Searches and opinions are crucial in the field of intellectual property (IP) for several reasons, each playing a unique role in ensuring the effective protection and enforcement of patents, trademarks, and copyrights. Conducting a thorough search minimizes the risk of infringing on existing patents, trademarks and copyrights, potentially avoiding costly legal disputes.
NMZ’s attorneys conduct searches, analyze and assess search results and provide the firm’s clients with opinions to identify potential risks, enhance IP strategies, and support informed decision-making and comprehensive protection.
Patent Searches
Prior art searching is a critical step in the patenting process and evaluating whether issued U.S. patents will withstand validity challenges in litigations and USPTO post-grant proceedings. Prior art searches play a crucial role in assessing if an invention can be utilized without violating patents of others.
Knowledge of the prior art assists in “designing around” patents that may present issues. A “design around” may result in a better product or method that is itself patentable and more clearly avoids patents in the field.
Different patent searches are conducted and analyzed by our patent professionals who provide detailed opinions and guidance to our clients. The most common types of patent searches are patentability, freedom-to-operate and validity/invalidity searches.
Patentability/Novelty Searches and Opinions
Before filing a patent application, a patentability search, sometimes referred to as a novelty search, pre-filing or pre-X search, is a search conducted to determine whether an invention is new and non-obvious by identifying prior art (existing patents, publications, products, etc.). A patentability search typically includes a search of United States patents and published utility patent applications for relevant prior art. It may also include searches of foreign patents and technical literature.
After a patent search, a patentability opinion from our patent attorneys provides an expert analysis of whether an invention is likely to be granted a patent.
Our opinions take prior art search results into account in shaping patent application strategy, including claims drafting and avoiding potential objections by emphasizing the patentable features that distinguish the claims from the uncovered prior art, thereby lessening prosecution costs, improving allowance rates and enhances the chances of obtaining meaningful, patentable and valid patent claims, thereby maximizing patent protection.
A prior art search and opinion also provides inventors and companies with critical information to decide whether to proceed with the patent application or modify the invention to enhance its novelty.
A well-written positive search opinion can be useful in attracting investors, licensees and distributors of products embodying the invention.
Freedom To Operate (FTO) Searches/Opinions
A freedom to operate search (also called a right to use search, infringement search, right to practice search) is a pre-market clearance search that is conducted prior to the introduction of a new product to minimize the risk of infringement.
A FTO search provides critical information for strategic business decisions, such as product development, investment, and market entry.
It is a search of unexpired patents intended to identify patents that may constitute an obstacle to the manufacture, use or sale of a proposed product or process for making the product. In order to conduct this type of search, it is necessary to know the precise details of the product or process which is to be cleared. In many cases, the search will be directed to key features of a product or process.
If the search uncovers patents that may be infringed, one or more of several steps may be taken. A validity study can be undertaken to determine whether the claims of a conflicting patent are valid, since only valid claims may be infringed. If a patent is found that may be infringed, in order to render an opinion of infringement or non-infringement, it is necessary to analyze the patent’s application file. The right to use search may also disclose expired patents that provide a safe alternative for avoiding infringement. In addition, the results of the search may provide guidance for a design around, i.e., a product redesign that will avoid infringement. In other cases, the patent’s owner may be contacted with the view of obtaining a license or purchasing the patent.
An FTO opinion assesses whether a product or process can be commercialized without infringing existing patents, helping companies manage legal risks and avoid litigation.
Validity/Invalidity Searches/Opinions
A validity or invalidity search is conducted to assess the validity of a specific patent by identifying prior art dated before the patent’s priority date. Many granted patents are found invalid due to the limitations of initial searches, such as constraints in resources, effort, time, and money. Prior public disclosures, in any language and anywhere in the world, can invalidate a patent.
Such searches are often initiated in response to infringement claims or to evaluate the value of purchasing or licensing a patent. These searches encompass both prior art patents and non-patent literature. The objective is to determine whether the claims of the issued patent hold up against prior art that may not have been considered by the Patent and Trademark Office (PTO), either alone or in combination with cited art, prior uses, or sales of products embodying the invention.
To accurately compare the patent’s claims to prior art, our attorneys review the patent’s prosecution file history, which provides context for properly interpreting the claims.
There are various advantages to conducting and obtaining opinions concerning the validity of a patent. Among other things, the search results provide information needed to assess the strength and enforceability of a patent, informing decisions on whether to pursue litigation, licensing, or investment. In addition, the results identify potential weaknesses in a patent, potentially avoiding costly legal battles or settlements. Such searches provide a basis for defending against allegations of patent infringement by identifying prior art that challenges the validity of the patent in question and, as well, in determining whether infringement lawsuits should be initiated with a clear understanding of the patents enforceability.
Obtaining our attorneys opinion on the results of validity and/or invalidity search is a critical step in managing and leveraging intellectual property effectively. It provides a thorough understanding of a patents strength and enforceability, which is essential for legal, strategic, and financial decision-making.
Trademark Searches
Trademark Clearance Searches/Opinions
Trademark clearance searches are conducted to determine whether a proposed mark is available for use and registration as a trademark or service mark.
A trademark clearance search identifies prior trademarks that may be obstacles to registration or infringe on existing trademarks, which could lead to legal challenges and rebranding costs.
Our attorneys study the search results, and provide an opinion that identifies conflicts and assesses the uniqueness and strength of a proposed trademark, and determine whether the trademark can be used in the market without infringing on others rights, thereby reducing the risk of opposition, cancellation and infringement actions.
An opinion on the registrability of a trademark evaluates the likelihood of successful registration, considering factors like distinctiveness and potential conflicts with existing marks. Such opinions assess the strength and enforceability of a proposed trademark, guiding brand development and protection strategies.
Various types of trademark searches are conducted by our attorneys.
Screening Searches
A preliminary screening search, sometimes also called a knockout, exact, or screening search, is usually conducted before undertaking a full search. The preliminary screening search is intended to quickly and inexpensively eliminate unavailable marks.
A preliminary screening search, however, is limited to searches of federal trademark registrations and pending applications for federal trademark registrations. In conducting a screening search, the searcher searches online databases. The search is ordinarily limited to exact and near exact versions of the proposed mark. It is intended to knockout unavailable names without the greater expense of a full search.
Comprehensive Searches
A comprehensive search, sometimes called a full, includes a search of the federal trademark register, a search of state trademark registrations for all fifty states, and a common law search of unregistered uses and listings in various resources including, websites, trademarks in trade directories and other advertising media, on-line databases, business and company name databases, Internet searches and domain name searches.
A comprehensive search should locate not only trademarks that are identical to the proposed mark for all classes of goods and services, but, also, confusingly similar variants in classes pertinent to the product, services or industry. If the proposed trademark is a word in the foreign language, the search report should also identify federal and state trademark registrations, federal applications, and common law uses of the English equivalent. Under the trademark doctrine of foreign equivalents, foreign words may not be registered if the English language equivalent has been previously registered for products which might reasonably be assumed to come from the same source. Foreign words are also translated to determine if genericness or descriptiveness exists.
Domain Name Searches
Registration of a domain name, without use, does not give rise to trademark rights. Nevertheless, comprehensive searches will provide a list of domain names which include the word being searched. If the domain name list includes a dominant part that is the exact word being searched or a near equivalent, it is advisable to check to see if the domain name is active, that is, does it link to an active Internet website. In some cases, the word being searched may be used as a trademark on such web sites. Website use can give rise to common law trademark rights that must be considered in evaluating the availability of the proposed trademark. The domain name portion of the search is not a general search of the Internet. For important new marks, it is advisable to search the proposed mark via search Internet search engines. An Internet search engine search may disclose uses that are not found in other common law search resources.
Follow-Up Investigations
A search may lead to the a necessity to conduct further investigations before a mark can be fully cleared. Investigations can determine whether a conflicting registered or common law trademark is still in use. In the case of a common law trademark, business name or Internet domain name, an investigation may determine the nature of the product, service or business of the prior user to ascertain if the use is being made for similar goods or services.
In some cases, an investigation may determine that a prior mark is not being used or even that the prior user is no longer in business. Borderline conflicts may be resolved, in less frequent situations, by approaching the owner of the prior mark to either buy its rights in the mark, or by negotiating a co-existence or consent agreement.
Copyright Searches
A copyright search identifies existing copyright registrations to avoid copying protected works and helps ensure that new works are original and do not infringe on others’ rights.
For derivative works or adaptations, copyright searches and opinions help determine if permissions or licenses are needed from original copyright holders and evaluate the viability and scope of a copyrighted work to determine the value of a license or purchase of copyright rights.
A copyright opinion helps creators and businesses understand if their use of copyrighted material constitutes fair use or if it infringes existing rights, ensuring compliance with copyright laws. It provides a legal perspective on whether specific uses of copyrighted material qualify as fair use, guiding content creation and usage decisions.
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In summary, searches and opinions in the field of intellectual property are foundational to securing IP rights, managing risks, guiding strategic decisions, and ensuring compliance with legal standards. They help in identifying potential issues early, optimizing IP protection strategies, and making informed business and legal decisions.
