21 Jul Five ways your company can benefit from patent searches
Did you know there are at least five different types of patent searches you can use to help your company? They include: (1) a search for competitors’ patents, (2) a clearance search, (3) a patentability search, (4) a right-to-use search and (5) a patent validity search. Each type of search has a different strategy and a different goal.
1. A search for competitors’ patents
A search for competitors’ patents is typically performed on a periodic basis and looks for patents that issue to one or more competitors. The search is typically restricted to geographic areas and may include specific technology restrictions. For example, Company ABC may perform a monthly search for all patents issued to Companies XYZ and 123 in the United States and Japan, where the requested patents include the terms widget and/or gadget. However, the search does not need to be limited to any particular set of companies, geographic area or search term. The goal of this type of search is to uncover patents of competitors that are relevant to your business.
In addition to uncovering competitors’ patents, this search can also look for patent application publications that issue to one or more competitors. However, because most U.S. patent application publications do not list an assignee, creative search strategies are typically used to uncover how a competitor is attempting to obtain patent coverage.
2. A clearance search
A clearance search (also referred to as an infringement search) attempts to uncover patents issued within the last 20 years that may pose an infringement risk to a product. Preferably, the clearance search is performed before the release of the product. We review the uncovered patents of the clearance search and inform you whether any uncovered patent is a potential risk. If a patent is a potential risk, we can provide an opinion letter to you why we think your product does not infringe the uncovered patent and/or make recommendations on how to avoid the risk as the product is being developed.
The goal of a clearance search is to uncover patents and patent application publications that are a potential infringement risk before a product is released. A clearance search is not perfect, but it increases the likelihood of avoiding a potential problem before a patent owner contacts you. Additionally, it is typically good practice to perform a clearance search when the product design is finished, even if a patentability search was previously performed.
3. A patentability search
The goal of a patentability search is to determine the likelihood a new concept, process, device, etc. (i.e., the “invention”) is patentable and what the likely scope of protection may be. Typically, we search for U.S. patents and patent application publications that relate to the patentability of the invention, and are usually limited to the most likely places where the prior art would be located. However, the search can be expanded to other countries and to other types of documents. It should also be noted that a patentability search is not limited in time. A patentability search is not perfect, but it is a good predictor of the likelihood the invention is patentable.
4. A right-to-use search
A right-to-use search combines an infringement search and a patentability search. The ultimate goal of a right-to-use search is as the name implies — the right to use the product or process. This includes determining the likelihood a new concept, process, device, etc. is patentable and attempting to uncover patents and patent application publications that may pose an infringement risk to a product. Preferably, the right-to-use search is performed before the release of the product.
5. A validity search
If an uncovered patent is an infringement risk, we can perform a validity search to help determine whether the patent is valid. The validity search looks for publications (typically patents) that can be used to prove one or more claims of the patent are invalid. The goal of a validity search is to invalidate one or more claims of an issued patent.
Sheldon L. Wolfe is an attorney with Michael Best & Friedrich LLP and can be reached at slwolfe@mbf-law.com
The opinions expressed herein or statements made in the above column are solely those of the author, & do not necessarily reflect the views of Wisconsin Technology Network, LLC. (WTN). WTN, LLC accepts no legal liability or responsibility for any claims made or opinions expressed herein.