Prior Art Search

Our customizable prior art search services leverage Novpat's expert staff of analysts, engineers, and patent attorneys with 500-plus years of collective IP experience and our worldwide IP and technological resource. As robust and flexible as your needs, Novpat's customizable reports can include:

• A complete history of our search process and strategy.
• A short-list of references manually categorized and ranked for relevancy.
• Tables highlighting relevant citations from the references.
• Analytical charts and graphs to help you communicate with stakeholders.
• Intuitive indicators of which inventive key features are disclosed, partially disclosed or undisclosed.

Search Offerings

Our Search and Analytics team uses standardized and creative procedures along with their domain expertise to provide you with the following prior art search reports:

Benefits

Novelty / Patentability Search

A patentability search is directed to searching any reference of any kind which discloses the same.

Patentability searches are conducted when an inventor has an novel invention which he is interested in filing a patent, and wishes to determine if anyone has previously invented anything similar or identical.

In this search we cover both Patent Citations/Non-Patent Citations with different approaches and understanding.

Novelty searches generally have no date constraints on the prior art. In other words, if you find prior art that reads on the invention, it does not matter whether the prior art is from yesterday or 100 years ago ‐ it is relevant. The reason for this lack of date constraints has to do with patent law: Anything that has already been disclosed to the public, in any manner, at any time, cannot be patented.

The basic requirements for an invention to be Patented :

• Novelty
• Inventiveness
• Industrial applicability

Also before filing a patent application we follow the US patent law under section 101, 102, 103 and 112.

Invalidation Search / Validity / Opposition

The idea behind a validity search is that the Patent Office may have issued the patent (or allowed specific claims contained in the patent) in error. Examiners are pretty good at what they do, but they are not infallible and they are often operating under severe time constraints. They may have missed a relevant piece of prior art, and this resulted in them granting a patent with claims that never should have been allowed.

We also conduct Validity Searches which help clients during Merger, Acquisitions, licensing, or valuation.

Patent Invalidation search deals with thorough analysis of all similar documents prior to the filing of the patent. The process involves identifying relevant prior art documents to invalidate the patent. Patent Invalidation is generally used as a defensive tool in most cases, when a company is concerned about infringement of a particular patent.

Also at the time of licensing or monetization of the patent, the invalidity/ validity search helps the patentee to bargain the best possible deal or monetary benefit. Having the complete prior art search in the relevant technology, the patentee will be able to analyse a particular prior art carried by the potential licensor or defendant.

This helps the patentee to show that the patent is valid which ultimately brings more value to the license/ agreements.

Freedom to Operate / Clearance Search

A freedom-to-operate (FTO) or Right-to-Use Search or Right-To-Market or Clearance Search is a search done on issued patents or on pending patent applications to determine if a product or process infringes any of the claims of the issued patents or pending patent applications. A clearance search may also include expired art that acts as a safe harbour permitting the product or process to be used based on patents in the public domain. These searches are often performed by one or more professional patent searchers who are under the direction of one or more patent attorneys.

When to conduct a FTO search ?

FTO search can be conducted at any stages of product development/ life cycle in thereby to track the direction of product development and its commercialisation.

In the early stages of FTO search helps the developers to develop non-infringing products, processes or technology with respect to the relevant patent from third parties.

However, one can conduct FTO search right before launching or commercialising their product, process or technology in order to avoid patent litigation which involves high cost.

Pros of FTO:

• FTO search helps the R&D team to find out the third parties patent and design the product accordingly.
• FTO search also helps the developer team to find out some new ideas and thoughts from the expired patents provided by us.
• FTO search is very helpful in case of potential licensing, cross- licensing, merger or acquisitions.

We keep these things in our mind for an FTO search:

• We normally only search patents, since the issue is whether or not the client would infringe an in-force patent (i.e. alive patent).
• We carefully read the Claims of each patent we find that might be relevant. Because, it is the Claims, not the descriptions found elsewhere in a patent, which determine what it would take to infringe that patent.
• Only in-force patents are of concern, so make sure you limit your date range to the last 20 years.
• Search approaches are limited to the geography where the product of interest is manufactured and commercialized.