Common Client Questions and How Patent Searches Can Help Find Answers

#1. “Can I make, use, and/or sell my product?”

In all reality, your client may not have the foresight to ask, but a patent professional knows that launching a product without conducting a patent search could lead to patent infringement and the problems that come with it. Before taking a product to market, search for active patents that claim all or part of your client’s product. Patent protection is geographically specific, so limit your search to the patent authority archives applicable to the areas where your client intends to make, use, or sell their product.

Type of Search:     Freedom-To-Operate Search / Clearance Search     
Scope of Search: Specific to geographic area or patent authority; Active patents only  
Search Objective: Find patents that describe some aspects or all of the product or invention at issue 

#2. “Can I patent my invention?”

As for patenting an invention in the United States, U.S. patent law requires at a minimum, that an invention be useful, new, and non-obvious. While nearly all inventions are now considered “useful,” determining whether an invention is “new” and “non-obvious” requires comparing the invention to the information available worldwide. A patentability search should be conducted to find relevant patent documents from patent authorities around the globe, as well as non-patent literature that is publicly accessible.

Type of Search:   Novelty Search / Patentability Search 
Scope of Search:     Global
Search Objective:   Find patent and non-patent literature or
disclosures that pertain to an invention’s “novelty”
or “non-obviousness” 

#3. “How should I draft my U.S. patent application?”

Patent applications should be drafted as broadly as possible without being too vague.They should also be narrowly tailored so that it is clear what is being claimed, and so that the claimed invention does not come across as lacking novelty or being too obvious. How to frame and describe an invention depends on the patent and non-patent information that is publicly available at filing – a patent application should be drafted in light of the information gathered in a novelty search to minimize the risk of rejections or objections from the United States Patent and Trademark Office (USPTO).

Type of Search:   Novelty Search / Patentability Search 
Scope of Search:  Global 
Search Objective:   Gather information about invention patentability
to help draft a patent application that is neither too
broad nor too narrow

#4. “How strong is this patent portfolio?”

Patent portfolio strength assessments typically occur before acquiring rights to patents in a portfolio. As part of the due diligence process, it is wise to evaluate the validity of the patents at issue before entering into a patent licensing or assignment agreement. A validity search requires searching for the information that was available to the USPTO patent examiner when a patent application was filed, and then considering whether the patent examiner was correct in granting the patent. If the conclusion is that the patents in a patent portfolio are valid (i.e., should have been granted) and not subject to invalidation, then the patent portfolio is more valuable than if weaknesses are found.

Type of Search: Validity Search 
Scope of Search: Global; Information available at time of patent application filing
Search Objective: Conduct thorough search for all types of information that weigh against each patent’s novelty or non-
obviousness (to confirm patent lacks risk of being
invalidated)

#5. “Is my competitor’s patent valid?”

If you are assessing the validity of a competitor’s patent, you are likely either concerned about your client infringing a patent or your client is already being sued for infringing a patent. In either case, you should search for references that help you invalidate the patent at issue via an invalidity search. An invalidity search requires gathering the information that was available to the USPTO patent examiner when a patent application was filed, and then considering whether the patent examiner was correct in granting the patent. If you are able find information that weighs against patentability, you may have the ammunition you need to invalidate the patent at issue and defend your client from an infringement lawsuit.

Type of Search: Invalidity Search 
Scope of Search: Global; Information available at time of patent application filing
Search Objective: Conduct thorough search for all types of information that weigh against each patent’s novelty or non-obviousness (in hope of invalidating the patent at issue)

Finding Answers with LexisNexis TotalPatent One®

A patent search is only as good as the tools used to conduct it. The TotalPatent One® patent search platform provides users to access over 125,000,000 patent documents from over 107 patent authorities around the globe. With a user-friendly interface and intuitive features, patent practitioners can easily tailor their searches to their client’s needs and filter search results to find the patents and patent applications they are looking for. No matter which questions your client asks, TotalPatent One can help you find the answers.

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