Why should you do a search with regard to an invention or with regard to a patent application you want to file?  The reasons may be manifold and may depend on your particular situation and timing.  Here are some thoughts and questions that are brought to our attention that we can address and discuss with you:

• Is there already prior art with respect to your invention?
• Can a search help to decide whether you should file a patent application?
• Can a search help to formulate suitable patent claims?
• Can a search provide information about your competitors?
• Can a search provide information on whether you should enter into a license agreement in order to exercise your activity and freedom of action in order to avoid patent infringement?
• Can a search tell whether a patent most likely is valid or whether it may be invalidated in a possible lawsuit?

As you can see, reasons for conducting a search are manifold.  However, RUPPERT U.S. IP GmbH does not carry out the searches listed below itself but relies on a network of search companies with which we carry out the searches – searches concerning an invention, a patent, or in considerations of other questions you may have.

Depending on the question searched and availability, search companies search public and private databases, e.g.,  patent databases (PatSnap, USPTO, EspaceNet, KIPRIS, SIPO, CIPO, JPlatPat, Google Patents, Derwent, Questel-Orbit, Patbase, Delphion, LexisNexis, TotalPatentOne, PatSeer, WPI, etc.), non-patent/literature databases (e.g., ACM, IEEE, IJAR, IP.COM, PubMed, PubChem, SureChem, STN, MedLine, ScienceDirect, Scitation, Web of Science, Google Books, Google Search, Google Scholar, Springerlink, etc.), university libraries, etc.

Please find below a list of topics on which searches can be performed, followed by brief explanations:

• • Patentability / Novelty
  • Patent Validity / Patent Invalidity
  • Patent Infringement / Patent Non-Infringement
  • Freedom to Operate
  • IP Due Diligence
  • Searches for Chemical Structures, Nucleic Acids and Proteins
  • Competitive Benchmark Analysis
  • Competition Observation & Third-party Submissions in the USPTO
  • Prior Art / Patent Landscape Analysis
  • IP Value Assessment
  • Patent Portfolio Analysis

You cannot obtain a patent if your invention already has been publicly disclosed. Therefore, it is often advisable to conduct a search of as many as possible prior public disclosures.

A patentability search also is known as a novelty search or prior art search. It is an essential component for a sound patenting decision and IP strategy. Primarily, it involves determining whether or not a potential invention is novel and non-obvious, whether or not someone has previously publicly disclosed the inventive concept, i.e., whether or not, in light of the worldwide novelty and non-obviousness requirements, you could obtain a patent for your invention. Such searches include (depending on the firm and the effort involved) searching the worldwide patent and non-patent literature (e.g., scientific journals, research papers, technical literature, manuals, books, magazines, articles, blogs, websites, etc.), as well as locating products to identify documents or products that may be relevant to your invention and related prior art.

Depending on the result of a patentability/novelty search and the ensuing discussion thereof with your patent attorney, you may formulate a decision on seeking patent protection for your invention or not and to incur certain cost or not.

In principle, after examination at the USPTO and granting, a U.S. patent is presumed to be valid. But were the searches and examinations in the USPTO really sufficient, given that the patent examiners only have a limited amount of time to examine a patent application? Will a granted patent withstand a more rigorous attack on validity in a court?

A patent validity or invalidity search is an exhaustive prior art search conducted after a patent has been granted. In these searches, the goal is to find patent and non-patent documents (e.g., scientific journals, research papers, technical literature, manuals, books, magazines, articles, blogs, websites, products, etc.) that appeared before the priority or filing date of the patent. The documents found are then analyzed to determine whether they affect the validity of the patent claims by challenging their novelty and obviousness. Patent invalidity searches thus aim to find documents that question the validity of the patent claims, especially documents that were not considered by the patent examiner during the examination of the patent.

In particular, patent invalidity searches are used to defend against patent infringement suits. A competitor may use the results of a patent invalidity search and seek to have a patent invalidated, either in litigation or by filing a petition for inter partes review (IPR) in the U.S. Patent and Trademark Office (USPTO).
A patent validity search is often performed to determine in advance whether a patent can withstand attack in litigation. Further, a detailed patent validity search can be extremely useful in licensing negotiations. A potential licensee can conduct a patent validity search to determine the strength of the patent under disposition. The result of such search can provide the licensee with helpful information in negotiating royalties before entering into licensing negotiations.

A patent infringement or patent non-infringement search aims to identify patents with claims that relate to a particular product, method or service. A patent infringement search helps to determine whether another company is making, using or selling a patented invention without having obtained a valid license from the patent owner. Before conducting such a search, the retained search firm will work with the patent owner and us to determine the characteristics of the allegedly infringing product, method or service that may provide the basis for patent infringement.

Results of those searches can be used in a variety of ways. For example, if a potential infringer of one of your patents is identified, you can pursue well-founded licensing negotiations with them, or, if those are fruitless, consider legal action in a court of law. If you find yourself in a position where there is a possibility of patent infringement, the results of this search will provide you with a basis for design-around activities, or you may consider licensing the requisite technology – before you become involved in litigation.

The scope of a patent infringement or patent non-infringement search can be limited to active U.S. patents or expanded to include foreign patents.

Infringing a patent, even unknowingly or accidentally, can be a costly mistake. Companies that infringe existing patents are at risk of suffering a severe setback in the marketplace and having to pay substantial damages or royalties. Therefore, before you bring a product or process application to a particular market and are unsure of how the rights to do so are distributed, it is critical to secure the freedom to do so. In other words – ask yourself “would my activity infringe a valid patent in this market and country?”

A freedom to operate analysis helps you assess the risk of a potential patent infringement and subsequent litigation. Such a search identifies active patents and published patent applications that contain patent claims that may apply to your product, method or service intended to being marketed. The search begins with a search for granted and pending patent applications and is often supplemented with a legal opinion thereon. This legal opinion analyzes, in light of local patent laws and the identified patents, or patent applications, whether marketing the product, method, or service could potentially infringe one or more patents. Equipped with such an opinion, you, e.g., as a young start-up company, can avoid a possible costly lawsuit by modifying your product or method accordingly before entering the market or by seeking an appropriate license.

Intellectual property is arguably the most important asset of any business, especially any startup.  Protecting and leveraging it should therefore be among each company’s highest priorities.  For example, an intellectual property rights evaluation plays an integral role when obtaining funding (angel seeding and venture capital), as well as in corporate merger and acquisition transactions.  It is critical to conduct thorough due diligence on intellectual property rights for both sides of the transaction prior to a merger or acquisition.  This includes, among other things, an analysis of the intellectual property itself, an analysis of the rights to a product, method or service associated with the intellectual property, and an analysis of the company itself that owns the intellectual property.

Depending on the scope, a due diligence analysis often involves analyzing the following questions:

• whether the patents at issue are valid and enforceable?
• whether there are still pending patent applications?
• whether the intellectual property has been properly transferred?
• whether the company has clear title to the patents and patent applications?
• whether any of the inventors named in the patent have licensed or assigned the technology to another party?
• what is the expected life of the intellectual property compared to the commercial life of the product or method?
• what is the scope of the patent claims already issued or those of the pending applications?
• whether the patents at issue are involved in litigation or are at risk of litigation?
• whether there is freedom to practice a disposable product or method or whether third party patents must be licensed?

Especially in the field of biotechnology and pharmaceuticals, searches for chemical compounds, nucleic acids and proteins play an important role in projects related to intellectual property, patent applications and patents. This involves either searching for novel chemical molecules, nucleic acids and proteins or questioning the novelty of those molecules in granted patents. The structure searches provide a detailed and comprehensive analysis of similar structures or sequences to a starter structure.

Searches for compounds are performed in various databases. Keywords, trade names, commercial names, CAS registration numbers, IUPAC names, and other criteria are used for the search. In addition, the search can be performed with partial, isomer, isotopic and other equivalent structures.

Do you want to understand your competitors down to the smallest detail from your point of view and not from the neutral view of a typical market analysis?

Do you want to identify threats to your market share in time and discover strategic gaps?

If so, then consider a competitive benchmark analysis. A competitive benchmark analysis customized to your needs, based on your IP and market parameters, can help you – as a large company, start-up company, university, research institution or investor – make informed decisions before investing in new technologies and products.

The analysis also helps you to get a better understanding of where your competitors in a particular technology area stand with respect to your intellectual property. Such an analysis is, for example, advisable before you make a strategic decision whether to acquire or cooperate with another company in a certain technology area, or whether to seek a license.

Competitive intelligence, which includes monitoring a competitor’s patent portfolio, could be an integral part of a company’s business strategy. To do this, one can track patents and patent applications, e.g., through the USPTO’s public website or the EPO’s website. However, this could prove to be time-consuming and tedious. Search firms from our network can take over this task and inform you at regular intervals about application, patent and reexamination proceedings in patent matters from your competitors. Among other things, such searches may reveal interesting patent applications and patents that have been abandoned, rejected, or have expired, which, under certain circumstances, you could then use freely. To the same extent, litigation matters involving your competitors may also be monitored.

To the extent you want to go beyond monitoring your competitors’ patent matters, the America Invents Act (AIA) provides such opportunity. Under the terms of the AIA, any third party may submit to the U.S. Patent and Trademark Office patents, published patent applications, or other printed publications of potential relevance to the examination of a pending patent application (e.g., a patent application of one of your competitors) with a brief description of the claimed relevance to each document submitted. Such submissions to be considered by the patent examiner must be made either (1) before the later of (i) 6 months after the date of publication of the patent application or (ii) the date of an initial official notice from the USPTO rejecting the claims, or (2) before the date of a notice of allowance, if earlier.

Almost every new business strategy is shaped by an IP strategy. One cannot develop an effective IP strategy without a thorough prior art search. A prior art patent search, also sometimes called a patent landscape analysis, is a comprehensive search and refers to information that is already in the public domain (patents, scientific literature, or existing products) with the goal of summarizing the existing prior art and presenting the current state of affairs in a particular technology field or sub-technology. It provides a quick overview of what is currently being developed in a particular technology area. A patent landscape analysis is generally a more in-depth analysis of a prior art patent search that also includes content of trends in the relevant literature and technology.

A prior art patent search is of particular interest to customers who want to enter a new field and to customers who need to fine-tune or otherwise change their research or commercial focus. Knowing how and why certain technologies have evolved, who the key players are in the technology being analyzed, what the trends are, and what problems and solutions have already been discovered allows a company to allocate resources more efficiently, make better business decisions, eliminate unprofitable steps, and gain a competitive advantage over competitors.

Depending on your interest, this search can cover worldwide patents or patents from a specific geographic area.

Assets acquired through intellectual property, such as patents, are an essential part of many organizations and companies and contribute significantly to their overall value.  Often, they are at the center of technology transactions.  For example, licensing and assignment of intellectual property rights are common transactions in technology markets today and contribute to the economic advancement of companies.  Knowing the financial value of the intellectual property of/to a company is equally important in the context of:

• Valuing a company for mergers, acquisitions and joint ventures
• Valuing a company for corporate liquidations and bankruptcy proceedings
• Negotiating intellectual property rights for sale (purchase)
• Negotiating to license in or license out intellectual property rights
• Infringement analysis. Proper patent valuation can be critical to determining damages and appropriate compensation.
• Acquiring venture capital and raising funds through bank loans. Particularly for startup companies, the valuation of patents, patent applications, and their appropriate management is key.  Banks and investors base their decisions to fund or not to fund, among other things, on the valuation of intellectual property rights.
• Support in the development of an internal patent strategy
• Accounting and tax matters. If you are obliged to provide information about your assets and if intangible assets have to be brought in, the valuation of your intellectual property is a necessary step.

Because of the above-listed uses, the financial valuation of intellectual property is becoming increasingly important.  Search firms generally use two approaches to patent valuation: quantitative and qualitative analysis.

The quantitative analysis is based on numerical and measurable data and involves several methods, including:

• Cost-based valuation method. This method takes into account, among other things, the costs incurred to obtain the intellectual property rights, reproduction costs and replacement costs and relates them to their economic value.
• Market-based valuation method. This method is based on an estimate of value involving similar market transactions, e.g., an inclusion of similar license agreements or similar sales of intellectual property.  How much would a willing licensee or buyer pay for your intellectual property?
• Income-based valuation method. This method bases the valuation on income streams produced by the intellectual property. For example, the patented product leads to an increase in sales or cost savings in a company.
• Option-based valuation method. Unlike the methods described above, an option-based method considers options associated with the intellectual property.

A qualitative analysis is more concerned with potential uses of the intellectual property that are not necessarily financially tied and may include an assessment of the risks and opportunities associated with the intellectual property for your business.

A strong patent portfolio that includes multiple patents is the backbone of a successful business.  An analysis of a company’s patent portfolio and a continuous management of it should be an essential component of each company’s business strategy.  As discussed above (IP Valuation) (NOTE: please include Link to the above IP Valuation), knowing the content, boundaries, and value of your intellectual property rights is critical in many situations.  You may be interested in analyzing a patent portfolio of one of your competitors for the same reasons.  Or you may be interested in a comparable analysis of two portfolios.

Details of an analysis of your patent portfolio will be discussed with you in advance.  Which questions, which focal points are of interest to you?  A patent portfolio analysis can include, among others, the following:

• Identification of the most valuable patents
• Identification of the most valuable assets
• Identification of weaknesses
• Identifying existing opportunities
• Determining whether you can expand your competition
• Isolate risks
• Determine how safe or helpful your portfolio is in terms of a potential litigation
• Determine if your portfolio can be used to block potential competitors in their activities or to enter into licensing negotiations with them
• Identifying opportunities to expand your portfolio
• Identify non-essential patents that your company can leverage for monetization

Should you be interested in any of the searches described above, please contact us.  RUPPERT U.S. IP GmbH will discuss those searches with you, facilitate the contact to our network of search firms and assist you in the analyses of the respective results (see below).

RUPPERT U.S. IP GmbH will be happy to discuss the results of the commissioned searches with you. If not already included in the corresponding results and if requested, we analyze the results of a commissioned search in more detail with regard to current U.S. patent rights and laws and prepare a corresponding legal opinion. Legal opinions provide business leaders with the information they need to formulate sound business decisions.

In a legal opinion, we take a position and analyze the issue before us in the context of the underlying U.S. laws. For example, patent invalidity actions that your company may face or that you consider raising in connection with a third party’s patent may involve more than simply finding documents that show the patent claims to be unpatentable. Requirements of the patent claims to satisfy other requirements for a U.S. patent, such as, is the invention generally patentable, is the invention in the application described in sufficient writing and enabled in a manner that others can understand and use it, is the invention described with definiteness, or is there some inequitable conduct by the patent applicant, that may invalidate the patent, are co-evaluated. To prepare a comprehensive legal opinion, one must be familiar with the ever-changing landscape of U.S. intellectual property law.

Should you be interested in obtaining a legal opinion on any of the searches described above or on a search you mav have performed otherwise, please contact us. RUPPERT U.S. IP GmbH will discuss the search results with you, analyze them and prepare a legal opinion thereon.