PATENT SEARCHES AND MANAGEMENT COVER A WIDE RANGE OF SERVICES:

A sustainable competitive advantage is required to thrive in today’s dynamic business environment. As organizations devise and execute business strategies, they face numerous challenges in extracting relevant information from databases. In devising innovation-driven growth strategies, organizations resort to patent searches as a solution for a varied number of queries related to their business requirements. Therefore, outsourcing such services help organizations to focus primarily on their business goals. Drawing from the extensive experience, we provide patent searches such as patentability search, design search, accelerated examination search, invalidation search, freedom to operate search (FTO) and state of the art search particularly in medical devices, biotechnology, bio-science, etc.

Knock Out or quick-and-dirty search is performed to identify novel inventions from databases within the stipulated timeline. Such searches are conducted prior to making an investment in drafting and filing a patent. The knock out searches are preferred by inventors to save costs on assessing the patentability of the invention. Organizations leverage knock out searches to reduce the volume of invention disclosures in the pipline by ensuring high quality. We have in-depth experience in performing knock out searches by identifying prior art references which target the novelty aspect of the invention. The search is conducted using commercial patent databases and is restricted to three major filing jurisdictions, i.e. US, EP, and WIPO. Our report formats are extremely structured, easy to understand, and tailored as per your requirements.

A patentability search or novelty search is conducted to evaluate the patentability of an invention based on the statutory requirements of a patent office. The searches are conducted prior to preparing the patent application to determine whether the invention is novel and non-obvious. The objective of the search is to identify prior art relevant to the novelty of the invention in patent and non-patent literature.

We have access to industry’s leading patent and non-patent databases across 100+ jurisdictions worldwide.

Some of the databases include Thomson Innovation, Orbit (from QuestelTM) and Total Patent (from LexisNexisTM), Google Patents, Espacenet, USPTO, and other national and non-patent databases such as IP.com, Google Scholar, IEEE Xplore, CiteSeer, ACM Library, Wiley’s Library, etc. Our patentability search report helps you to ascertain the probability of a patent grant and scope of protection to an invention. We conduct exhaustive prior art searches in patent databases and provide detailed patentability analysis. We also help you to locate features of the invention that have the potential of a patent grant. The search strategy consists a variety of strategies including keywords based searching, patent classification-based searching for example, CPC, IPC, USC, FI, F-term based searching; assignee and inventors based searching; citation search/spider searching.

COMMERCIAL ASSESSMENT

The invention can be evaluated for commercial potential as well. The various factors that we consider in evaluating the commercial viability of an invention include potential applications, market size, potential licensing opportunities, funding/venture opportunities, and challenges to commercialization.

An accelerated examination search (AES) requires comprehensive prior art search of US patents, published patents, and non-patent literature. It requires an applicant to submit a pre-examination report along with the patent application in order to receive the examiner’s final decision within 12 months.

We prepare AES report as per the guidelines defined by USPTO to ensure a fast response from the examiner in prosecuting your patent application. The search helps you to save costs and time for obtaining a patent.

The search focuses on novel ornamental aspects of the overall design. Since the design is apparent in appearance, the subject patent may relate to shape, structure, outline or configuration. A design search protects only the appearance of the article and not structural or utility features. The design protected in the patent needs to be non-obvious with respect to the existing prior-art for the patent to be granted.

After gaining an in-depth understanding of your business requirements, we conduct exhaustive searches for designs by focusing on keywords and other strategies such as different classifications to ensure comprehensive coverage during the search. In addition to utility patents that may disclose the same or similar design, we search the following sources for prior art:

  • USPTO Design Database
  • RCD online maintained by the trademarks and designs registration office of the European Union
  • Hague Express Structured Search for WIPO
  • Canadian Industrial Designs Database
  • IP Australia Database
  • Chinese Design Database
  • Google Images

The validity search is performed by assignee/plaintiff after the grant of a patent to ensure that the patent granted is valid and enforceable whereas an invalidity search is conducted by a defendant to invalidate a patent by conducting prior art search. The key objective of the validity and invalidity search is to unearth prior art that was likely missed by the patent examiner during the prosecution stage, which may potentially question the novelty or non-obviousness of the reference. An invalidity/validity search involves conducting a thorough patent and non-patent literature search to identify prior art references predating the earliest filing of the patent.

We perform exhaustive prior art searches in subscribed databases and provide references that are relevant to the patent that has to be invalidated. Our comprehensive search strategy includes keywords-based searching, patent classification based searching such as CPC, IPC, USC, FI, F-Terms (for Japanese patents) based searching, assignee and inventors based searching, citation search/spider searching and semantic search. The invalidity search report include the details of potential prior art literature (along with bibliographic details) and mapping of claims to the relevant text of the prior art literature/references.We help you conduct file wrapper analysis and identify references to invalidate a patent. While performing validity and invalidity search we focus on:

  • Making an accurate understanding of the technology of patent and claims coverage
  • Accurately defining the novel aspect of the patent based on specifications and file history
  • Validating the prior art under respective regional laws such as 35 USC 102/103 for US and article 54, 56 of EPC

Before launching a product or service in the market, it is important to conduct a freedom to operate (FTO) or clearance search. In order to assess the risk of potential infringement and avoid subsequent litigation, the organization should proactively perform a FTO search to identify any patents that may potentially map to the features of the product or service to be launched.Generally, the FTO search is restricted to a particular jurisdiction, however, it is prudent to search for international applications which can potentially enter the target jurisdictions in order to be absolutely sure of obtaining a patent. An FTO search involves a claim specific search to locate claims that read on the features of the product or service to be launched in the market. Specifically, the following points should be focused on while conducting an FTO search:

  • Capturing the enforceable patents and patent publications having features similar to those of the product or service
  • Providing legal status of the patents identified so that the clients are aware of the expired patents that exist in the public domain
  • Providing a mapping between features of the product to be launched vis-a-vis claimed elements of the patent references found in order to indicate the extent of mapping

We at Effectual Services have assisted clients in a number of FTO searches for various jurisdictions worldwide on a variety of technology domains including Computer Science and Information Technology, Electronics and Communications, Electrical, Mechanical, Chemical, Biotechnology, Pharmaceuticals and Life Sciences domain. Effectual Services has an experienced team, consisting of Engineers, Bachelors, Masters and PhDs and many of our team members have a Law degree in addition to the technical degrees making them ideal for Intellectual Property related services.

The availability of patent and non-patent literature from Asian countries in English language is limited. Such Asian countries as China, Japan, and Korea are considered as the hubs of innovation and have witnessed a lot of patent filing activity in the recent years. Many of the patent and non-patent documents originating from these jurisdictions do not have English language translations or counterpart(s). For an effective patent search, it is essential to cover prior art documents (patent & non-patent) from these jurisdictions.

Machine translations are preferred to identify relevant references from these jurisdictions but the search is limited as most of the time the relevant data is not captured. Thus, there is a need to conduct manual searches on databases that are specific to the patents in the respective languages.

We help you in performing searches in native language databases using respective native language queries. We have in-house team of native experts of both experienced managers and patent analysts to perform searches in native languages.

Patent landscape is an exhaustive search of patents that belong to a particular technology domain. The classification of patents in a specified order enables clear understanding of the domain not only from the technical side, but also from a business standpoint. Landscapes are exhaustive in nature and involve:

  • Developing a taxonomy in light of your business objectives
  • Conduct an exhaustive search on patent databases to identify patents that can be classified in a technical domain
  • Understand and derive technical insights from the patents that help in informed decision making

Landscape search provides solutions to a broad number of business queries that are related to the specific area of technology including potential areas of research, current strengths, gaps or white spaces. We conduct exhaustive search and analysis of the patent documents relating to your domain in order to map out competitor’s technology, licensing, research and development, and merger and acquisition strategies. Our report provides insights on current trends, potential inventors, and technology evolution.

State of the art search is performed to foresight a comprehensive picture of a particular technology area. Such searches help you to map latest development in the specific technology, and make strategic business decisions.

We provide an exhaustive prior art search report in the respective fields including applicants and inventors, filing date, publication date, assignee, date of grant etc. Our search strategy is comprehensive and includes a variety of strategies including keywords-based searching, patent classification based searching for example, CPC, IPC, USC, FI, F-Term based searching, assignee and inventors based searching, citation search/spider searching. The search report helps you to identify new avenues for research and development, merger and acquisitions, and potential competitors.

We perform searches in patent databases such as:

  1. Patent databases like Thomson Innovations, Orbit (from QuestelTM) and Total Patents (from LexisNexisTM), Google Patents, Espacenet, USPTO and other national patent databases.
  2. Non-patent databases such as IP.com, Google Scholar, IEEE Xplore, CiteSeer, ACM Library, Wiley’s Library, etc.

With the rapid growth in biotechnology space, organizations are filing patents at a faster clip than ever before. Bio-sequence searches involves finding a specific arrangement of sequences in the patent or non-patent document. Bio-Sequence search helps the inventor to ascertain whether the sequence is novel. Since the novelty of the sequence lies in the unique combination of nucleotides or amino acids, a keyword-based search alone cannot capture the entire data-set including all the relevant results. Even if the desired sequence has a similar name, all patents would not include the name, and thus a number of such results may be missed during the keyword-based search.

We have a team of bio-technology experts who specialize in conducting searches using such tools as – STN (Scientific Technical Networks), which is a network of more than 200 databases, BLAST (from NCBI), Marpat, etc. Over the years, we have gained in-depth understanding of the databases and developed strategies to derive quality results.

Chemical structure searches involve finding a specific spatial arrangement of molecules in the patent or non-patent document. Our team of pharmaceutical experts and chemical engineers assist you in determining the novelty and validity of a claim in a chemical structure by conducting searches in subscribed patent databases. We perform in-depth analysis of the structures to identify similar compounds. Depending on the type of the structure and database, structure searching is supplemented by other strategies such as IUPAC/Common name search, CAS number search to overcome the inherent limitations of the database and ensure best quality results.

Some of the key tools used for structure searching are Scientific Technical Networks (STN), which is a network of more than 200 databases, Chemspider, etc.