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Patentability Search: Navigating to a Profitable Portfolio

Many businesses possess a potentially highly profitable patent portfolio. However, merely possessing the patents is not what makes them profitable. To turn a patent portfolio into a valuable part of your overall IP portfolio, the patents your company owns have to be managed effectively.

Effective patent portfolio management necessitates patent assessment and valuation. An early and important stage in the valuation of a patent portfolio is determining that the inventions protected by the patents in the patent portfolio meet all necessary criteria to qualify for patents.

A patentability search, which determines if an invention meets the criteria of novelty and relevance, accomplishes this.

It’s important to note that a patentability search does not always present a clear path. In the past, cross-referencing the features of an invention against existing patents required physically searching through the records in the United States Patent and Trademark Office (USPTO). This laborious process required meticulous attention to detail to ensure no details were missed during the search.

Fortunately, with the advent of searchable tools and digital records, the laboriousness of a patentability search has considerably decreased. Although AI-assisted searches can help parse data, an accurate and thorough search still requires meticulous attention.

There are several places to conduct a patentability search when determining the novelty and relevance of your inventions. All the tools have different merits, and deciding which to use depends on the invention and long-term goals.

Conducting A Patentability Search

Google Patent Search

Many people begin their patentability search with a Google patent search. Google search engines have access to the records of many patent holders. A Google search has the additional advantage of access to patent records outside of the libraries of the USPTO.

When using a Google patent search to begin cross-referencing existing patents against your invention, be aware that it may be necessary to search inside other entities like the USPTO or the World Intellectual Property Organization (WIPO). While Google has access to vast information, and patents are a matter of public record, Google wasn’t designed for the exact purpose of providing exhaustive information for a patentability search. Therefore, it might  be necessary to conduct additional searches inside other entities.

USPTO Patent Search

The most important place to conduct a patentability search is inside the USPTO’s database. The USPTO database keeps records of all patents and trademarks registered with them. Because all U.S.-based companies must file patents with the USPTO, all US-based patents are somewhere in the USPTO’s records. However, navigating the records requires a little finesse. The terms to search for might  not be obvious in every case, or it might not be clear from the initial search results whether the existing patents relate to your invention or not. Though AI-assisted searches help with cross-referencing and compiling data, it still takes human judgment and human experience to assess the results of any search. As a result, utilizing a USPTO patent search provides you with the information you need to determine whether your invention meets patentable criteria of novelty and relevance, but parsing that information warrants experience, training, and patience.

WIPO Patent Search

A WIPO patent search is another resource for conducting a thorough patentability search. With the passing of every year, we conduct more and more business in a global economy. In turn, it becomes increasingly important to recognize and respect the global market. Because of this, it is important to ensure that the patents in your patent portfolio protect original inventions on an international scale. Though it does not apply to every case, whether patents compete across international borders greatly matters. Therefore, it’s vital to conduct a WIPO patent search in addition to a USPTO patent search and a Google patent search to determine the real value of your patent portfolio.

Patent Application Search

In some cases, the patent associated with an invention may not yet be issued to protect a given invention. Patent applications are a matter of public record the same way patents are. As a result, you will need to search among pending patent applications as well as existing patents to determine whether your invention has already been invented by another business entity. Knowing how to conduct a patent application search is therefore crucial.

Patentability Search Report from UnitedLex

Whether you are pursuing a U.S. patent or a patent outside of the United States , whether you have invented a process, a product, or an innovation, conducting a thorough and accurate patent search illuminates many aspects of the value of your patent portfolio. A patentability search can indicate which of your inventions or existing patents should be pursued, which will prove less valuable, and which patents are far more valuable than initially thought to be.

With the advent of digitally-assisted searches and data collation, UnitedLex makes an effective and efficient patentability search report possible. Our patentability search report provides insight regarding adjacent markets and obscure licensing opportunities. Some businesses miss possible earnings from their IP asset portfolio even when they invest in long-term IP assets. Digital IP solutions enable patent owners to create, monetize, and exploit patent portfolios. Companies that transform their IP practices with data-driven insights, deep legal expertise, domain knowledge, and integrated technology realize an increase in ROI on IP assets, increased revenue opportunities, reduced costs, and accelerated outcomes.

This is why UnitedLex is a trusted source in Intellectual Property Management.

We utilize cutting-edge IP management technologies and processes to turn IP portfolios into highly profitable areas of business.

With more than 3,000 legal, engineering, and technology professionals globally, UnitedLex enables legal organizations to thrive in the Digital Age.

Over the past 15 years, we have successfully delivered eDiscovery, Source Code and Document Review, IP Monetization, and Contract Lifecycle Management services to over 25% of the Global 500, 30% of the Fortune 50, and 50% of the Am Law 100.

Contact UnitedLex to learn more about transforming your Intellectual Property function and our broader programs for Digital Legal Transformation.

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