Los Angeles Patent Search Attorney

Is your invention eligible for patent protection? Will you be able to market it without infringing on existing patents? Are existing patents themselves valid and enforceable? In the face of an infringement lawsuit, can you prove you did your best to identify any infringing patents before bringing your invention to market? 

To answer these questions, you’ll need to know which other patents already exist and how they may affect your patent application or business plans. These answers are typically discovered through a patent search. 

The patent search process can be complex. Performing a thorough and accurate patent search often requires a nuanced understanding of patent law. Without a proper patent search, however, you risk investing considerable time, money, and effort into your patent application, marketing your invention, or reaching a business deal – all to no end.

For help with a patent search, talk to the experienced Los Angeles patent attorneys at Cohen IP. We’ll help you thoroughly search and lay a strong foundation for your patent application. 

Types of Patent Searches

Most patent searches seek to determine whether a new invention can be patented. Yet patent searches can also be done for other purposes. 

Patent searches typically fall into one of four categories: 

1. Novelty (patentability) searches
2. Freedom to Operate (FTO) searches
3. Non-infringement patent searches
4. Validity patent searches

Novelty or Patentability Search

A novelty or patentability search asks the question: “How likely is it that my patent application will be accepted by the USPTO?” Inventors and startups commonly ask for novelty or patentability searchers in relation to the work they are developing. 

A novelty or patentability search looks for existing patents similar to the invention at issue. It evaluates how similar or different these existing patents are to the new invention. It also evaluates the invention and the existing evidence for certain key elements essential to a successful patent application – such as whether the invention is sufficiently “novel” as that term is used in US patent law. 

A novelty or patentability search typically does not weigh in on whether the invention infringes any existing patents. However, It provides context for an invention and information on potential competitors’ patents. 

To carry out a novelty search, an inventor must first clearly identify the invention. The identification should list all elements or aspects of the invention believed to be novel. 

With this information, an experienced Los Angeles patent search attorney can search the USPTO database for relevant patents and publications. Typically, a novelty/patentability search will use other information sources as well, from specialized research journals to everyday Web search engines. This information is then collected and analyzed to determine whether the invention may qualify for patent protection. 

Freedom to Operate Search

A Freedom to Operate (FTO) search is also known as a Clearance search. FTO searches seek to determine whether it is worth commercializing an invention, given the existence of any in-force patents. 

In some cases, an invention has novel elements that can be patented – but other elements will require licenses from other patent holders. An FTO search seeks to identify where licenses may be required. 

Unlike a novelty/patentability search, an FTO search weighs in on the likelihood of a patent infringement lawsuit arising if a new invention is brought to market. For this reason, FTO searches tend to take more time and require greater in-depth analysis than novelty/patentability searches. However, the time, money, and effort spent on an FTO search pay off in the form of confidence that investments in bringing an invention to market won’t be wasted.

Like in other types of patent searches, an FTO search begins with the inventor clearly identifying the invention and listening to the elements and key aspects they believe are novel and non-obvious. 

With this information in hand, an experienced Los Angeles FTO search attorney dives into the USPTO database and other relevant sources. Here, the attorney focuses on currently existing patents and published applications. By examining the independent claims in related patents and researching their prosecution history, the attorney develops an informed professional opinion on whether infringement is likely. 

The FTO search aims to determine whether the inventor’s proposed invention infringes upon any of the patents found in the FTO search. If infringement is likely, the inventor has various options. They may decide to abandon the commercialization of the proposed invention, engage in a redesign, or approach the patent holder for possible licensing negotiations.

Non-Infringement Search

Similar to the FTO search, a non-infringement search also seeks to determine if the inventor’s proposed invention will infringe on a particular patent. Unlike an FTO search, a non-infringement search focuses on one existing patent. 

In a non-infringement opinion, an attorney determines whether an invention infringes on a specific existing patent. The search is necessary not to locate the specific existing patent but to analyze that patent’s prosecution history and to seek court rulings and other information relevant to the patents, fields, and questions at hand. With this information at hand, a Los Angeles non-infringement patent opinion lawyer deconstructs the claims in the existing patents to compare them, point by point, to the proposed invention. 

One major benefit of FTO and non-infringement patent searches is that they may provide protection in the case of a later infringement lawsuit. When written FTO and non-infringement opinions are produced by a reputable licensed patent attorney, they serve as powerful evidence that a court should not levy enhanced damages or find that infringement was willful. 

In 2016, the US Supreme Court held in Halo Electronics, Inc. v. Pulse Electronics, Inc., et al. and Stryker Corporation, et al. v. Zimmer, Inc., et al. that treble damages – damages multiplied by three – are an appropriate response to a finding of willful infringement. In those cases, the Court also lowered the bar for proving willful infringement occurred. Therefore, the protection an FTO or non-infringement opinion provides against a willful infringement finding and its associated treble damages is significant. 

Validity Search

As its name implies, a validity search asks whether an existing patent is valid. 

Validity searches are commonly requested by defendants in patent infringement claims. If an inventor is sued for patent infringement, they may request a validity search to see if the plaintiff’s existing patent is valid. 

Patent infringement claims can only be based on valid patents currently in force. If the existing patent is not valid or enforceable, no infringement claim can be based on it. 

Another common use for valid patents is to evaluate the value of a patent before buying or licensing rights related to that patent. For instance, if a validity search reveals that a patent isn’t valid or enforceable, its value in a sales or licensing negotiation drops sharply. These validity searches are often conducted as part of due diligence in purchase, licensing, and merger or acquisition transactions.

Patent searches require specialized skills to collect relevant information and apply it to the specific questions at hand. For help with your patent search, talk to the skilled Los Angeles patent search attorneys at Cohen IP today.