Patent Searches
State of the Art
When embarking on a patent search for an unexplored technology, a state-of-the-art search can provide examples of the patents and applications available. Depending on your budget, a patent landscape search might serve as a helpful complementary service.
Depending on your needs, a State of the Art search can be adapted to serve as a first-round clearance to identify "low-hanging fruit," i.e. references that may infringe upon your envisioned concept. With a saved and reproducible search strategy, we can then expand to a full Clearance / Freedom to Operate (FTO) search if the concept does not change.
Patentability
When you need to ensure the strength of your IP, as well as increase the likelihood of success in litigation or inter partes review (IPR) proceedings, it is best to conduct a patentability search and not rely solely on the USPTO examination.
Based on your disclosure, we will use our proven methodology to find prior art that can be used by an examiner in a §102 or §103 rejection. A patentability search also can reduce the length of prosecution and costs involved.
Clearance / Freedom to Operate (FTO)
This type of patent search will help you discover competitors' existing IP before your product or service hits the market. Clearance / FTO searches focus on the claims of patents or applications, to identify any potential references that would be infringed. If completed before the product design is finalized, this search allows time for design-around or time to prepare for non-infringement/invalidity opinions.
Validity / Invalidity
Our expertise and proven methodology shines in this type of patent search. Piercing through the chain mail of your competitors' IP is a skill we take special pride in. Based on our client’s budget, we can craft an appropriate methodology to break down claims in question.
For special cases that need extraordinary resources, we are willing to travel to NIH, the Library of Congress, the US Patent and Trademark Office, or any other location in order to search non-patent literature not found in traditional online databases.
Patent Landscapes
Patent landscapes provide a bird's eye graphical overview, answering the who, what, when and where of a broad technological area (e.g. top assignees of shoulder replacement devices in US and Japan). You will receive an analytics report, as well as an interactive presentation (if desired), explaining opportunities to explore in more detail specific references in the categories that emerge in the patent landscape.
Since this type of engagement can vary in scope, depending on your needs, we work to customize the methodology, combining manual search prowess and automatic tools to maximize the accuracy of the analytics.
To see examples of patent landscape reports, please view those created by the World Intellectual Property Organization (WIPO).
Monitoring
Whether you are a well established entity or just entering the market, it is imperative to monitor the competition. We formulate a re-occuring search strategy to find any new patents and/or applications that are published within a defined technological area. Noise is eliminated by manual review of results. Reports can be relayed to our clients on a weekly, bi-weekly, monthly or quarterly basis in a format that is most convenient.
Additional Services
Database Providers
We work with database providers to enhance their search and reporting tools from the end-user perspective.
In-House Training for Patent Searchers
If you want to take your team of in-house searchers to a heightened level of efficiency and accuracy, we provide on-site training and share the techniques developed over the decades of experience we have under our belt. We enjoy instructing others and and believe that each patent information professional reflects on the profession, so we all gain when we share knowledge and tricks.
Patent agents/attorneys - explaining the science behind patent searching to emphasize the importance of using the right providers.
expert witness services - prior art estoppel
Please reach out directly to adavis@bodkinip.com for info on previous experience of report writing, oral deposition and mock trial work for patent litigation on the IPR estoppel issue.
With decades of patent research experience, having worked in search firms and in-house and having performed searches as well as evaluated search reports from outside providers, Andrea Davis is a great candidate for expert witness cases as it relates to IPR estoppel.
Under 35 U.S.C. § 315(e), IPR estoppel applies to “any ground that the petitioner raised or reasonably could have raised during that inter partes review.”