The Intellectual Property Law Server

Welcome, Guest. Please Login or Register.
Nov 12th, 2019, 1:12am

Forums Forums Help Help Search Search Members Members Calendar Calendar Login Login Register Register
   Intellectual Property Forums
  
  
Is it Patentable?
(Moderators: Forum Admin, JimIvey, JSonnabend)
   cost of prior-art search
« Previous topic | Next topic »
Pages: 1 2 3  Reply Reply Send Topic Send Topic Print Print
   Author  Topic: cost of prior-art search  (Read 6730 times)
Alan Harrison
Guest
Re: cost of prior-art search
« Reply #5 on: Jan 9th, 2007, 1:34pm »
Quote Quote Modify Modify Remove Remove

on Jun 7th, 2006, 5:08am, Bill Richards wrote:

Not sure what you mean by using "opinion" and "freedom of action" as mutually exclusive.  An opinion can be given, for example, on patentability or freedom-to-operate (FTO) (probably your freedom of action) and would be based upon a search.  The search, however, would be different.  If an FTO opinion is desired, the search would focus on patents that are currently in force.  If a patentability opinion is desired, the search would necessarily be expanded to include expired patents and any published or known material that would describe, teach, or make obvious the invention.

 
I would not limit a FTO search only to existing patents - though that is a good way to start the search. In all likelihood, an FTO in any developed field will turn up one or more patents that may read on the proposed device. Then client-searcher collaboration will be needed to assess the potential problems and determine the necessity / value of further searching to invalidate or limit the claims of those references.
 
As a general note, be especially wary of a "patentability" search that turns up very little similar to your proposed invention. Also be wary of searchers operating outside their native language or technical expertise. I have seen one Indian search firm bill out 8 hours of work for a set of more than 100 patents, none of which addressed the client's proposed device more than tangentially; after 20 minutes I had obtained an expired patent that precisely anticipated the device.
 
Best regards,
 
Alan Harrison
Registered Patent Agent
Project Analyst
Nerac, Inc.
IP Logged
Bill Richards
Full Member
***




   
WWW Email

Posts: 758
Re: cost of prior-art search
« Reply #6 on: Jan 9th, 2007, 3:08pm »
Quote Quote Modify Modify

Alan is right, any thorough FTO (or clearance) search and opinion must include an evaluation of validity of claims which read on the planned product, which would require additional searching.  Between that and the reliance, that's why such opinions are $$$.  (I've seen them easily hit $30,000.)  It all comes down to how much risk the company is willing to take and how much they're willing to spend.  The opinion language, of course, reflects any limitations on the work commissioned.
« Last Edit: Jan 9th, 2007, 3:09pm by Bill Richards » IP Logged

William B. Richards, P.E.
The Richards Law Firm
Patents, Trademarks, and Copyrights
614/939-1488
Isaac
Senior Member
****




   


Posts: 3472
Re: cost of prior-art search
« Reply #7 on: Jan 9th, 2007, 4:48pm »
Quote Quote Modify Modify

on Jan 9th, 2007, 3:08pm, Bill Richards wrote:
Alan is right, any thorough FTO (or clearance) search and opinion must include an evaluation of validity of claims which read on the planned product, which would require additional searching.

 
I expect that you do what you have to do given some very real financial constraints.  If you find close enough patent art to indicate a high probability of invalidity and if your case for non-infringement is strong, isn't there a question of diminishing returns for further searching?  I agree that a patent art search isn't enough to show validity, but that isn't the goal of an FTO.
 
IP Logged

Isaac
Hear Hear
Guest
Re: cost of prior-art search
« Reply #8 on: Jan 10th, 2007, 4:21pm »
Quote Quote Modify Modify Remove Remove

So you think "outsourceing" a search to india would be a good idea..
 
From the view point of the Patent holder... finding some place in India..
 
EDIT: this is a kind of silly question.. the Patent Laywers will definately say  
 
NO!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!
IP Logged
ThinkPatent
Newbie
*




   


Posts: 21
Re: cost of prior-art search
« Reply #9 on: Jan 16th, 2007, 9:39pm »
Quote Quote Modify Modify

Normally patent prior art search can cost around $ 400 – 800 depending on the complexity of the invention. Even though I agree that outsourcing prior art searches to India is not a good idea as the patenting phenomenon is quite new domain for Indian industry but there are people with outstanding command over patent prior searches, validity searches, freedom-to-operate searches and patentability opinion.
 
Patent Specialist & Analyst
Mumbai, India
IP Logged
Pages: 1 2 3  Reply Reply Send Topic Send Topic Print Print

« Previous topic | Next topic »
Powered by YaBB 1 Gold - SP 1.3.2!
Forum software copyright © 2000-2004 Yet another Bulletin Board