Validity Research
How is Validity Research Used?
Validity research is a useful tool in the IP practitioner’s arsenal. Many clients utilize validity research for a myriad of case requirements. While validity research is primarily used to determine the strength of a patent with regards to litigation or re-examination, it is also a valuable tool for evaluating elements of a patent portfolio.The use of litigation as a method for maintaining patent rights is on the rise with the ever increasing backlog at the USPTO. Economic pressure has resulted in new corporate reviews of IP portfolios. Decision-makers are debating more aggressive usage of their existing IP assets or the purchase of new, key IP assets. Validity research adds pertinent information to the formation of corporate patent valuation strategies. The fundamental requirements of these assessments dictates the greatest attention to detail and thoroughness of research.
How is Validity Research Conducted?
Validity research is used to establish the enforceability of an issued patent in court or before the USPTO. The claims of the subject patent are compared with prior art references published before the priority date of the subject patent. A Claims Comparison Chart is provided with results to visually represent the relationship between cited prior art and the most important claimed elements. Express Search validity research includes both detailed research results as well as legal status information for each of the cited references. Opinion-free comments include column/line/figure and claim references to point clients directly to the most important features of the cited art. Coupled with keyword searchable electronic patent copies, clients can quickly and accurately prepare their validity materials. Non-patent literature may also be included to provide an additional scholarly overview of the field of technology.
Clearance Research
How is Clearance Research Used?
Clearance research (also known as “Freedom to Operate” or “Right to Use” research), is a fundamental element in opinion drafting and a key business tool for corporate management. Express Search offers detailed clearance research allowing our clients the flexibility to focus on drafting opinions, amendments, and briefs while having peace of mind regarding due diligence and strength within the market. Clearance research has become a standard method of judging product value in the intangible asset marketplace. This research is in higher demand as companies are forced to consider the increased probability of legal scrutiny.
How is a Clearance Research Conducted?
Clearance research includes an infringement search in addition to searching expired patents that may provide a “safe harbor” for a specific product, process, or service. Our researchers address both infringement and patentability concerns with the ultimate goal of giving the client the ability to offer a solid legal opinion regarding the barriers to entry into a particular field of technology or market. Due to the in-depth nature of clearance research, the disclosure is measured against the claims of the cited prior art. This eliminates references that could be included in patentability results that do not specifically teach the client’s invention. The end result is a highly focused body of prior art whose claims read on the disclosure provided. The researcher covers the earliest art to the most recent inventions, including US patents, US applications and foreign art. Non-patent literature may also be included to provide an additional scholarly overview of the field of technology. Express Search clearance research includes both the search results as well as diverse legal status information for each of the cited references. Opinion-free comments include column/line/figure and claim references which point clients directly to the most important features of the art. Coupled with keyword searchable electronic patent copies, clients can quickly and accurately prepare their clearance opinions with confidence.
Non-Patent Literature Research
How is Non-Patent Literature Research Used?
Non-patent literature provides similar benefits to patent prior art during prosecution, litigation, and re-examination proceedings. Scholarly articles and documents within the public domain are an ever-increasing presence in the realm of intellectual property, as well as a growing requirement by the USPTO. Relevant articles can be efficiently located to provide support for intellectual property endeavors, from validity to clearance research. These articles point out key elements that were known to those skilled in the art prior to a patent’s publication and provide insight into the development of cutting edge technologies.
How is Non-Patent Literature Research Conducted?
The viability of non-patent literature as an aid to patent research has greatly increased over the past decade with the maturation of online data collections. Database developments, particularly with regard to federated databases such as Google Scholar, PLoS, and Science.gov, provide access to scholarly publications. In most cases, it is possible to locate highly relevant non-patent literature without incurring database costs. Express Search utilizes both subscription and free databases, depending upon the field of technology and individual case requirements. Our researchers are skilled at identifying the right non-patent literature in the most cost effective manner possible.
We have successfully provided Accelerated Examination Pre-Examination Support Documents based entirely on free databases. These databases highlight a widely available pool of free information. Additionally, these databases balance the increased USPTO requirements with a cost-effective research alternative.
Express Search includes a cursory non-patent literature research with ALL patentability research. Our results typically include 2-6 articles and product pages related to the disclosure. If you require a more in-depth search, we can search non-patent literature on an hourly basis.
Patentability Research
How is Patentability Research Used?
Patentability research provides clients with information used to form patentability opinions and a strong foundation to subsequent application drafting and submittal. Patentability research is typically required in conjunction with the corporate evaluation of new and potential products during the initial stages of prosecution. A well crafted Patentability search can save time and money later in the prosecution cycle. Patentability research benefits those with new intellectual property ventures and provides a good overview of the patents relating to a potential product or design.
Express Search includes a cursory non-patent literature research with ALL patentability research. Our results typically include 2-6 articles and product pages related to the disclosure. If you require a more in-depth search, we can search non-patent literature on an hourly basis.
How is a Patentability Research Conducted?
Patentability research is intended to provide a general overview of the art for a particular invention. The clients disclosure is compared to the prior art and the most similar patents in form and function are provided. While this search is not intended to be as exhaustive in scope as other research, it does provide the required depth to render a strong patentability opinion. Opinion-free comments include column/line/figure and claim references to point clients directly to the most important features of the art. Coupled with keyword searchable electronic patent copies, clients can quickly and accurately prepare their patentability opinions with confidence.
Landscape/Whitespace Research
How is Landscape/Whitespace Research Used?
Landscape/Whitespace research provides an overview of a field of technology. It is an important tool in the R&D and product development process. Landscape/Whitespace research offers clients the best and most current estimation of technological innovation to focus corporate research strategy, determine areas of licensing, and gather industry information. Patent landscape research has been a relatively recent development, due in part to an increased need for patent research as an aid in critical business decision-making. The results identify key areas where the technology is most heavily represented, who the main assignees are, and what facets of the technology are least protected. Landscape/Whitespace research within the analytical guidelines of a Landscape framework offers clients the most customized and detailed information available to make informed decisions.
How is Landscape/Whitespace Research Conducted?
Landscape research compiles references that show functionally equivalent means of accomplishing a similar result, providing a representative sample of cutting-edge prior art. Express Search compiles the most pertinent information into an accessible format for client referencing and cross-referencing. Our Landscape format offers flexibility for both a birds-eye view of technology, as well as a focused review of specific aspects of the cited art. A Landscape document is prepared independently to provide a visual representation of the state of the art and technology. It groups the most important features of the disclosure and relates them to art cited.
Accelerated Examination Research
How is Accelerated Examination Research Used?
The goal of decreased pendency and increased efficiency at the USPTO has resulted in procedural changes based on burden-sharing, particularly with regard to research. The best example of industry impact of these changes is the Petition for Accelerated Examination, replacing the Petition to Make Special. This new Petition will be the template for the USPTO’s future efficiency initiatives. Accelerated Examination filing has been used for both legal and business decisions, growing in benefit as its processes become more familiar to the USPTO and practitioners.
How is a Accelerated Examination Research Conducted?
The initial search consists of an extended novelty search including both patent and non-patent literature, where the search strategy is reported using a Pre-Examination Search Document. The Pre-Examination Search Document requires little modification by the client prior to submission. The search is based on both a classification search as well as a keyword search of patent and non-patent literature. The art of Conducting this research is based on selecting the keywords from the specification and claims. It is important to have consistent and well crafted keyword search strategies across all keyword searching.
Due to the close relationship between the keyword search strategy and the application as filed, we strongly recommend an update to the initial search based on any changes made to the disclosure and/or claims. Keywords or concepts added to the application after the initial search are routinely noted by the Examiner during review of the Petition. We then review the concerns expressed by the Examiner and modify the search accordingly, supplying a modified search report and new Pre-Examination Search Document. The dismissal of a Petition is as common as a first office action rejection. Express Search includes an update to the Petition at no additional charge. Finally the Examiner may require the Pre-Examination Search Document be updated prior to the patents allowance, which Express Search will update at the direction of the client for an additional authorization.
Accelerated Examination Petition Requirements
As of August 26th, 2006, the USPTO has established procedures whereby a patent application filed in the USPTO’s Electronic Filing System may be examined out of turn if the applicant files an acceptable petition to make special under the accelerated examination program. The goal of the accelerated examination program is to render a decision on patentability in one year. All petitions to make special, except those based on the applicant’s health or the patent prosecution highway pilot program, will be handled under the accelerated examination program.
Express Search now offers an accelerated examination search designed to meet the specific pre-examination search requirements of the USPTO for support of petition for accelerated examination. Our search includes:
- A classification search of US patents and published patent applications based on the disclosed invention under the current United States Patent Classification system (USPC). We consult the search notes listed in the Manual of Classification to expand the scope of the search.
- A key word search of the US patents and published patent applications based on the disclosed invention using terms recognized in the art given their broadest reasonable interpretation. We focus on individual features by themselves and in combination.
- A key word search of foreign patent documents including sources suggested under the PCT Minimum Documentation Requirements as well as other sources such as the USPTO Universal Public Workstation or external databases.
- A key word search of the suggested Non-Patent Literature (NPL) resources from the current USPTO search templates for the appropriate primary classifications. Additionally, we search appropriate NPL sources suggested by the PCT Minimum Documentation Requirements.
- Additional search tools (e.g., nucleic acid or protein sequence searching tools) may be identified under the USPTO search templates. When these tools are suggested, we will provide the client with an estimate of any additional database costs and time requirements. Elimination of such search resources requires specific justification within the accelerated examination search report.
Our search report includes the US and IPC classes and subclasses searched as well as the search strategy used for all text searching of both patent and non-patent literature. We include a listing of all external databases referenced in the course of the search. This format is suitable for inclusion in a pre-examination search document as outlined by the USPTO.
Our search results provide comments on the cited prior art designed to meet the IDS requirements of Identification under §1.98(a)(3)(iv)(A). We disclose, where appropriate, the column, line, paragraph, figure and claim that caused the art to be cited. We are confident our pre-examination search will be considered sufficient to support a petition for accelerated examination. If there are any specific USPTO identified deficiencies that require further research by the applicant, Express Search will update the pre-examination search at no additional charge.
The additional IDS requirements for correlation under §1.98(a)(3)(iv)(B) and for non-cumulative description under §1.98(a)(3)(v) relate to specific claim language and are outside of the scope of our search results. The requirements for patentability justification under §1.98(a)(3)(vi) varies based on the period in which the IDS is filed and are also outside the scope of our search results.
Brand-Oriented Design Patent Landscape Research
Brand-oriented design patent landscape research is used to get a feel for the current trends and direction for particular fields of branding designs (e.g. technology, apparel, packaging). The landscape search offers an in-depth study of the design patent coverage to determine viable future research and business development paths. This search includes our standard research report as well as a visual comparison of the design features identified to each reference cited.
Brand-Oriented Design Patent Research
Brand-oriented design patent research is used to explore branding decisions and determine the liklihood of design patent protection for a particular brand design. We review the design art to identify design patents that relate to the specific brand elements of interest, as well as designs assigned to competitors and other entities. Some utility art may be reported in the course of research based upon the allowed drawings.