Area IP offers extensive in-house searching capabilities. Because a
quality search is often the first step before investing significant
time and money into procuring a non-provisional patent, we give our
IP searching practice the full attention it deserves. Please review
the services provided below, or contact us to inquire about a specific
type of search that is not listed. In general, your requested search
is performed by highly qualified professionals that have a graduate,
or if appropriate, an undergraduate, technical degree. An experienced
registered patent agent who is very familiar with your case can also
perform your requested search and/or provide an opinion upon request.
Our clients typically request that an agent of our firm handle their
case from start to finish because there is great value in having the
same registered practitioner perform all aspects of your case such as
performing a prior reference search, providing an opinion, and preparing/prosectuing
your application, . However, some clients, for a multitude of reasons,
will prefer to choose different firms or agencies to perform each step
of the process. Bay Area IP is extremely flexibly in working with these
needs in a very professional and ‘no hassle’ fashion. For example,
report, including our detailed commentary, is yours to keep, and
use as you will. Of course, we would love to have you also choose us
to provide you a patentability
opinion and patent application,
but our searching services are a separate activity at Bay Area IP
and there are no ‘hooks’ , questions, or pressure against you taking
your search report or patentability
opinion to another firm, for any reason.
review the following link describing how the
firm-client privilege protects, by law, your confidential disclosures
to our firm in strict confidence. It makes clear why you should only
work with registered/licensed practitioners for all of your IP related
needs. Furthermore, because Bay Area Intellectual Property Group performs
your search in-house, unlike many IP firms, you have much less risk
that an external search agency might leak your confidential information.
Moreover, to avoid inadvertent problems, we have very strict security
procedures in place that guard against any potential misuse of our
client’s confidential information.
it matters who performs your patent search
millions of, potentially obscured, reference documents available against
your application the skill of the searcher can make all the difference.
Many factors in the searching process require professional skill to
overcome. By way of example for patent prior-art searches, a simple
keyword search usually is not sufficient to find the most relevant reference
art that the examiner or some opposing party may find. One reason for
this is that it is a common practice for some inventors who want to
hide their patent to hinder keyword search engines by not using common
keywords to describe or claim their invention. This obstacle often
precludes a non-technical person from finding the most relevant prior-art.
Even when a keyword search does return a large number of candidate references,
a searcher must have a solid understanding of the technology and common
legal practice to narrow the search efficiently and accurately such
that pertinent references are not ignored and non-relevant references
not included in the final report.
the best search results, albeit more costly, tend to come from search
professionals having a pertinent graduate degree who also have adequate
patent preparation/prosecution experience. This experience enables
them to rely on conceptual, and not keyword, searches whereby they avoid
superfluous information and quickly determine what is “close enough”
to report. Unlike a keyword search, a conceptual search paradigm is
rooted in the contextual cues found in the particular domain being searched.
Bay Area IP search professionals are all experienced technology specialists,
and depending on your needs, a search professional experienced in patent
practice can perform your search.
is well know that when a prior-art searcher does not have adequate technical
or legal knowledge the result can be unsatisfactory since follow-up
searches will be difficult for them to efficiently perform because they
do not, generally, know what constitutes "a good reference,"
but have to consult with the patent practitioner and/or technology specialist
after each search. Similarly, not being part of the search will generally
hinder the patent practitioner and/or technology specialist from accurately
suggesting what other search parameters or methods might improve the
search. Thus, it is difficult for such searches to arrive at a high
confidence search results. That is why the best search results are
achieved when a patent practitioner both performs the patentability
search, and handles the patent case; although this option is a little
Highlight of Our Searching Methodology
Area Intellectual Property Group performs online searches, as opposed
to manual searches at a USPTO depository. Within the past year, online
database capabilities have improved to the point where we now find that
there is little, if any, advantage to past manual searching methods.
A typical online text search entails one of our search professionals
(a degreed technology specialist and/or registered patent agent) working
with online database providers such as Dialog, STN, or Orbit. We find
that searching IP is more of an art than a science where the more knowledgeable
and experienced the searcher is, the more accurate and efficient the
dynamic searching process becomes. Multiple information sources feed
our search parameters, such as constraints generated from your disclosure,
business, and marketing information. Because of our practical experience
in business, marketing, research, IP law, and invention we can approach
a search from many different points of view, which work synergistically
towards discovering even the most purposefully obscured references.
IP search is inherently a dynamic, recursive process that may expand
across multiple online databases (e.g., international, periodicals,
press, etc.) towards achieving a reasonable confidence level that most,
if not all, relevant references in the searched databases were found.
To form a patentability
opinion copies of the references are ordered and analyzed.
search reports typically list the most relevant references (e.g., reference
marks for trademark searches, or patents/publications for patent searches)
found in our search wherein the most representative references include
appropriate characterizing information, if any. Unlike many IP searching
agencies who have little, if any, technical or legal knowledge, Bay
Area IP increases the evidentiary value of your search report by stating
in your report any caveats or contextual information critical to a proper
analysis by your agent
or attorney performing the
opinion for patents or trademark opinion.
Good Is a Patent Search?
no one can guarantee a patent search, not even the USPTO. To provide
you a service commensurate with your financial situation, we provide
various levels of searching options, each providing different degrees
of depth and breadth of our search. In our most
basic search , our goal is to determine, with high confidence, if
the exact invention has been previously disclosed in a patent. In our
level of search we search patents and printed publications to determine,
with reasonably high confidence, if the exact invention exist, or an
obvious variation can be construed based on one or more prior-art reference
in combination. A patentability
opinion would then be rendered to advise you if you should proceed
with a patent
application. The corresponding cost can run from a couple of hundred
dollars (e.g., if you did an extensive search and the patentability
opinion is strait forward) to a thousand dollars (e.g., if you did not
do an extensive search for a complex technical area where the patentability
opinion is not strait forward) or more. In some cases, especially for
very simple patents, a patentability opinion could cost more than simply
preparing/filing the patent application without a patentability search.
For clients on very limited budgets it often makes sense for them to
do a preliminary online search, and then have us do a basic
search combined with a patentability
opinion as a basis for proceeding forward to draft/file a patent
when cost is not a top constraint the more time spent searching, up
to some limit, and the broader the search scope, the more likely that
we are to find substantially the same or similar prior-art that the
examiner (who has a very limited time to search) will find, thereby
significantly increasing the likelihood of a patent being awarded with
a relatively clean prosecution history. However, because patent classes
and subclasses are used in some aspects of the search, it is entirely
possible that some very pertinent patents have been misclassified, and
hence potentially missed. An additional level of uncertainty stems
from the fact that only issued patents and published patent applications
are searchable outside a patent office. A secret pending application
may exist (for at least 18 months, and sometimes all the way until issuance)
that the examiner could assert against your application. Other sources
of missed references can arise from references (sometimes buried within
hundreds) that are obscured by using non-standard terms and/or generic
(or misleading) titles/abstracts, or figures. Some other search limitations
arise from limitations in the USPTO database, which include the following:
Patents issued from 1790 through 1975 are searchable only by patent
number and current US classifications.
Current US Patent Classification data in the Database may not necessarily
match the classification data appearing in the original printed
Changes to patent documents contained in Certificates of Correction
and Re-examinations Certificates are not searchable.
Neither assignment changes nor address changes recorded at the USPTO
are reflected in the patent database.
it should be clear that the effectiveness of any patentability search
depends on many uncertain factors. Our searcher’s strong knowledge
of patent practice and technology combined with excellent searching
skills can significantly increase the accuracy and efficiency of the
searching process. The exact choice of cost limits, search scope, and
searching professional is made on a case-by-case basis depending on
our client’s particular goals and risk tolerance level.