Successfully managing your organization’s intellectual property requires more than just unleashing analysts and lawyers on public patent databases. Advanced patent portfolio management involves five distinct search methods, each of which contributes important insights that can help you make quicker, more informed business decisions about your intellectual property assets.
1.Patentability: Patentability search helps you discover and identify all art that is published prior to an invention, along with documentation with citations and excerpts from all references found. This type of “novelty” search is necessary to uncover not only the granted and published applications of major patent offices, but also domain-relevant, non-patent literature.
2.Freedom to Operate: A Freedom-to-Operate (FTO) search identifies potential patent barriers to commercializing a product or technology, such as the risk of potential infringement. This due-diligence process examines third-party and in-force patents to uncover any claims that cover the technology, process, or product you are targeting. It’s an important step for assessing risk, identifying potential licensing partners, and providing direction for product development programs.
3.Patent Validity: A Patent Validity search uncovers patents or other prior art that is published before the earliest priority date of the target patent, which might render a granted patent invalid. This type of search can help you to invalidate “blocking” patents or complete due diligence regarding a patent, patent portfolio, or pending patent application.
4.State of the Art: To make informed decisions about future investment – such as a new technology area –you need to study the present. A State of the Art search can lay the foundation for making critical market decisions based on competitive intelligence. Gaining a clear picture of the current patent literature landscape in a general or specific area of technology can serve as a framework for designing innovative products and processes.
5.Evidence of Use: Innovative companies with a rich patent portfolio should use a highly structured process of Evidence of Use search to identify potential infringers of existing patents. This type of search, which typically involves patents used in commercial products with a large market presence, yields specific evidence that relates your patents to potential infringers’ products. If you are selling patent assets, proof of patent infringement can help strengthen the terms of the sale.
A more sophisticated combination of these five IP search methods, as part of a broader IP strategy, will help you extract maximum value from your product and technology innovations while minimizing the risk of infringement.
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