Conducting and Analyzing Patent Searches

Strategies for Validity, Patentability, Infringement, FTO and State-of-the-Art Searches

Recording of a 90-minute CLE webinar with Q&A


Conducted on Thursday, March 31, 2016

Recorded event now available

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Program Materials

This CLE webinar will provide guidance to patent counsel on structuring and conducting patent searches. The panel will also discuss reporting of search results and offer best practices for analyzing patent searches to maximize patent protection.

Description

Patent searching is a critical step in the U.S. patenting process and in evaluating whether issued U.S. patents will stand up under the rigors of the AIA’s post grant proceedings, such as Inter Partes Review, Post Grant Review, and Covered Business Methods. Searching can be critical in determining whether an issued U.S. patent can be invalidated in a U.S. district court or International Trade Commission investigation. In addition, patent searching plays a critical role in assessing how freely a particular technology can be utilized in the U.S. and in performing due diligence related to patent licensing or patent acquisition opportunities.

The search, for example, may well be necessary for the U.S. patent applicant to be able to avoid potential risks of third-party U.S. patents and maximize patent protection concerning a specific product or invention. Knowing what other inventions have been patented will allow for modifications to be made to enhance the chances of achieving meaningful, patentable and valid patent claims.

Counsel must formulate a strategic approach for the different type of searches recited above. Whether designing or commissioning a search, patent counsel needs to evaluate the scope and timing of the patent search in view of the ultimate objective. There should be a plan in place to tackle the issues of what, when and where for effecting validity or freedom to operate searches, among others.

Further, counsel must be able to analyze and assess the search results to take the proper steps for a successful patent application, patent challenge and/or due diligence.

Listen as our authoritative panel of patent attorneys and professional searchers examine when, how, where and why to conduct various patent searches, including validity, patentability, infringement, ownership and FTO. The panel will discuss the differences and nuances in conducting the different searches. The panel will also discuss the analysis and reporting of search results and offer best practices for conducting and analyzing patent searches to thereby increase the efficiency and effectiveness of your patent objectives.

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Outline

  1. Patent searches
    1. Patentability
    2. Validity
    3. FTO (infringement)/clearance/due diligence
    4. State-of-the-art
    5. Assignment
  2. Structuring and conducting the search
    1. Purpose
    2. Timing
    3. Scope
    4. Searching non-English language patents/applications
  3. Analyzing search results

Benefits

The panel will review these and other key issues:

  • What are the benefits and pitfalls of classification searching and keyword searching?
  • What are the critical considerations when determining what, when and where to search?
  • What are the key components of an effective search strategy, analytical process and follow-up steps to ensure a successful patent application?

Faculty

Irving, Thomas
Thomas L. Irving

Partner
Finnegan Henderson Farabow Garrett & Dunner

Mr. Irving has 35 years of experience in the field of IP law. His practice includes due diligence, patent prosecution,...  |  Read More

Jonathan E. Grant, Esq.
Jonathan E. Grant, Esq.

Grant Patent Services

Mr. Grant specializes in the searching, prosecution and licensing of patent and trademark applications. He performs...  |  Read More

Christopher C. Johns, Esq.
Christopher C. Johns, Esq.

Finnegan Henderson Farabow Garrett & Dunner

Mr. Johns drafts and prosecutes patent applications related to electronics, software, telecommunications, and business...  |  Read More

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