Prior Art Search

Prior Art Research is not limited to understand existing technology to determine the novelty of the ideas. Today, prior art search and analytics has become a strategic tool for the companies to mitigate the possibilities of infringement, challenge the validity of the live patent, understand the landscape of the technology and identify the white spaces for directing research and development. Ideas2ipr with its team of techno-legal experts can customize the engagement model to meet your business objectives.

A. Novelty/ Patentability Search

Objective: The primary objective of this search is to determine whether any prior art (published patent applications, granted patents and non-patent literature) influencing the scope of patentability of the technical disclosure exist or not. In other words, this search assists in determination of novelty and inventive step of the ideas.

When to Conduct a Search: The patentability search is best conducted at the ideation stage of the product and/or the service. However, due to technical or various other reasons, this type of search can be conducted at later stages of product development. It is financially prudent to conduct a search definitely before filing a patent application.

Advantages:

1. Prevents reinvention of the wheel, in case ideas disclosed in the technical disclosure already exist in prior art and thus avoids the expenditure and effort required for preparation and filing of a patent application.

2. Identifies existing patent publications including published pending patent applications of competitors corresponding to the technical disclosure.

3. Strengthens the protection scope of the patent application, as the search result enables the draftsperson to draft claims that do not read on the prior art.

4. Provides new market opportunities that may not have been considered before conducting the search.

5. Assists in speedy prosecution of the patent application as claims (drafted without reading on the prior art) have a relatively brighter chance of allowance.

B. Freedom to operate Search

Objective: Have you identified geographies that are business destinations for your products or services? Have you confirmed that your competitors do not hold a patent claiming features of your products or services in your target geographies? If not, then your business may land into trouble. The objective of freedom to operate is to identify in-force patents disclosing similar product, service or technology being offered by you in countries corresponding to your business destinations. As freedom to operate search assists in getting clearance to launch your products or services without infringing any in-force patent in a particular geography, it is also known as a clearance search. A further detailed analysis of patent claims listed in the report assists in generation of infringement search and opinion thereof.

When to Conduct a Search: The search can be conducted at any time during the life cycle of the product development. However, a good strategy is to conduct the clearance search while, finalizing the features of the product/services, before manufacturing/rolling out products/services or before investing substantial financial and human resources on the new product development.

Advantages:

1. Assists in identifying an IP risk involved with the product/services planned to be rolled out in a specific country.

2. A high quality clearance search report can avoid future Infringement proceedings with the competitors.

3. If a clearance search is conducted at an appropriate time before the launch of the product, then design around activities can be initiated at a suitable time to avoid infringement of a potential patent.

4. New window of business opportunity, for example, licensing the technology can be explored.

5. Any invalidity proceedings may be started well in advance to invalid competitor’s potential patent.

Contact us at mail@ideas2ipr.com to engage us for conducting the Freedom to operate/ Clearance search/ Infringement Search.

C. Validity Search/ Invalidity Search

Objective: Patent validity or invalidity search are exhaustive searches conducted for a variety of objectives. For example, if you are interested in patent valuation to purchase or licensing in/out of a patent, then validity search will help you to assimilate the validity of a granted patent. In another case, if you have been accused of infringing a patent, then invalidity search may rescue you with invalidation of the infringed claims. In both the scenarios, the objective is to check the enforceability of one or more claims of a patent.

When to Conduct a Search: The search can be conducted at the any time after the grant date of an in-force patent. Active businesses track the patent publication journals and initiate the validity searches for the published patent application before filing a pre-grant opposition.

Advantages:

1. In case of licensing, buying or selling of a patent, Patent Valuation is carried out, which in turn is dependent on the validity of the patent.

2. A person may file request for re-examination or post-grant opposition in order to invalidate or reduce the scope of the claim with the patent office to escape infringement proceedings.

3. A positive report on validity of the patent may increase the valuation of your patent.

4. A negative report on validity of the patent may affect the enforceability of the patent and hence, provides relief to you from being infringing the patent.

D. Landscape Search

Objective: Patent landscape searches are conducted to get an exhaustive and detailed analysis of patent data in a particular technical field.

When to Conduct a Search: Landscape searches are typically conducted for decision makers to design business plan strategically in a given era of technology.

Advantages:

1. Provides an overall understanding of the patent regime of the technology of interest.

2. Landscape search helps in identification of patent portfolios for acquisitions, buying and selling of technology companies.

3. Identifies competitors and their patent portfolios in the given technology.

4. Tracks the innovation trends in the given technology.

5. Opens a window of licensing in/out of the technology with prospective clients.

6. In-depth analysis can be performed in any facet of the technology/market that an overall landscape may provide pointers to and is of strategic relevance.

E. Competitive Analysis

Objective: Business world is all about providing high quality products and services to your clients better than your competitors. No matter in which domain you are working, you will find your friends and competitors, everywhere. The objective of the patent competitive analysis is to track the patent portfolio of your past, present and future (i.e., emerging) competitors.

When to Conduct a Search: Depending upon the requirements, this search can be initiated at any time.

Advantages:

1. Patents portfolios provide various indicators of the competitor business like latest interest areas, abandoned interest areas, white spaces, etc. Such indicators may be used intelligently to create an effective business strategy.

2. Worldwide analysis of competitors’ portfolio will help you to identify the geographical interest and scope of your competitors.

3. Identify key inventors filing for your competitors.

4. Track emerging competitors/potential licensee.

Prior Art Search

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