Patentability/Novelty Search and Commercial Assessment
A Patentability Search / Novelty search / Prior Art Search is conducted to evaluate the patentability of an invention based on the statutory requirements from a patent office. Patentability Search / Novelty search / Prior Art Search is done before preparing the patent application to determine whether the invention is novel and non-obvious. Patentability Search / Novelty search / Prior Art Search involve identifying patent and non-patent literature that can render an invention un-patentable. Apart from worldwide patent databases, scientific publications and business materials are also searched. In addition to evaluating patentability, Patentability Search / Novelty search / Prior Art Search helps in defining the limits of claims while drafting a patent for an invention.
The invention is also evaluated for commercial potential as well. The various factors that we consider in evaluating the commercial viability of an invention include: problems solved, potential applications, market size, potential licensing opportunities, funding/venture opportunities, and challenges to commercialization.
Freedom to Operate (FTO) or Freedom to Practice (FTP) or Clearance Searches
Before a launch of any new product in a particular jurisdiction, a freedom to operate (FTO) / freedom to practice / clearance search should be performed to assess the risk of potential infringement. In freedom to operate search / freedom to practice / clearance search, the claim language of the third-party in-force patents is compared vis-a-vis the product specifications of the client. Based on the analysis, freedom to operate search / freedom to practice / clearance search report provides a mapping between features of the product to be launched vis-a-vis claimed elements of the patent references found. We also provide legal status of the enforced patents. In addition, we also capture the patent publications having features similar to those of product for client’s consideration.
We have been assisting a number of clients in performing Freedom To Operate (FTO), Clearance Search and State Of Art searches, particularly in medical devices, biotechnology, bioscience, life sciences domain, exercising devices and many more.
Evidence of Use / Claim Charts
The team at Effectual Services has extensive experience in creating Evidence of Use and claim charts. The charts are made as per client’s requirements. For quick evaluation, we can map key features of the claims to the product specifications. For detailed charts we try to supplement publically available evidences with reverse engineering or teardown where ever possible.
Invalidity Searches / Prior Art Searches and Claim Charts
An invalidity search / prior art search involves conducting a thorough patent and non-patent literature search to identify prior art references / literature that might invalidate the patent in contention. The invalidity search / prior art search report includes the details of potential prior art literature (along with bibliographic details) and a mapping of the claims to the relevant text of the prior art literature / references. In the invalidity search / prior art search, we also analyze other legal aspects such as antecedent and enablement issues, non compliance to duty of disclosure, etc. Other than English language we have capabilities of searching on Chinese and Japanese languages. A Chinese or Japanese language patent and non-patent literature proves useful in high stakes cases. These invalidity search / prior art search report help in strengthening our client’s invalidity assertions. All these findings are presented in the form of claim charts.
As per various studies, over 90% of patents issued by the USPTO have errors related to the claimed terms, dependency in claims, claim duplicity, cited references, inventor names, specifications, etc. It is imperative for assignees to proofread patents to identify all the PTO/Applicant errors in a patent, ensure that these errors are not detrimental to a patent’s enforceability, ensure that the claim coverage of a patent is not altered and/or limited, the overall scope of a patent is not adversely affected. Effectual Services patent proofreading process is an extremely detailed analysis of a patent’s prosecution history to identify any PTO or applicant error. Our team members run thorough manual as well as automated checks simultaneously to ensure that a patent is free of any errors. Our proofreaders have in-depth knowledge of Patent laws and are also trained in Patent drafting best practices for various jurisdictions, including US and EP. We also prepare ready to file Certificate of Correction that can be filed with the PTOs saving your precious time.