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A patentability (or "novelty" or
"pre-examination" or "preliminary" or "pre-ex") search is done to
identify documents which may bar the granting of claims for a
particular invention.
In some cases, claims will have already been prepared, and this is helpful to the searcher, as it focuses his attention on the features thought to distinguish the invention from the prior art. When claims have not been prepared, the searcher uses his judgment, and searches for what might be expected to be claimed. Providing the searcher with any known prior art, results of prior searches, and names of companies and inventors likely to be active in the field of the invention will help him find the best references.
An infringement (or "clearance") search is a thorough search of unexpired patents to locate claims of others
which may cover a given product or method. The searcher identifies
possibly problematic claims of pertinent patents. This enables an
attorney to form an opinion on infringement risk, and to advise on
claim avoidance.
Sometimes this type of search is called a "right to use" search, but to us, that term directs the searcher to review not only active patents, but also expired patents from which one may infer that the subject matter in the public domain. An infringement search may be done early in the product development cycle, to identify field-dominating patents. However, infringement is often in the details, and patents issue each week, so it is important to do a search on the final commercial version of a product before marketing it.
A validity search is a thorough patentability search done after a
patent has issued to determine whether one or more claims of the patent
are valid. The searcher looks for documents more pertinent than those
the examiner considered.
Potentially invalidating references may be used
The searcher may also check the maintenance fee status of the patent, do a title search, and determine whether the patent has been involved in litigation.
In a collection search, the searcher reports all patents relating to a
specified idea or concept.
A collection search is particularly useful to someone entering a new technical field. The purpose of the patent system is to educate the public, and the existing patents contain a wealth of knowledge from which one can draw. Having a library of the pertinent patents on hand may be very useful during product development, particularly if certain patents are identified as important to patentability or infringement risk.
A state-of-the-art search identifies patents representing major
developments in a technology. The searcher typically cites only one of
a set of patents having the same teaching, and emphasizes unexpired
patents. The goal is to provide a manageable collection of the most
pertinent documents.
The Patent and Trademark Office will record documents which affect
title to inventions. Recordation is not mandatory, but most assignments
are recorded because one effect of recording is to protect the assignee
from subsequent transfers of the property by the assignor. Recording
ownership by assignment is also a prerequisite to suing for
infringement.
A title search identifies all recorded transfers involving a patent. The searcher looks for an identifies any irregularities such as breaks in the chain of title which might indicate legal confusion about who the true owner of the property is.
Whereas a title search is for all documents affecting a single patent,
an assignee search identifies all patents which have been assigned to a
particular party. Assignee and title searches are commonly done as part
of the "due diligence" required before completing a corporate
acquisition or merger.
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