A patent is a techno-legal document that discloses the technical details of an invention along with the legal scope of protection. The patent specification comprises different segments regarding the invention, such as Field, Background, Summary, Description of Drawings, Detailed Description of the invention, including the best mode of carrying out the invention with examples, Claims, Abstract and other bibliographic details (such as filing and publication dates, names of inventors and assignees, relevant patent classes, citations etc.)
The Claims are among the most important sections of a patent document and define the scope of protection sought; based on how broad or narrow they are drafted. The Claims must support specification (or Detailed Description) of the patent and comprise Claim elements covering the subject matter to be protected.
Hence, patent enforcement searches are strongly dependent on Claims. The searches can be classified as Validity, Invalidity, Infringement and Freedom to Operate (FTO) searches. A brief idea on the searches can be gathered from the following:
The search is performed by a patent assignee to check for possible patent or non-patent literature to avoid any litigation based on novelty, obviousness or subject matter disclosed in the patent.
The search is performed by an alleged patent infringer as a defence mechanism, by proving the infringed patent invalid to be in force in the first place.
Both Validity/Invalidity Searches include Claim mapping (independent Claims or may include dependent Claims) of the subject patent with prior art, including patent and non-patent literature
Making, using, selling an invention of an in-force patent constitutes patent infringement. Therefore, the search includes Claim charts analysis between an in-force subject patent and a relevant product in the market. The objective is to check for competitors with products having overlapping features as the patented invention.
The objective of such a search is to avoid any chance of patent infringement before the launch of a product. Since patent rights are jurisdiction specific, the search is usually performed in a jurisdiction of interest. The analysis includes Claim mapping of the key features of the subject product with in-force patents.
Novelty search: The search often verifies the criteria of patentability of a subject invention. The search involves uncovering published patent and non-patent literature for novelty and obviousness analysis of the subject invention. This includes mapping of each key feature of the subject invention with patent and non-patent literature.
The importance of the above-mentioned searches can be explained with the following example: a corporation, that comes across a competitive product, similar to their patented product, may want to get an infringement search performed. The search will target all the products released after a cut-off date of the subject patent. The analysis will comprise Claim charts of the subject patent with competitive products. In case such a product exists in the market, the patent assignee can sue the product owner on charges of infringement. On receiving a notice of infringement, the product owner would like to defend and avoid paying any damages. For this, the product owner can get a search performed to invalidate the patent Claimed to be infringed. The search will focus on the presence of patent/non-patent literature before the subject patent was filed so that the subject invention is proved obvious or already known to a person of ordinary skill in the art. It has to be noted that the strategy formulated for both Validity and Invalidity searches is the same, i.e. to analyze the subject invention for presence/absence of novelty and obviousness.
Further, in an alternative case, a product owner, before the launch of a new product, would like to get the product cleared in the market for any infringement threat by opting for an FTO search. The search can save the product owner from possible infringement damages. The search will comprise scanning in-force patents that have Claims designed around the subject product. The FTO search differs from a novelty (or patentability) search in the sense that the objective of the latter is to identify if an invention fulfils the criteria of novelty, non-obviousness and industrial application from patentability standpoint. The search, unlike FTO, Validity/Invalidity, Infringement searches is not enforceable.
It has to be noted that mere ownership of patents of interest does not warrant the acquisition objective to be achieved. The acquiring corporation must also be aware of the scope (and not just worth) of a patent portfolio. The scope of a patent is defined by claims and that may be too narrow to protect the invention, thereby providing a window to a competitor to design the claim. The competitor can in fact claim infringement, in case a broader claim on the invention is granted. For instance, ownership of a claimed product does not allow the owner to synthesize the product if the process is claimed by another assignee. To avoid such a scenario, the prosecution history of patents of interests may be retrieved that allows examination of the scope and profits that can be accrued from buying the portfolio. Another example is Freedom to Operate search, which is useful in determining the possible overlap between the claim of a blocking patent and a new product. The analysis can be mapped to each element of a claim to understand the degree of overlap. The searches and analysis for each customized report are presented in a comprehensive graphical format with high readability.
As much as technological advancement and commercial profits hold importance for an organization, legal enforcement of the assets is the safeguard that protects against threats arising in a competitive economy. We at OutsourceIP are outfitted to provide the quick but extensive legal analysis and patentability arguments along with proofreading patent claims and document that may be associated with the prosecution of the Applications.