Overview

At each step of innovation, a lot of ideas may seem to be unique and patentable. When a company spends large amount of time and money in research and development activities, it becomes essential to analyze the novelty and scope of inventions, prior to filing a patent.

A Patentability search is the first right step in a patent process as it is designed to tell you the likelihood of obtaining a patent on your idea and to ensure that your idea is extremely unique and patentable. An invention is patentable only when it is new or novel and patentability search for an invention helps in knowing whether it has been disclosed publicly by someone before the critical date of the invention.

Benefits

To Inventor: To know whether others have already staked a claim for that invention and to know about the scope of the invention

To Drafter: To draft the claim by better understanding of the invention over the prior art

To Applicant: Helps to give answer to the examination rejection which may come during its examination phase

Steps for Protecting Your Inventions

Ideas >> State of Art >> Assessment of Ideas & Technology >> Inventions >> Novelty Search >> No Prior Art >> Patent Drafting >> Patent Filed >> Patent Granted

Steps for Patentability Search

Understanding the Invention and Seed Information >> Understanding the Market Technology Trends which helps in preparing an Initial List of Key Players, preparing an initial list of Keywords and Synonyms >> Keyword Based Search >> Classification Based Search >> Assignees/Inventors Based Search >> Shortlisted References >> Citation Search (Webbing Search) >> Similarity Search >> Non-Patent Literature Search >> Relevant Prior Arts >> Preparing a User-Friendly Patentability Search Report with Patentability Opinion from the Intellectual Experts

Overview

An Invalidity Search is a prior art search done after a patent is granted. The purpose of an invalidity search is to find prior art that the patent examiner overlooked so that a patent can be declared invalid. Validity searches are also conducted to check the strength of a granted patent while exploring the available licensing options.

Benefits

To invalidate a patent which has caused risk to the sale of client’s product

To invalidate a patent which has become a reason for patent infringement lawsuit

To check strength of a granted patent before exploring licensing options

Reasons that lead to Patent Invalidity/Validity

Company A’s Product on Sale >> Company B files a Patent Infringement Lawsuit on Company A >> Company A tries to Invalidate Company B’s Patent >> Invalidity Search

Company A has a Granted Patent >> Company A wants to explore Licensing Options for the Granted Patent >> Company A first checks the strength of the granted patent before exploring the licensing options

Steps for Invalidity/Validity Search

Understanding Target Claims and Enablement of Target Claims >> Identifying the Cut-Off Date to search Prior Arts >> Understanding the Infringement Lawsuit (if any) >> Webbing Search >> Keyword Based Search >> Classification Based Search >> Combinational & Logical Search >> Non-Patent Search >> Assignee/Inventor Based Search >> Similarity Search >> Citation Search >> Shortlisting Relevant References >> Detailed Mapping of References vs Target Claims >> Translated PDFs of Non-English References

Plus Points

Interim Reports (if required), Color Coded Claim Charts, Analyst Comments considering understanding of Patent Claims and Estoppels from the File Wrapper Analysis, Professional Databases for Search

Turn-Around Time

5-6 Working Days

Overview

Before a product gets commercialized, a freedom to operate search is essential to ensure that the desired product can be safely launched in a specific market (countries or regions) without infringing or violating third party intellectual property rights within that particular jurisdiction.

To establish an FTO, we first conduct a Clearance Search or non-infringement Search locate any granted and alive (in-force) patents or patent applications.

If there are any valid intellectual property rights of someone else that might be infringed by a company’s product, a Freedom to operate search helps in reaching some sort of agreement for a license with the owner of those IP rights.

Benefits

Helps to evaluate the risk of market entry

Helps to track patent expirations (legal status analysis) to help devise the timing of entry into market

Helps to make decisions relating to potential licensing and mergers or acquisitions among the top players in a technology field.

Provides valuable R&D insights

Reasons that lead to Freedom to Operate Search

Company A wants to sale a product in certain jurisdictions >> Check for IP rights in the jurisdictions to check for any risk to sale of product

Steps for Freedom to Operate Search

Understanding the inherited features of a product >> Identifying the target market jurisdiction >> Search for Alive Granted Patents or Patent Applications (in-force) >> Mapping of Product’s features over Elements of Claims of Granted Patents/Recent Amended Claims of Patent Applications (in-force), Alive Patent Applications >> User Friendly Search Report with Analyst Comments for potential risk on Product’s Sale >> Translated PDFs for Non-English References

Plus Points

Analysis of Recent Claims in force for Alive Patent Applications, Mapping of References based on All Elements Rule, Color Coded Mapping Charts, Coverage of Patent that claim Broad Aspects of the Product

Turn Around Time

7-8 Working Days