This image indicates when the different types of patent searches are typically performed.
Competitive Landscape Search involves exhaustive prior art search and categorization of the results by creating a technology taxonomy, thus, determining the overall trends in a particular field, active competitors, key application areas in the technology, potential licensing opportunities, and white space analysis.
A state-of-the-art search is often executed in order to determine existing solutions and potential competitors within a given technological field. This type of search is sometimes referred to as a “collection” search, and includes not only patent documents but also non-patent literature.
Also referred to as a “freedom to operate” (FTO) search, a “right to use” search, or an “infringement” search, a clearance search concentrates on uncovering enforceable patents that might act as “roadblocks” to commercialization of a product or service. A clearance search can also be used to uncover pending patent applications that, if eventually issued as patents, might be infringed by a given product or solution.
Infringement analysis is conducted in order to determine whether any product or any process infringes upon existing patent claim. For an infringement analysis, it is required to check whether all elements of the patent claim are present in the searched product or process.
- Literal infringement occurs when each claim element is found in the product or process.
- The second infringement occurs under the “doctrine of equivalents” when the product or process performs substantially the same function, in substantially the same manner to achieve substantially the same result as the claimed invention.
This type of search is similar to the patentability search in that part of its scope is to assess novelty and non-obviousness. In this case however, the assessment is made on a patent instead of for an invention. This type of search is often initiated either when a patent owner desires to assess the strength of a given patent in preparation for enforcement of that patent or when an accused infringer wants to ascertain the validity of an asserted patent. Other names for validity searches are “invalidity” search and “enforcement readiness” search. As with a patentability search, a validity search will include both patent documents and non-patent literature.
Patentability Search / Prior Art Search
This type of search, normally performed after determining that an invention covers patentable subject matter and has utility, and that its potential return on investment warrants patent pursuance, focuses on finding prior art references that may be relevant to the invention’s novelty and non-obviousness. These prior art references comprise a wide array of materials, such as issued patents, published patent applications, journals and other non-patent literature, etc., and can have been made public at any point prior to the invention’s creation.
Mining or Mapping
A mining search is carried out in order to find and gather related patent assets owned by an entity — mining searches are usually performed for at least one selected technology area. This type of search is often executed on behalf of an entity which owns many patent assets and which may therefore not be fully aware of the scope of their portfolio. The patent assets uncovered in mining searches may then be rated, and these ratings can be leveraged to gather related assets for licensing or divestiture collections, and can also be used for maintenance decisions.