Intellectual property searching is performed for many different reasons: to make an initial determination of whether a patent application should be filed; to conduct an investigation in determining what others in a particular field of technology are doing; to avoid a patent infringement action, or to avoid the rejection of a trademark application are but a few examples of what searching is performed. A comprehensive list of various types of searches is provided to assist you in making a determination of what type of search you may require relative to your business endeavors.
Click here for a simple example of how to do a patent search.
Once a determination is made as to the purpose of the search, one must gather the necessary data to conduct the search, determine which and what type of database needs to be searched, develop a database searching strategy, and then analyze the results of the search to come to a definitive determination. We have provided you with a comprehensive list of the various types of searches, a list of various databases, certain strategies, and analyzing techniques are provided to assist you in this task. While this resource is sufficient to conduct a comprehensive search, we recommend the hiring of the services of a professional as comprehensive searching is a developed skill that takes training and practice.
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Types of Searches
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Purpose of Search
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Database Sources Sources in Bold are Fee |
Search Strategies
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Analysis of the Results
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Preliminary Patentability Search
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A search performed prior to undertaking the expense of filing a patent application. The purpose of this limited search is to make an initial determination of whether a patent application should be filed. Such a search may also be necessary if a client desires to have the examination of a patent application accelerated. Preliminary patentability searches are typically, but not always, conducted by professional patent searchers who are familiar not only with the patent classification system but also with the art group examination staff in the United States Patent and Trademark Office. |
uspto.gov; patents.ibm.com; micropatents.com; reedfax.com;lexis.com dialog.com derwent.com |
define field of invention (see manual of classifications) narrow field to field of novelty (Subclasses within identified field) narrow subclass to point of novelty
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examine each patent document to determine whether it describes or anticipates the invention
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Infringement Search |
A search performed relative to unexpired patents and which is typically more extensive than a preliminary patentability search. The purpose of this search is to discover those patents, if any, which dominate a particular field of art so that infringement may be avoided. An infringement search may be preceded by a State of the Art Search which is performed to give an interested party an overview of the state of the present art in a given field. |
Utilize the same database sources as in a preliminary patentability search |
Employ the same strategies as in a preliminary patentability search
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Examine the product, process, article of manufacture to gain a complete understanding of the features and processes examine the claims of each uncovered patent document to determine whether the product, process, article of manufacture falls within the scope of the claim(s) |
| State of the Art Search | A state of the art search is also more extensive than a Preliminary Patentability Search and many times will include publications from technical journals and other relevant publications other than patents. |
Utilize the same database sources as in a preliminary patentablity search. Search technical publication resources including technical periodicals at universities and other places of study. |
Employ the same strategies as in a preliminary patentability search | examine patent documents and technical publications and summarize the state of the art |
| Validity Search |
A validity search is generally undertaken during litigation to find publications, and other uncited references that will invalidate a patent or limit the breadth of the claims within a patent. |
Utilize the same database sources as in a preliminary patentability search. Search technical publication resources including technical periodicals at universities and other places of study. |
Employ the same strategies as in a preliminary patentability search |
Examine each patent document and technical publication to determine whether the invention as claimed in the patent in question is described in another patent document or technical publication having an effective date at least one year prior to the effective filing date of the patent under investigation. |
| An Index Search | A search of the Official Gazette published weekly by the United States Patent and Trademark Office to determine whether a patent has been issued to a particular party, such as to a competitor. |
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| A Patent or Technology Watch | A patent or technology watch is a related service for identifying patents issued each week in selected technology groups or classifications. |
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| Assignment Search | A search to determine ownership of a patent or the existence of any recorded licenses to a particular patent. |
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| Trademark or Service Mark Search | A preliminary search performed prior to the filing of a trademark or service mark application. The search is performed to determine the availability of a mark for identifying the product(s) or service(s) of the client. Such a search, extends not only to those marks registered with the United States Patent and Trademark Office, but also to the common law marks listed in the various telephone directories of the major cities of the United States. Both domestic and international Trademark Watch Reports are also performed in order to identify improper use of a registered mark. | |||
| Copyright Search | A preliminary search is performed to determine whether a particular work of original authorship has been registered with the Library of Congress |
A preliminary search performed prior to the filing of a trademark or service mark application. The search is performed to determine the availability of a mark for identifying the product(s) or service(s) of the client. Such a search, extends not only to those marks registered with the United States Patent and Trademark Office, but also to the common law marks listed in the various telephone directories of the major cities of the United States. Both domestic and international Trademark Watch Reports are also performed in order to identify improper use of a registered mark.
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