Due Diligence will likely include patent searches. There are various types of patent searches provided by GrayRobinson in supporting clients, with each requiring its own unique process.
GrayRobinson provides guidance and recommendations to its client wishing to patent their ideas or determine if marketing their product will cause them to infringe rights of others. There may be general interest in learning about patents and applications for patents by others within a technology area of interest. The type of patent search will depend upon the needs of the client and will typically differ based on scope. After preliminary discussions with a client, a patent search may include:
A patent may be obtained if the invention is useful, new and not obvious to those of ordinary skill in the art to which it pertains. A patentability search is typically conducted to determine if meaningful patent protection is potentially available in support of a marketing or business strategy. The patentability search employs a multitude of databases, including both patent and non-patent databases, looking for patent references that an Examiner is likely to use in evaluating patentability of claims presented in an application for patent. Patent references used by the Examiner as prior art may include issued patents, published patent applications, journals and other non-patent literature and made public prior to a filing date of the invention.
A clearance search is directed locating unexpired patents that may potentially block commercialization of a product or service. A clearance search, also referred to as an infringement or right to use study, will also locate published patent applications that may be of concerns if issued as patents. The clearance search may result in potentially problematic patents, applications and patent holders to be monitored, and may result in efforts to design around the patent rights identified in the patent, obtaining a license from the patent owner, or obtaining a non-infringement opinion.
A validity search is similar to the patentability search evaluating novelty and non-obviousness, but the evaluation is made on an issued patent or published patent application instead of for a product or process. The validity search may provide support in evaluating the strength of a patent in preparation for enforcement of the patent or when an accused infringer wants to evaluate the validity of the patent being asserted against him. The validity search typically results in both patent and non-patent publications being examined.
A state-of-the-art search is typically done to locate potential competitors or known solutions within a given technology. This type of search will generally include patent and non-patent publications searches.
An assignee search is performed to locate patents and patent applications owned by an entity. This type of search is useful in evaluating a patent portfolio. The patent assets uncovered in such a search may then be rated for licensing or for maintenance decisions, by way of example.