Prior Art Searches - Learning Center

Learning Center

We are constantly adding new material to our learning center. Be sure to check back often to keep abreast of the latest services available to you as an IP professional.

File History Services

Our patent file history service provides competitively priced file histories in paper or electronic format. Files are carefully copied, checked for completeness, collated in chronological order, and book marked by our experienced technicians.
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Intellectual Property Services

We offer a variety of intellectual property services. Below are some of the common services that we handle:

	Patentability or Novelty [Request a Quote].
	Know what the Patent Office examiner will discover when she searches. In a Patentability Search we find documents that could affect novelty or obviousness during the PTO examination. A thorough patentability search provides our clients with an understanding of which elements of their invention are likely to be patentable, and whether or not potential points of novelty are in areas crowded with other patents and disclosures. Our searches are narrowly tailored to the points of novelty our clients provide, and we include only documents that are speak directly to the patentability of these potential points of novelty. We do not “pad” our reports.

	Clearance or Right to Make-Use-Sell [Request a Quote].
	Not all valuable technology is patented. Provide us with the description of a product or process that you are contemplating to make, use, or sell; we provide a list of unexpired patents that could potentially claim part, or all, of the contemplated product or process. Close attention is paid to the exact scope of the contemplated product or process and to the claims of any reference reported. We ignore issues of novelty or obviousness, unless you request a combination clearance and novelty search.

	Validity [Request a Quote].
	Not all patents are created equal. Give us a patent, a family of patents, or even just claim-language and a critical date. We look for documents, that likely would have bearing on the patentability of a claim while it was being examined, but which were missed.

	Patentability Pipeline [Request a Quote].
	Do you have to decide daily whether to prosecute or defensively publish your company’s innovations? Our Patentability Pipeline search provides the “lowest hanging fruit” documents in an expedited manner. We realize that the most pertinent documents are discovered early in the search, and that a full patentability search may not be warranted if the Pipeline search undercuts the principal featueres. Our Patentability Pipeline searches are delivered exclusively on the web in a proprietary database, designed for high-volume use. Our Patentability Pipeline Searches are provided on a monthly subscription basis.

	Accelerated Patent Examination “Pre-exam search” [Request a Quote].
	Have your patent sail through examination with the Patent Office’s new Accelerated Patent Examination (“APE”). We employ former examiners that are Patent Office trained. We provide our standard patentability search in a format that is APE acceptable, with redacted searcher resume/qualifications and search method.

	Landscape or State-of-the-Art [Request a Quote].
	Is your company considering expanding into a new area of technology? Provide us the area of technology and what types of applications you intend to design; we provide a list of the big players in the area, any active seminal patents, and an overall view of the area of technology. When we find related applications, we will break our listings down into subcategories and will re-list or cross reference our documents in the report if they cover technology in several areas. [Click here for more details]

Comprehensive List of Services

If you were not able to find what you were looking for above, we recommend that you take a look through our list of services to discover how we can support you. Although this list is comprehensive it should not be considered complete. We urge you to challenge our distinguished team with your next complex IP project.

Accelerated Examination Search	This is a Pre-Examination Search in Support of a Petition for Accelerated Examination. This search is conducted to satisfy the newly announced (25 Aug. 2006) US PTO requirements for Accelerated Examination in which the PTO promises to complete an examination of a new U.S. patent application within one year after the application is filed. Our typical pattern of work is to provide a search report with which you can fashion your petition. We do not usually get down to high detail granularity of the specific claims but we do focus the search carefully on the content of the claims so as to allow you to have what we believe to be documents equivalent to that of the examiner. We will use a former USPTO examiner or Registered agent or an experienced technology degreed professional in a closely related art to make the document selections. Our presentation of our search logistics do not always match up with the high detail that the PTO exhibits in their model representations of key word structures etc but we do seek to meet the requirements. Of course, we cannot guarantee that the PTO will act favorably in granting your request based on our search.

Certified Copies	Prior Art Searches, Inc provides Certified Copies of many documents that are under control of the United States Patent Office. These documents are procured from the USPTO and bear the Certified seal or stamp and are useful for foreign filings and court submissions.

Clearance Search	This search arises in the context of a party seeking to legally practice a particular product or process without running afoul of others’ patent rights. A clearance search locates U.S. patents with claims that could prevent a party from making, using or selling a certain product or practicing a process. Clearance searching differs from patentability searching because the requirements of novelty and non-obviousness in the examination process do not consider the make-use-sell activity which are the requirements for infringing an existing patent. Patents confer only the right to exclude others from what is claimed; patents do not confer the right to practice the scope of its claims nor the enabling disclosure that is part of a U.S. patent. Making, using, or selling a product or practicing a process often includes practicing the claims of others’ patents and consequently requires a clearance search to identify another's patent rights. From there, a skilled attorney is able to advise as to whether an actual infringement concern is present. A professional clearance search, with close attention to the scope of the contemplated product or process and the claim language of the patents being searched, attempts to find those patents that may be infringed and will inform of where liabilities may lie. A clearance search is typically restricted to U.S. patents because they are the properties that lie within the boundaries of U.S. law. Some consideration is given to published U.S. applications because they are likely to issue into U.S. patents in the future. Likewise, some consideration is given to foreign patents because they represent possible rights that could have connection to U.S. patents that have not been found in the search. Also, some consideration if often given to expired or public domain patent documents because they tend to inform the context of likely active claims. Typically, a clearance search seeks to identify candidates for further consideration that a skilled attorney will evaluate in providing his or her client with a legal position. (There are many factors that weigh into these decisions.) A clearance search has the emphasis on locating U.S. patents that have an immediate “look and feel” that tends to make them have prima facie selection value. The underlying focus of this search is to find those U.S. patent properties that would have support for “imaginary” claims that could be cleanly and clearly of interest to the major set of features that make up the make-use-sell combination. (This differs from an Infringment Search that has focus on both the major set and also on sub-sets of the combination.) The search seeks to check the claim wording for those major candidates that have showings in the disclosure and to bring those forward in the search report that have prominent claim language that enhance their candidacy.

Clearance/Right To Make-Use-Sell Search	This search arises in the context of a business seeking to legally practice a particular product or process without running afoul of others’ patent rights. A clearance search locates patents with claims that could prevent a business from making or selling a certain product or practicing a certain process. Clearance searching is different than patentability searching because the requirements of novelty and non-obviousness in the examination process are different than the requirements for infringing a patent. Patents confer only the right to exclude others from what is claimed; patents do not confer the right to practice the scope of its claims. Making, using, or selling a product or practicing a process often includes practicing the claims of others’ patents and so often requires a clearance search to avoid infringing another's patent rights. A professional clearance search, with close attention to the scope of the contemplated product or process and the claim language of the patents being searched, will find those patents that may be infringed and will inform of where liabilities may lie.

Collection Search	A collection search is defined by client defined critical criteria. This search is a "collection" because it identifies a body of art documents that are grouped by a common feature set.

Design Patent Clearance Search	As a party proceeds to make, use or sell a design for some object of manufacture the question often arises as to who is likely to be in a position to stop the activity. The holders of utility patents are restricted in their ability to lay claim to specific designs whereas the holders of design patents are allowed to assert rights to their claimed invention (as shown and described in their patent disclosure). A design patent has nothing to do with functionality. These rights are to the claimed invention and to arguably simple modifications to the “ornamental arrangement” claimed. The test is not by a person skilled in the art, but that of an ordinary observer. Here, a search for a keychain ornament with a “Corvette” automobile image would report back U.S. design patents for “Corvette” automobile per se. (This is in distinction to a keychain ornament with a “Corvair” that would NOT return design patents for a “Corvette”.) Thus, this search seeks to identify those U.S. design patents (that are active) claiming subject matter such that the owner of the patent could argue trespass of the owned patent property by the activity.

Design Patentability	While the holders of utility patents are restricted to the word definition in the claim (and not necessarily the drawing figures) the holder of the design patent lays claim to the design or image as shown in the patent. A design patent has nothing to do with functionality but rather appearance and to arguably simple modifications to the “ornamental arrangement” claimed. The test is not by a person skilled in the art but that of an ordinary observer. Thus a patentability search for a design would be directed to any prior art showing of the image or “ornamental arrangement” and simple modifications regardless of origin: U.S. utility patent, U.S. design patent, publications etc. For example, a search for the design and appearance of a Corvette automobile would report back a prior art keychain with an image of a Corvette on a fob. From the MPEP: The standard for determining novelty under 35 U.S.C. 102 was set forth by the court in In re Bartlett, 300 F.2d 942, 133 USPQ 204 (CCPA 1962). "The degree of difference [from the prior art] required to establish novelty occurs when the average observer takes the new design for a different, and not a modified, already-existing design." 300 F.2d at 943, 133 USPQ at 205 (quoting Shoemaker, Patents For Designs, page 76). In design patent applications, the factual inquiry in determining anticipation over a prior art reference is the same as in utility patent applications. That is, the reference "must be identical in all material respects." Hupp v. Siroflex of America Inc., 122 F.3d 1456, 43 USPQ2d 1887 (Fed. Cir. 1997). The "average observer" test does not require that the claimed design and the prior art be from analogous arts when evaluating novelty. In re Glavas, 230 F.2d 447, 450, 109 USPQ 50, 52 (CCPA 1956). Insofar as the "average observer" under 35 U.S.C. 102 is not charged with knowledge of any art, the issue of analogousness of prior art need not be raised. This distinguishes 35 U.S.C. 102 from 35 U.S.C. 103(a) which requires determination of whether the claimed design would have been obvious to "a person of ordinary skill in the art." When a claim is rejected under 35 U.S.C. 102 as being unpatentable over prior art, those features of the design which are functional and/or hidden during end use may not be relied upon to support patentability. In re Cornwall, 230 F.2d 447, 109 USPQ 57 (CCPA 1956); Jones v. Progress Ind. Inc., 119 USPQ 92 (D. R.I. 1958). Further, in a rejection of a claim under 35 U.S.C. 102, mere differences in functional considerations do not negate a finding of anticipation when determining design patentability. Black & Decker, Inc. v. Pittway Corp., 636 F.2d 1193, 231 USPQ 252 (N.D. Ill. 1986).

Enforcement Search	This search takes as its basis a U.S. patent having claims to property territory defined by those claims. From that base, the search seeks to identify the parties in the real world who are trespassing on this claimed property. From a search point-of-view, Prior Art Searches, Inc., assumes that the first and most practical way to identify parties is to look at their patents (as providing insight into their actual real world practices) to see if practices, procedures, and products can be found that would fall within the scope of the claims of interest. This search also looks beyond US patents for insight: such other areas include foreign patents, literature, publications and products.

Freedom-to-Operate Search	This search arises in the context of a business or party seeking to legally practice a particular product or process without running afoul of others’ patent rights. A Freedom-to-Operate search locates patents with claims that could prevent a party from making or selling a certain product or practicing a certain process. Making, using, or selling a product or practicing a process often includes practicing the claims of others’ patents; to gain some comfort and assurance and to lower the risk of trespass and to avoid infringing another's patent rights, a Freedom-to-Operate search is conducted. The primary focus of this search is active U.S. patents because those are the property rights that are enforceable within the U.S.A. and for which this company has working familiarity with the laws. The US Patent Office has a highly credible collection of property documents that are enforceable in the U.S.A. This search seeks to identify candidates that are subject to consideration by a skilled attorney familiar with the entire business and legal situation under evaluation. The search uses technically qualified specialists who are not lawyers to make these initial selections; guidelines for selection are applied to develop a pool of candidates that are reported to a lawyer (but these could be reported to anyone who commissions such a search). In addition to active U.S. patents, expired U.S. patents are given limited consideration so that the context can be illustrated. Also, published U.S. applications and some foreign patent documents are considered because they have a degree of probable connection to U.S. patents. The mechanics of the search involve locating those U.S. patents that have specifications which give an indication that claims could be supported by disclosure. (It is not practicable nor prudent to key word search only claims.) From there candidate pools and family and logical connections are made so that a better and more refined pool can be developed. Efforts are made to preview and prioritize the selections so as to make the attorney review productive of a supportable position. Freedom-to-Operate has a focus on the same legal property documents that are sought in a Clearance Search but also seeks to identify dominating properties that are more "abstract" and freedom to operate also looks to such wider focus technologies and claims in the expired time frame documents to set up an argument that freedom-to-operate is either present explicitly or implicitly.

Index & Name Search	Index searches are used to locate documents keyed to inventors, companies and owning parties and are often combined with subject matter restrictions to help in obtaining lists of patent properties held by or associated with various assignors, assignees and inventors. These searches range from the simple to complex where there have been changes in the various parties ownership and assignement over a period of time. Typically, a US patent document will facially display both the inventor and initial assginee; from there various queries and traces can be developed to lead to other documents and patent properties that may be of interest to our client.

Infringement Search	An infringement search seeks to find those US patent properties having active claims that would allow the owner of that property to assert the rights to those claims against any party that is making, using or selling any subcomponent that falls within the boundaries of any single claim in an owned US patent. For example, a party who wants to take to the market an item of commerce having elements A-B-C-D (even if they own a US patent with a claim to elements A-B-C-D) will need to address the possibility that another party will possibly assert another US patent with elements A-B-C. (So in this search, the concern is not about novelty but about the ownership of sub-elements of a combination that is being practiced rather than being patented.) In practice, the boundaries of such a search have to be set at a level that gives the party practicing the make-use-sell combination comfort that the search granularity is not so fine as to make the search an academic exercise rather than a legal exploration and examination of risk. For example, if the make-use-sell combination was for a sliding fastener (a zipper) then it would not be practical to extend the search all the way to the Nylon filament but it might practical to extend the search to the machines that impart an oval shape to the Nylon so that it coils into the side elements of the fastener. These boundary decisions are those of the risk manager and not of the searcher. Likewise, the work to locate the candidates for consideration by the attorney who is making recommendations is one of both diligent workmanship and creative imagination in that the task to is to locate U.S. patents with claims both detailed and broad that may be supported by disclosures that bear little resemblance to the “picture” of the make-use-sell combination. Further, the use of keyword searching is also not absolute because great variation is often present in technolgies and claims that are dominant. In other words, the searcher’s main tool is to locate disclosures that have the potential to support claims of interest; creativity is often required to do that. From there, the searcher selects those that have claim wording that places that US patent in a category for further review by an attorney to determine if it has real merit. As one can readily extrapolate, the infringement search has no limit as to number of documents that could be included in the search report because any party owning any subcombination of elements has the theoretical ability to pursue an action to stop infringement of the owned property.

Landscape Search	Landscape is a combination of searches that seeks to merge the ownership and ownership distribution with a technologically defined area of interest that may be as much about achieving an end result (preventing soil erosion) as about the structure of art developments (geotextile dams). Further, a Landscape search seeks to penetrate beyond the veils of numbers of documents and identify patents that have claims that dominate and thereby define nodes of authority in an art area (example the Kerns Delayed Windshield Wiper).

Landscape/State-of-the-Art Search	These searches are tailored to the needs of the client and provide the information necessary to make strategic IP and business decisions. IP managers, consultants, and advisors provide a different service than agents and attorneys. However, they, like agents and attorneys, often do not have the expertise to mine the data needed to provide businesses with sound advice and strategies. To take full advantage of the benefits and protections conferred by patents, and to avoid unecessary patent acquisition costs, a business must have a strategy in obtaining and managing a patent portfolio. An effective patent strategy leads to the protection of commercially valuable inventions, low patent acquisition costs, high confidence that acquired patents are valid, awareness of where liabilities lie with respect to other patent holders, and awareness of the technical areas where R&D and patent protection will be most fruitful. The search services of Prior Art Searches can help achieve each of these.

Market Clearance Search	This search is directed to implementations of a product or service that appear in the open market place. This search is not directed toward patents per se and attempts to determine who else is marketing such a product or service and to locate specific information for an interested party who is interested in proceeding to a commercial implementation. For example some search locations include the Thomas Register, Internet locations, product announcements, news articles, and defensive publications.

Novelty Search (Prior Art)	Novelty searches find prior art that may preclude novelty or non-obviousness during the examination process. An extensive novelty search defines for an applicant the scope of the claims that the granting authority is likely to find acceptable; this prevents examiner restrictions and the time and cost associated with responding to them. While the concept of “old combination” is no longer a standard for patent examiners to employ, the principles offer valuable insight into the bright line criteria needed to competently conduct searches: (a) the same elements in (2) the same relative relationship to each other and (3) for the same purpose. As the search is conducted the above three standards are applied to a located document to see if rises to the level of meriting inclusion in the report. The searcher seeks to find that the cooperation between the elements shown and the result produces a one-to-one mapping to the materials or subject matter under search. The searcher does not start with claims but with pseudo claims based on an informed judgement developed from the descriptive documents, models, samples etc. The goal here is find those features present in the descriptive materials that distinguish the inventive combination from those combinations present in the "prior art" that we search. The idea is to isolate the new or novel features so that the patent practitioner can write claims to this addition to the body of human knowledge. In this search careful time boundaries are not observed because the working assumption is that the invention came into being in the present, sort of t=0. Upon review of the documents located, the patent practitioner may find various documents that are presented in the search report to be "not prior art" for various technical and legal reasons.

Pipeline Search	Our Pipeline Search provides the “lowest hanging fruit” documents in an expedited manner. Often important documents are discoverable by employing a highly skilled searcher for a very limited period of time (as opposed to an inexpensive search conducted by trainee searcher). This allows postponement of a full patentability search until prosecution begins. Our Pipeline Searches are delivered exclusively on the web in a dedicated database specifically designed for high-volume use with assurance of privacy and with on-screen presentations. The limitation on this search is that the risk boundaries are less clear if the located documents do not show the features under search.

Pre-Examination Prior Art Search	Pre-Examination searches identify prior art that may preclude novelty or non-obviousness during the examination process. An extensive search defines for an applicant the scope of the claims that the granting authority is likely to find acceptable; this prevents examiner restrictions and the time and cost associated with responding to them. While the concept of “old combination” is no longer a standard for patent examiners to employ, the principles offer valuable insight into the bright line criteria needed to competently conduct searches: (a) the same elements in (2) the same relative relationship to each other and (3) for the same purpose. As the search is conducted the above three standards are applied to a located document to see if rises to the level of meriting inclusion in the report. The searcher seeks to find that the cooperation between the elements shown and the result produces a one-to-one mapping to the materials or subject matter under search. The searcher does not start with claims but with pseudo claims based on an informed judgement developed from the descriptive documents, models, samples etc. The goal here is find those features present in the descriptive materials that distinguish the inventive combination from those combinations present in the "prior art" that is searched. The idea is to isolate the new or novel features so that the patent practitioner can write claims to this addition to the body of human knowledge. In this search, careful time boundaries are not observed because the working assumption is that the invention came into being in the present, sort of t=0. Upon review of the documents located, the patent practitioner may find various documents that are presented in the search report to be "not prior art" for various technical and legal reasons.

Pre-Examination Search in Support of a Petition for Accelerated Examination	This search is conducted to satisfy the newly announced (25 Aug. 2006) US PTO requirements for Accelerated Examination in which the PTO promises to complete an examination of a new U.S. patent application within one year after the application is filed.

Prior Art Search	This search seeks to locate "prior art" -type documents and this name is used to describe searches that do not cleanly and clearly fall into typical novelty, patentability or pre-examination searches.

Prior Art Validity Search	A validity (an effort to show invalidity) search has the goal of finding prior art showings that include all the elements of the claims of the patent of interest and which have a date earlier than, preferably greater than one year earlier than, the priority (filing) date of the patent (so-called 102b-type documents). Prior art showings that contain some of the elements of the claims and those with specific suggestions to combine additional elements are also of interest (103-type showings). References called out in the prosecution of the target patent are excluded from presentation but are often used during the search to orient the searcher and to guide the search. In other words, the search seeks to uncover some subset of features in a prior art document or showing that maps in a 1-to-1 relationship to the elements in one or more of the claims in the target U.S. patent. During the search, time limit boundaries are lifted so as to locate art developments which might lead through back-searching to prior art disclosures within the required (statutory date) time frame. In other words, the benefit of subsequently available documents provides a powerful backward view that was unavailable at the time the searches accompanying the original prosecution were conducted. As is true with patentabilty and novelty type searches, validity documents include any published document and are not limited to U.S. patents only. For validity, the rules provide a special case for 102e-type documents that rely on a right of foreign priority for a foreign filing and on U.S. patents and published applications that are filed prior to the filing date of interest but which have a later date of publication. A validity search is generally wide ranging, and extensive because newly developed documents and showings generally must be equal to or better than prior art made of record by the examiner or prosecuting attorney or showings identified by subsequent searchers. Motivations for conducting validity searches include : (1) response to litigation or threat of litigation (2) licensing and cross licensing negotiations (3) evaluation to purchase rights (4) due diligence for acquisition (5) due diligence prior to assertion of rights in an action and or (6) evaluation of threats prior to sale of rights or funding acquisition.

Right-to-Use Search	This search arises in the context of a business or party seeking to legally practice a particular product or process without running afoul of others’ patent rights. A Right-to-Use search locates patents with claims that could prevent a party from making or selling a certain product or practicing a certain process. Making, using, or selling a product or practicing a process often includes practicing the claims of others’ patents; to gain some comfort and assurance and to lower the risk of trespass and to avoid infringing another's patent rights, a Right-to-Use search is conducted. The primary focus of this search is active U.S. patents because those are the property rights that are enforceable within the U.S.A. and for which this company has working familiarity with the laws. The US Patent Office has a highly credible collection of property documents that are enforceable in the U.S.A. This search seeks to identify candidates that are subject to consideration by a skilled attorney familiar with the entire business and legal situation under evaluation. The search uses technically qualified specialists, who are not lawyers, to make these initial selections; guidelines for selection are applied to develop a pool of candidates that are reported to a lawyer (but these could be reported to anyone who commissions such a search). In addition to active U.S. patents, expired U.S. patents are given limited consideration so that the context can be illustrated. Also, published U.S. applications and some foreign patent documents are considered because they have a degree of probable connection to U.S. patents. The mechanics of the search involve locating those U.S. patents that have specifications which give an indication that claims could be supported by disclosure. (It is not practicable nor prudent to key word search only claims.) From there, candidate pools and family and logical connections are made so that a better and more refined pool can be developed. Efforts are made to preview and prioritize the selections so as to make the attorney review productive of a supportable position. Right-to-Use has a focus on the same legal property documents that are sought in a Clearance Search but also seeks to identify dominating properties that are more "abstract", and Right-to-Use also looks to such wider focus technologies and claims in the expired time frame documents to set up an argument that such a right is either present explicitly or implicitly.

State-of-the-Art Search	A State-of-the-Art Search is conducted to inform the client of important and pivotal movements in an art area and tends to focus on the ends of the technology tree where new growth will be likely to develop. A mundane example is that the State-of-the-Art in spring biased mousetraps will show a conventional Victor™ mousetrap because while old and even likely in the public domain it represents what is being practiced in the marked place today. The tendency in this search area is to locate “edge” developments that define the outer boundaries of the available “prior art” documents. To some extent the searcher has to decide what not to include in that if there are 25 showings that have relatively the same weight then the searcher will show representatives of this group.

Trademark Prosecution File History	This is sometimes referred to as a trademark file wrapper or TM file history also. The Trademark Office handles the prosecution of trademark applications as they mature into Registrations and this procedure is fully open to public access from beginning to end. These histories offer valuable insight into the specimens submitted to the TM examiner and other detailed papers such as affidavits. Prior Art Searches, Inc provides copies of the official prosecution of pending and registered trademarks that are obtained from the US Trademark Office.