Conducting a Patent Search

Humans are endlessly inventive. Although you may be well-versed in your field, it is possible you’ve missed the news that an invention substantially similar to your own has already filed for or received patent protection. 

A patentability search or novelty search seeks to determine whether the same or similar invention has already been patented. If so, your patent application may be rejected – despite the considerable time, effort, and money you have invested in it. 

A patentability search can also help determine whether an invention that looks similar to yours at first glance is, in fact, similar enough to prevent your patent from being issued. When you work with an experienced attorney on a patent search, you gain the benefit of your lawyer’s experience in distinguishing patentable elements from one another. This insight may allow your attorney to craft a patent application that is more likely to succeed. 

At Cohen IP, we conduct comprehensive patent searches with the US Patent and Trademark Office (USPTO). The information we gain often provides additional interesting or relevant details as well as a clearer understanding of patentability. 

Filing your Application and the Patent Process

A patent search helps you and your patent attorney answer the question, “Is this invention patentable?” If the invention appears to be patentable, the next step is to draft an application for patent protection. 

Working with the same attorney to both conduct your patent search and draft your patent application has several benefits. By the time the search is complete, your attorney has a clear understanding of the nuances of your invention. They understand how your invention fits within the context of already-patented inventions in the same field. With this insight, your attorney can draft a patent application that focuses directly on the facts and information the USPTO requires in order to grant patent protection. 

When choosing an attorney to assist with your patent application, look for an experienced lawyer and law firm that focuses on:

• Discouraging competitors from filing similar applications or challenging your application,
• Promote your ability to license your invention once it receives patent protection and
• Protects your invention from court challenges, such as patent infringement claims. 

Once your application is filed, the US Patent and Trademark Office will review your filings. Your attorney can help handle any additional requests for information or communications from the USPTO. 

Upon reviewing your application, the USPTO will issue an Office Action. This notice announces whether the USPTO accepts or rejects your application. 

Often, a patent examiner will require one or more changes to the application before acceptance. Your attorney can help you make these changes and overcome any objections the examiner raises to accepting your patent application. 

Why file for patent protection?

Inventors can reap several benefits from filing a patent application. Starting from the date you file your application, you may use the words “patent pending” in connection with your invention. This statement notifies customers, competitors, and others that you are seeking a patent to protect the invention. 

Receiving a patent also offers benefits to the patent holder, including:

• The ability to prevent others from selling the same or a substantially similar product, protecting the effort you invested in inventing a novel item.
• The ability to recoup the costs of invention by protecting your offering from direct market competition for a limited time. 
• The opportunity to license the invention to others who wish to use it, thus creating an additional income stream from the invention. 

Because inventions come in a variety of forms, so do avenues for patent protection. Depending on the details of your invention, it may qualify for a utility, design, or plant patent. If you’re uncertain which category best applies, speak to an experienced Los Angeles patent lawyer. 

What are opinion letters?

An “opinion letter” is a letter from an attorney to a client. The letter includes the attorney’s informed opinion that a patent is valid. 

Typically, an attorney writes an opinion letter only after performing a patent search to determine whether any other similar patents or non-patent publications exist. The attorney will often refer to the findings of their research as part of the opinion letter. 

An opinion letter may discuss topics like:

• The patent the attorney was asked to evaluate, including its history, 
• The known prior art, including any searches for prior patents or information, 
• The level of ordinary skill involved in creating the invention, 
• Analysis of claims made in the patent and
• Whether the patent is novel and non-obvious, as those terms are defined in U.S. patent law. 

Typically, an opinion letter will not address other grounds for validity. Most opinion letters do not address enforceability issues with any particular patent. 

An opinion letter will often be tailored to suit the client’s purposes. For instance, a client may require an opinion letter that focuses on the freedom to operate, infringement, or patentability issues. 

Often, an inventor needs an opinion letter because they receive a cease and desist notice from another party demanding that the inventor stop using or offering an invention that allegedly infringes on the notice writer’s patent. Here, the cease and desist notice provides context and a starting point for an attorney in drafting an opinion letter. The opinion letter and the patent search that backs it focus on addressing the specific claims or demands in the cease and desist notice. 

Opinion letters are often written with the same thoroughness and attention to detail as a legal brief. Experienced patent attorneys create opinion letters with potential future litigation in mind. They seek to forestall arguments when possible and preserve options for their clients in the case of future challenges. Such letters are often written with the awareness that they may be read by parties at the USPTO or by judges in a federal court. 

For this reason, opinion letters are often essential, and so is the experience and dedication of the attorney who creates them.

Talk to a Dedicated Los Angeles Patent Application Attorney Today

U.S. patent laws and decisions of the U.S. Court of Appeals for the Federal Circuit impose a duty of due care on companies accused of patent infringement. In the absence of due care, Sections 284 and 285 of Title 35, U.S. Code authorizes the courts to assess up to three times the actual damages, plus attorney fees, against infringers found guilty of willful infringement. A thoroughly crafted opinion allows a company to evade this costly result.

At Cohen IP, our experienced Los Angeles patent application lawyers apply our knowledge and judgment obtained from our experience to render high-quality infringement and validity opinions for corporate clients. We provide each of our clients with the benefit of our experience in preparation, prosecution, opinions, litigation, and appeals when faced with actual or threatened litigation. To learn more, contact us today.