I. PATENT SEARCH
II. COMPARATIVE ANALYSIS
III. JUDICIAL EXAMINATION
I. PATENT SEARCH
Patent search is one of the modern tools of analysis, used for solving a range of problems connected with the development and promotion of products, containing scientific and technical developments. Patent search is conducted via analysis of patent information resources and other types of information, containing the latest data on the development of industrial products, and also on the current state and development prospects of the given type of marketplace. Type and scope of information resources depend on the object and aspect of search.
Patent search purposes
Patent searches are conducted for many purposes. Among them are to:
- Identify a potential and other possible uses of a new product;
- Assess the patentability of an invention before investing in an expensive patent application process;
- Determine independent inventors or companies currently or historically obtaining patents in a particular area;
- Find patents for a particular object of invention;
- Determine the state of the art in a particular area;
- Identify patents in a specific field for the prospective value of a specific invention;
- Study the rate of innovation in a particular area;
- Determine the patent portfolio of a specific company;
- Determine the possible infringement of rights;
- Learn about an industry or a specific company;
- Search for potential solutions to existing problems;
- Discover information on competitors or identify potential licensees;
- Invalidate a competitor’s patent or patents;
- Identify additional reference materials in the field of the invention.
Depth and scope of the patent search are determined by the client, depending upon his exact purpose.
Patent Search Types
Depending upon search purposes, our company offers the following search types:
- Bibliographic search;
- Patent landscape search;
- Patent searches for possibility of launching generic drugs;
- Infringement or clearance search;
- Patentability search ( novelty search, state of the art search, prior art search);
- Patent invalidity search.
Bibliographic search is conducted based on bibliographic data (such as patent number, publication/application/priority/filing dates, title, abstract, inventor/applicant names, including identification of patent family members in certain jurisdiction and legal status thereof). The search covers pre-filing search, equivalent patent search, related patent documents search and equivalent patent family search.
Patent landscape search is a search of patents in some specific fields of the art. The search is conducted in order to find out about the latest developments in this field of the art and to determine the new product’s field of application.
Infringement (also known as clearance or freedom to operate search) search is a detailed patent search designed to ensure that the intended patent does not infringe anyone else's patents. It can be based either on the specifics of the product or the claims of the intended patent. The search of relevant active patents is made to determine the risk of infringing competitor’s intellectual property. The information collected may indicate whether claims in the proposed patent need to be modified and whether further investment in the project is justified.
Patentability searches (novelty search, state of the art search, prior art search) is used to determine if a newly-conceived invention is different enough from prior art to be patented, i. e. to determine whether the invention is novel, has inventive step and industrial applicability. An invention shall be considered as involving an inventive step if, having regard to the state of the art, it is not obvious to a person skilled in the art. Industrial applicability or industrial application means that a patent can only be granted for an invention which is susceptible of industrial application, i.e. for an invention which can be made or used in some kind of industry. Novelty of an invention requires that the invention has not been publicly disclosed in a publication worldwide or has not been publicly used in worldwide prior to the filing date of the patent application.
Novelty/prior art searches provide the main indication as to the patentability of an invention. They serve a number of purposes including:
- to identify the prior art, the results of which can assist and provide the potential patent holder with the development of its invention;
- to determine whether the invention can in fact be protected.
Invalidity search is conducted to determine whether a patent possessed by someone else can be invalidated. The search is conducted to find prior public use, prior inventorship or technology defects that can warrant the invalidation of the patent.
The type of search can be utilized for information provision, objection submission and invalidation judgment in order to invalidate patents that are obstacles to product sales in one’s country.
The search is conducted by such information resources as patent, non-patent and scientific publications, various books and magazines, articles and monographies, theses, normative and technical documentation, as well as by national patent resources that could have been missed out during examination being written in non-common languages like Chinese, Japanese or Russian, including search by the USSR certificates of authorship.
We would like to point out that depending upon search purposes “Mikhailyuk, Sorokolat & Partners” may conduct patent searches by various databases, namely
- “EAPATIS” - the Eurasian Patent Office database
- “esp@cenet” - the European Patent Office database;
- “RUPAT” - the Russian Federation Federal Service for Intellectual Property, Patents and Trademarks full text database of the Russian inventions;
- “International Patent Applications” - the World Intellectual Property Organization database;
- “Issued Patents (PatFT)” - the United States Patent and Trademark Office database;
- “Inventions (Utility Models) in Ukraine” –the Ukrainian Institute of Industrial Property database;
- “Industrial Property” Official Bulletins.
Depending upon the depth and scope of a patent search, our company conducts:
- Local search (in one country);
- Conditionally local search (in several chosen countries);
- Global search (search by national and international patent databases);
- Specific search (search to determine theses project theme).
Patent search objects
There exist the following patent search objects:
Device in general and:
- principle of its work;
- functional elements of the device;
- method (technology) of device and its functional elements production;
- exterior view of the device (design);
- new application of the device.
Method (technological process) in general and:
- single operations of the method, in case they are independent patentable objects;
- initial, intermediate and final products and methods of their production;
- equipment used while implementing the method;
- new application of the method.
Substance (chemical compound, reactant), preparation (composition, combination, formulation, kit of substances) and:
- substance structure, its chemical formula, qualitative and quantitative composition;
- method of substance production;
- starting materials (substances);
- spheres of potential use of the substance.
Patent search procedure
The procedure of conducting a patent search is the following:
- preparing the search procedure agreement;
- search and selection of the patent and other scientific and technical information according to the agreement;
- systematization and analysis of the selected information;
- presentation of the search results in a form of the Patent search report.
The search procedure agreement determines search purposes, deadlines, reporting procedures and the field of search by patent, economical, scientific and technical databases.
The search procedure agreement also defines the object of search and its classification according to the International Patents Classification (IPC), the International Classification for Industrial Designs (ICID).
Qualified professionals of our company will competently evaluate the expediency of conducting a search, will make a proper classification of the field of application and will accurately define the patent information resources, which should be used for the prior art search. They will chose the best way of conducting a patent search so it suits both need and budget.
Our specialists have the necessary practical experience and are skilled in the art (a special emphasis should be made on our long-term experience of patent searches in various fields of technique, chemistry, pharmacology, biology, biotechnology and agricultural chemistry), are masters of the search technology and have necessary knowledge of the regulations and legislation. Knowledge of foreign languages allows our specialists to examine patent, scientific and technical documents written in English or other European language. This broadens the field of search, and also makes the results of a search more exact and reliable. Besides, it should be mentioned that our company has access to the majority of patent information resources.
The result of a patent search is presented in the Patent search report, containing copies of patent and other materials, their analysis and generalization, and, if necessary, assessment and recommendations by our experts.
According to the result of infringement search our company may prepare a comparative analysis of the product, provided by the client, with the product already patented. Comparative analysis is made to reveal the fact of the third parties rights infringement, holding patents and acting in the territory of countries that are subject to search.
In case of legal proceedings of patent holders infringement of rights, the court may assigns a judicial examination. In contrast to comparative analysis conducted on the pre-court stage, a judicial examination has to be conducted by the IP certified judicial examiners. Since a member of our staff Valentin Mikhailyuk is a certified judicial examiner of IP law in Ukraine, we may conduct a judicial examination as well as professional representation and defence of your interests in court to support your arguments concerning patent litigation.