances that your patent application will go through. Although it is not mandatory by law to run a patent search, the process is definitely the right step towards the patent process. A patent attorney can help you immensely by reviewing the drawings and text of patents and previous patent applications to find inventions that may be similar to the inventor’s new invention. Relevant patents are found using the patent classification system, in addition to keyword searching, to find relevant patents.
The patent process can be complex and you may have to face various hurdles to ensure that your invention is unique. This involves getting patent opinions. Patent opinions are legal forms of feedback that gives the inventors clear insight into what his chances are when it comes to receiving a patent from the United States Patent and Trademark Office (USPTO).
There are four types of patent searches and opinions.
- Novelty or Patentability
- Freedom to Operate (FTO) or Right to Use
1. Novelty or Patentability
The most common type of searches and opinions, is conducted to answer the question: Is my invention eligible for patent protection? Patent search and patent opinion must be done hand in hand because one of the most important factors of patentability is prior patents.
Therefore, a patentability opinion searches previous inventions that are similar to your invention so as to avoid legal complications. It also helps to save time and money.
To do a novelty search, the inventor must clearly explain and identify the invention as well as list out the key features that make it unique. Post this, the inventor or a patent lawyer will conduct a thorough search through the USPTO patent database for patents and publications. He will also search the internet to determine that no prior patent has the same elements or even a combination of prior patents has the same elements since it would render the invention obvious.
2. Freedom to Operate
Freedom to operate search or the right to use opinion searches for other patents that the invention might infringe upon. This is also known as the clearance search since it essentially gives the inventor clearance to pursue production. It gives the inventor freedom and rights to utilize and monetize his product without the fear of getting sued for infringement. Since the focus of the search is on the claim portion of the patents, it is much more complicated and time-consuming.
The right-to-use opinion looks specifically for other patents that the inventor’s product may infringe upon. This opinion is later down the invention pipeline, and essentially gives the inventor clearance to pursue production.
This opinion will identify any patents that are similar enough to bring up potential infringement issues, and will also include legal solutions to work around these infringement possibilities. Once the details of the invention have been submitted by the inventor, then a patent searcher will search focusing only on enforcing patents and published patent applications.
After a thorough analysis that includes the specific examination of the independent claims of the relevant patents, the patent attorney will further research the prosecution history of those patents. Only then can the assessment be made if the product will create any sort of infringement if patented.
These opinions are directed towards only a specific patent or previously identified patents. For example, a non-infringement opinion should be attained when a new product, process, or technology is produced but is known to be similar to a prevailing patented product/process/technology, particularly in the instance when there are established competitors with patents. In this case, a search will not be conducted, but thorough deconstruction and analysis while comparing each element to the proposed invention, will take place.
Validity searches are usually conducted in certain cases. It is done to confirm the validity and applicable nature of a patent. This can be useful to those who are buying patents or rights to patents, as well as for inventors who want to confirm that their patents are valid. Like all the other options, the validity search is also a method of minimizing the risk of infringement or any legal issues in future.
The Lawyers at Paul & Paul are always ready to give you the legal advice you are seeking involving patents. To get all your queries about patent law call one of our intellectual property lawyers at 866-975-7231.