by Russel O. Primeaux

eBay is in litigation with a small company that claims that its patents cover the online auction method used by eBay. Blackberry users were a judge’s pen stroke away from an injunction that would have stopped all Blackberry use in the U.S. In that case, the patent owner, again a small company, claimed that the famous Star Trek type devices infringed the company’s patent. These patents might have been detected during a patent search, if eBay or Blackberry undertook such searches. This article will discuss each type of patent search, the cost, and the purpose.

Patentability Searches

Suppose your company develops a new product that appears to be innovative. You would like to obtain a patent if it is feasible. Before spending the money for a patent application (the initial filing cost could range from $8000 to $20,000), it may be wise to conduct a patentability search. The purpose of this search is to look through the issued patents and published patent applications at the U.S. Patent & Trademark Office (PTO) to find those patents which are relevant to the invention. Once you know of the existing patents, known as the prior art, you can make a better determination of your chances at obtaining a commercially viable patent. A patentability search and report can range from $500 to $2500, depending on (1) the complexity of the technology and (2) whether the results are reported in a formal opinion or are merely discussed in a meeting.

Clearance Searches

Your company may be concerned that a competitor has a patent on the product you are introducing. A clearance search is conducted to learn whether there are patents that could block you from selling your products. The search is broader than a patentability search. Because the scope of the search can be virtually limitless, it is hard to give a general cost estimate for these searches. The usual practice is to give the searcher a limit at which he or she will stop the search and share the results. However, it is doubtful that a clearance search can be done for less than $2000 and the cost can be much higher. Generally the cost of the product investment will drive the clearance budget. If you are building a half million dollar production line, it would be foolish to pinch pennies on the clearance study. You could finish your expensive production line and be enjoined from using it if a blocking patent existed. On the other hand, if your initial cost to get the first products to market is only $10,000; it would not make any sense to spend $5000 on a clearance search. 

Invalidity Searches

If your company has been sued for infringement, or if your company has received a cease and desist letter that threatens a suit for patent infringement; an invalidity search might be in order. In this search, the goal is to discover patents or other publications that should have been but were not considered during the PTO’s initial examination of the patent. If the invalidity search yields a piece of so-called “killer” or “knock-out” prior art, a couple of options are available. This killer prior art can be used as leverage in licensing negotiations. Alternatively, it can be used as evidence to invalidate the patent through PTO re-examination proceedings or a lawsuit.

These searches, like many facets of intellectual property, are tools that provide you with the proper information for making decisions. Armed with the results of a competent search, your company can exercise sound business judgment on the filing of applications, the introduction of products, or the response to a lawsuit.