Patent Agent Limitations

In general, a registered US Patent Agent (not an attorney) can provide patent services on behalf of a client, where these services pertain to the preparation and prosecution of patent documents with the USPTO.  There are several activities that an agent cannot legally perform, and there are others that most agents are not qualified to do. Some of these activities outside the scope of a typical patent agent are listed below for reference (this list is not meant to be exhaustive).

  • Advising on:
    • freedom to operate/commercialize
    • salability
    • market potential
    • licensing
    • suing
    • infringement
  • Marketing
  • Litigating

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Clearance Search Review

As a follow-up from a previous post on types of patent searches [Link], this post discusses some techniques for reviewing patent documents (both patents and patent applications) for potential relevance for a given product, and the post provides some choices for action taken in case a patent document is deemed relevant based on the review.

A preliminary review of a given patent document helps to form an initial interpretation of what the scope of the claims is.  Intrinsic evidence is used to determine the claim meaning, with this type of evidence including e.g., the specification and listed embodiments, the document’s prosecution history, cited prior art, other claims within the patent document, associated patent litigation, and associated parent/sibling/foreign filings.  The ordinary meaning of each claim is construed from the perspective of a person having ordinary skill in the art (PHOSITA) for the time period of the invention.  However, an inventor in the patent document specification can expressly define terms differently than their ordinary meaning, and the specification may explicitly disclaim some embodiments.  Of course means-plus-function claims are limited the structures and equivalents contained within the spec.  Also, during patent prosecution the patent owner can surrender claim scope.

Extrinsic evidence such as a dictionary definition or expert testimony, or even inventor testimony, can be used to determine the claim construction if it does not contradict the intrinsic evidence.  The proper construction is weighed heavily toward the intrinsic evidence such as those listed in the paragraph above.

If a patent document under review seems potentially relevant to a given product (planned or existing), then there are various options that could be entertained, each with its own associated trade-offs:

  • Performing a workaround so as to avoid possible infringement, if such a workaround is feasible.  Any workaround considered should be analyzed to ascertain its impact on the product — its impact on cost, quality, and timeliness of the product should not be more detrimental than other possible routes, such as obtaining a license.  Also, it is often advisable to obtain a written opinion from external patent counsel on the non-infringement of the workaround on the patent.
  • Forgoing the product altogether.
  • Licensing the patented invention from the patent owner, whether through monetary payment, cross-licensing of patents, etc.
  • Obtaining an opinion from external patent counsel of prior art anticipation or obviousness of the patent.  This type of opinion is more difficult to obtain, as in this case every claim needs to be shown to be invalid.  Additionally, this type of opinion is certainly not rock solid, as the patentee can render the opinion moot such as through claim modification in a reexamination (e.g., adding an element to claims to avoid invalidity finding by examiner).
  • Obtaining an opinion from external patent counsel of non-infringement.  This type of opinion only has to show non-infringement of the independent claims, as a product that does not infringe independent claims cannot infringe the dependent claims.
  • Taking a chance and doing nothing.  The risks here are obvious, as there could be problems with “willful infringement”.  Consider also that a given patent may not be in force due to a missed maintenance fee, but one needs to be careful here since patents can be revived.

None of these decisions can be taken lightly, and due consideration should be given to each.  The above list is not meant to be exhaustive, as there are further considerations that can made in this situation.  Additional suggestions are welcomed from readers.

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Types of Patent Searches

There are various types of patent searches, with each requiring its own unique search process. Differences between search processes are primarily based on scope and publication dates.  Some different search types are provided below:

A) Patentability: This type of search, normally performed after determining that an invention covers patentable subject matter and has utility, and that its potential return on investment warrants patent pursuance, focuses on finding prior art references that may be relevant to the invention’s novelty and non-obviousness. These prior art references comprise a wide array of materials, such as issued patents, published patent applications, journals and other non-patent literature, etc., and can have been made public at any point prior to the invention’s creation. A patentability search is also sometimes referred to as a “novelty search”, though “patentability search” is a better term because non-obviousness is also an important consideration.

B) Clearance: Also referred to as a “freedom to operate” (FTO) search, a “right to use” search, or an “infringement” search, a clearance search concentrates on uncovering enforceable patents that might act as “roadblocks” to commercialization of a product or service. A clearance search can also be used to uncover pending patent applications that, if eventually issued as patents, might be infringed by a given product or solution.  From 35 USC 154: a patent grant confers “the right to exclude others from making, using, offering for sale, or selling the invention throughout the United States or importing the invention into the United States” “…for a term beginning on the date on which the patent issues and ending 20 years from the date on which the application [or earlier priority application] for the patent was filed in the United States”. After the patent term expires the patent owner no longer has this right. Therefore, a clearance search can be limited in scope to those patent documents that are or may be enforceable when a given product or service is commercialized. Also, note that to remain enforceable throughout the 20 year term, an issued patent must have its maintenance fees paid at the appropriate intervals. Any potentially problematic patent documents can be addressed in a number of ways, including formulating a sufficient and non-infringing workaround, obtaining a license from the patent owner, obtaining an opinion of non-infringement or invalidity from a patent attorney, etc.

C) Validity: This type of search is similar to the patentability search in that part of its scope is to assess novelty and non-obviousness. In this case however, the assessment is made on a patent instead of for an invention. This type of search is often initiated either when a patent owner desires to assess the strength of a given patent in preparation for enforcement of that patent or when an accused infringer wants to ascertain the validity of an asserted patent. Other names for validity searches are “invalidity” search and “enforcement readiness” search.  As with a patentability search, a validity search will include both patent documents and non patent literature.

D) State-of-the-Art: A state-of-the-art search is often executed in order to determine existing solutions and potential competitors within a given technological field. This type of search is sometimes referred to as a “collection” search, and includes not only patent documents but also non patent literature.

E) Mining: A mining search is carried out in order to find and gather related patent assets owned by an entity — mining searches are usually performed for at least one selected technology area. This type of search is often executed on behalf of an entity which owns many patent assets and which may therefore not be fully aware of the scope of their portfolio. The patent assets uncovered in mining searches may then be rated, and these ratings can be leveraged to gather related assets for licensing or divestiture collections, and can also be used for maintenance decisions.

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