Patent Screening Searches

The present availability and access to online patent information makes it easier to conduct a patentability screening search than ever before. This enables ready assessment of the patentability of technological developments, and informed business decisions for developing an intellectual property portfolio. Patent screening searches also allow competitor patent activity to be monitored, and new entrants to a field to be identified.

We encourage our clients to take full advantage of the available online patent databases, by conducting periodic searches keyed to their inventions, technologies, and competitors. However, there are significant legal ramifications for ignoring active patents that may extend to the company’s own products, services, or processes. As such, periodic training sessions by patent counsel to engineering and management personnel are recommended not only to increase the value of searching activity, but to also ensure that problematic patents are brought to the attention of patent counsel. In any event, patent counsel should be notified immediately if possible infringement is suspected. In such cases, it may be further necessary to obtain a legal opinion of non-infringement or invalidity as a showing of good faith to counter a later claim of willful infringement of the patents of others.

The Internet has several websites that provide databases of U.S. patents and published patent applications, as well as international and foreign patents and published patent applications. Free patent search sites include: the U.S. Patent Office, the European Patent Office site, and the Delphion site (free use is limited), the links of which are listed below. There are commercial sources as well where both patent and non-patent publications can be searched. General Internet searches are also helpful in searching for products and services that may not be represented in any of the available databases.

• U.S. Patent Office
• European Patent Office (includes Japan and published PCT applications)
• Delphion
• Google

Additional Patent Information:

• Design Patents protect the ornamental shape or external design of an article of manufacture.
• A Primer on the Utility Patent Process in the United States. This is a narrative description of what a client might experience in working with a patent attorney to obtain a utility patent in the United States.
• Patent Screening Search for assessing patentability of an invention.
• Patent Opinion: The patent opinion concludes with its “opinion” as to the patentability of the invention based on the patent search results.
• Patent Plant: Plant patents are a relatively rare, specialized type of patent for protecting new and non-obvious species of plants.
• Patent Prosecution: Patent prosecution refers to the process of applying for a US patent and having the patent examined by the US Patent Office
• Patent Validity: The first step in determining the validity of a patent is to check whether the patent term has expired or the maintenance fees have not been paid.
• Provisional Applications for Patent: A provisional application for patent is a temporary application that offers a relatively quick and less expensive way (relative to a utility patent application) to officially file an invention disclosure with the U.S. patent office.
• Invention Disclosure Form for Utility/Provisional Patent
• Invention Disclosure Form for Design Patent