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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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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